USA Law and Practice Contributed by: Jim Hurst, Jeanna Wacker, Sam Kwon and Ashley Ross, Kirkland & Ellis
machine, manufacture, or composition of mat - ter in which: • the commercial use of the subject matter in the US was in good faith; and • the commercial use occurred at least one year before the earlier of either the effective filing date of the patent at issue or the date on which the claimed invention was disclosed to the public in a manner that qualified for the prior art exceptions under 35 USC Section 102(b). However, establishing prior use under Section 273(g) is insufficient in itself to establish anticipa - tion or obviousness. 1.16 Stays and Relevance of Parallel Proceedings Patent proceedings can be stayed pending the outcomes of other proceedings before the US Patent Trial and Appeal Board (PTAB), including interferences, post-grant review, IPRs, and ex parte re-examination. Courts can grant motions to stay pending conclusion of a USPTO re- examination (Ethicon, Inc v Quigg, 849 F.2d 1422, 1426–27 (Fed Cir 1998)). District courts typically balance three factors in • the undue prejudice to the non-movant or a clear advantage for the movant resulting from a stay (Murata Mach USA v Daifuku Co, Ltd, 830 F.3d 1357, 1359–60 (Fed Cir 2016)). Courts consider the outcomes of parallel pro - ceedings for decisions to stay infringement and validity proceedings. Stays are justified when the outcomes of re-examinations would assist the making stay determinations: • the stage of the proceedings; • the potential to simplify issues; and
court in determining patent issues (In re: Cygnus Telecomms Tech, LLC, Pat Litig, 385 F Supp 2d 1022, 1023 (ND Cal 2005)). Pursuant to 28 USC Section 1659, district courts must stay district court litigation at the request of any respondent to an International Trade Com - mission (ITC) proceeding until a final decision, so long as the request is made within 30 days of the district court action’s filing or after a party is named as a respondent in the ITC proceeding. When IPR proceedings result in a final written decision, 35 USC Section 315(e)(2) precludes petitioners from raising invalidity grounds in a parallel district court litigation that they raised or reasonably could have raised during that inter partes review (California Inst of Tech v Broadcom Ltd, 25 F.4th 976, 989 (Fed Cir 2022)). ITC deci - sions have no preclusive effect on district courts but may have persuasive value (Texas Instru - ments Inc v Cypress Semiconductor Corp, 90 F.3d 1558, 1569 (Fed Cir 1996)). 1.17 Patent Amendment Patents can be amended during litigation. Cer - tificates of correction arising from the USPTO’s mistake are governed by 35 USC Section 254. For more substantive changes to patent claims, one can file a request for reexamination (37 CFR Section 1.510) or reissuance (35 USC Section 251) of an application. An application for reissuance of a patent that enlarges the scope of the claims of the origi - nal patent must be filed within two years of the original patent being granted (35 USC Section 251(d)). Otherwise, new matter cannot be intro - duced, and claims can only be narrowed (35 USC Section 251). Patents may also be amend - ed during IPR proceedings upon motion by the patentee.
348 CHAMBERS.COM
Powered by FlippingBook