Estoppel : Reexamination Alert™

When does Inter Partes Reexamination Estoppel Kick In?

Scott Daniels | October 4, 2011

The CAFC’s decision yesterday in Bettcher Industries v. Bunzl gives much needed guidance on the relationship between patent infringement actions in District Court and parallel reexamination proceedings at the PTO.  The specific holding is that the inter partes reexamination estoppel provision of 35 U.S.C. § 315(c) takes effect when “all appeal right [in the reexamination] are exhausted, including appeals to” the CAFC – an inter partes reexamination requester may not re-litigate in a later infringement action, any invalidity issue that it raised and lost, or could have raised but did not, in its inter partes reexamination. 

Bettcher sued Bunzl for infringement of a patent for a rotary knife.  Running parallel to Bettcher’s infringement action was an inter partes reexamination requested by Bunzl.  At trial in the infringement action, the judge ruled that Bunzl was estopped under 35 U.S.C. § 315(c) to present prior art that had been asserted in the reexamination because the examiner had already determined that the patent was valid despite Bunzl’s prior art.  The judge reasoned that the examiner’s validity determination was final because the examiner had issued a Right of Appeal Notice (a notice roughly analogous to an Advisory Action in original prosecution).  At the end of the trial, the jury concluded that Bettcher’s patent was not invalid and not infringed. 


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Category: Estoppel
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