Can Filing a Patent Infringement Suit Hurt You in a Re-Exam?

Written by Mark Terry

I came upon a super interesting Board of Patent Appeals and Interferences (BPAI) decision issued today. I found the Smucker v. Mack-Ray case interesting for both educational and entertainment reasons. The decision involves the effect an infringement action may have on a re-exam. But the BPAI used uncharacteristically harsh words to reject the Appellant’s arguments, which made it amusing. It’s rare to see any emotion in a BPAI decision, so when you see Jones Day get a verbal spanking, you can’t help but write about it.

In the Smuckers v. Mack-Ray case, the patent owner had sued the defendant for patent infringement in District Court. Naturally, the patent infringement complaint stated that the defendant’s accused device infringed on Mack-Ray’s patent. But it so happens that the accused device was described in a prior art reference that predated the filing date of the patent-at-issue. Consequently, in the re-exam proceeding, the defendant Smuckers argued that the patent infringement complaint served as an “admission” by Mack-Ray that its patent was disclosed by prior art – ergo, the patent was anticipated and thus should be invalidated. Novel argument by Jones Day, if you ask me.

The BPAI, however, did not agree. The BPAI stated:

“We disagree with the Appellant. We are not directed by the Appellant to any persuasive precedent that mere filing of a lawsuit is an ‘admission,’ as asserted. As explained by the Appellant during the Oral Hearing, the Patent Owner instituted the infringement action by filing a simple notice pleading which merely stated that the Patent Owner ‘owns this patent and Smucker’s [Appellant] nozzles infringe.’ We decline to find such filings to be an admission as characterized by the Appellant.”

“While the Patent Owner may have necessarily construed the asserted claims of the ‘994 patent in concluding that a particular commercialized dispenser infringes, claim construction is a matter of law. The fact that the Patent Owner may have construed the claims one way does not establish what the claims actually mean or that the advocated construction is correct as a matter of law. In this regard, we also disagree with the Appellant’s fundamental contention that whatever the implicit claim construction by the Patent Owner is, such construction must be encompassed by the broadest reasonable interpretation used by the PTO. Not only are we not provided with any persuasive authority on point in support of this contention, but the Board’s experience in routinely finding unreasonable claim constructions, whether that of appellants or examiners, does not support the Appellant’s contention.”


The moral of the story here is that when it comes to a re-exam, focus on the prior art at hand and how it does or does not anticipate or obviate the patent-at-issue. Don’t bring up ancillary or uber-creative arguments that have little or no chance of success and that may evoke a harsh rebuke from the Board. It makes you look bad and that can have an effect on your professional reputation.

But the scolding didn’t stop there. Here are a few samples of the Board’s stinging language. In response to a Appellant’s unreasonable request for a factual finding, the Board states: “It is not the PTO’s responsibility, nor does the PTO have the resources, to evaluate such factual matters.” In response to the Appellant’s argument that the Examiner should elaborate his reasoning: “We do not subscribe to the view that such plain and unambiguous terms need further construction.” And most notably, in response to the Appellant’s argument that the Patent Owner shouldn’t stay silent: “The Appellant also … points out the Patent Owner’s “extraordinary decision to remain silent throughout these proceedings” … While the Patent Owner’s silence is atypical, we observe that it was the Appellant that initiated this inter partes reexamination proceeding and the Patent Owner is on record as to what the … reference …, does, and does not disclose. To the contrary, after hundreds of pages of arguments and exhibits as well as an oral hearing, it is the Appellant’s silence with respect to where the … reference discloses the “key limitation” that is deafening.” TKO! Do you have a question on a patent infringement? Contact The Plus IP Firm to schedule your consultation.


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