Inter Partes Reexamination: When is a Final Ruling "Finally Determined"

The following case addresses the under appreciated concept of estoppel from so-called "final" rulings in an inter partes reexamination.

In Safoco, Inc v. Cameron Int. Corp. (USDC SD Texas H-05-0739), the US District Court for the Southern District of Texas addressed when estoppel attaches to a "final" ruling at the PTO in an proceeding for inter partes reexamination. This case interprets the inter partes reexam estoppel provision of 35 USC 315(c), which prevents a losing requester from putting on an invalidity defense in court. In the decision, the court interpreted the words "finally determined" to find that the estoppel is first triggered by the issuance of a reexamination certificate (after all appeals are final). Those relying on this case may argue that estoppel will not be triggered by intermediate events that might be characterized as "final" for various purposes, such as the issuance of a "Right of Appeal Notice" at the Examiner level.

Thanks to Hal Wegner and Matt Smith for providing the above analysis.

Safoco.pdf