You have worked hard and obtained a patent for your company.  You do your homework and believe that your competitor is infringing your patent.  You ultimately engage the help of a litigation team and sue the competitor for patent infringement.  But your competitor is now a defendant and responds with allegations of invalidity based on publication prior art.

Your patent counsel provides some options.  One option is to plow ahead with the litigation and maintain course.   Another option is to file a reexamination request with the publication prior art and ask for a stay of the litigation pending the outcome of the reexamination.

You decide that latter course is the course of action you will take.  After all, if the prior art doesn’t pose a substantial new question of patentability (SNQ), then that is ammunition for your litigation because you can argue that the publication prior art is weak.  And if it does raise a SNQ, that is not equivalent to a prima facie case of unpatentability.  (In re Etter, 756 F.2d 852, 857.)  As long as you have claims that are confirmed by the reexamination, then you think you have a stronger patent position.

So your reexamination counsel drafts a reexamination request and files it.  And you get the stay you wanted.  But the reexamination request gets bounced by the Patent Office for not properly raising alleged SNQ’s posed by the publication prior art.  Now what do you do?  Should you quit now or argue more strenuously for the SNQ’s in a compliant response (due in 30 days)?  If you quit now, has this effort proven anything you can use in court?  And isn’t the Judge going to be a bit irritated that you did not file a compliant brief to get the Patent Office to truly consider the request?  

If you instead argue the SNQ’s more assertively so the Patent Office might consider the request complete, then how hard should you argue?  If you push too hard, are you ditching your own litigation?

Faced with similar facts, the patent owner/requester in Reexam Control No. 90/009,881 (relating to U.S. Pat. No. 7,423,588**) tried an argument similar to this:

With respect to claim 1, the Reference discloses a [first thing], a [second thing], a [third thing], a [fourth thing], and a [fifth thing], as recited in claim 1 (pages 7-9 of the Reference). Thus, because the teachings of the Reference provide subject matter of the ‘588 patent claims that was not taught in any prior art cited during the prosecution of the ‘588 patent, the teachings of the Reference raise a substantial new question of patentability.  However, claim 1 is still believed to be patentable for the reasons stated herein.

An excerpt cannot provide all of the arguments, so you should review the matter yourself which is available at www.USPTO.gov .  The Patent Office recently (March 8, 2011) decided that the ex parte reexamination request was not compliant and gave the requester 30 days to resubmit its request.  Time will tell what the requester does next. 

[**The stayed patent litigation which has similar facts is PDS Electronics, Inc. v. Hi-Z Antennas, et al., (Case No. 5:10-cv-02806, Northern District of Ohio, Eastern Division)]