Chief Judge Gregory M. Sleet: Premature to Reconsider Claim Construction While Reexam Ongoing

District court litigation, reexamination, and agency adjudication are only some of the pitfalls that accompany the life of a patent. When proceeding simultaneously, these procedural avenues only increase the risk of contradictory rulings, especially in the area of claim construction. Perhaps sensing this risk, District of Delaware Chief Judge Gregory M. Sleet has, in a recent decision, refused to consider a PTO claim construction on the ground that reexamination is ongoing.

In the underlying post-trial litigation, the patentee had obtained a favorable claim construction from the Court. The infringement defendant then sought reexamination in the PTO, and ultimately won a different claim construction. Based on this development, defendant sought a new trial. The Court declined, noting that defendant’s motion was simply a request for reconsideration of the Court’s claim construction:

“Insofar as Tyco’s most recent bite at the apple raises the patent examiner’s recent final office action construing the [claim in issue], this information is not ripe for consideration. As Tyco aptly notes in its brief, ‘[t]he reexamination procedure is not necessarily over, as [the patentee] has the right to appeal.’ Thus, the prosecution history remains incomplete and the court, therefore, denies Tyco’s newest motion for reconsideration of its claim construction ruling.”

Becton Dickinson & Co. v. Tyco Healthcare Group LP, C.A. No. 02-1694-GMS (D. Del. Sept. 11, 2008) (Sleet, C.J.).

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