An invalidity challenge in an inter partes reexamination cannot be maintained by the PTO following a final decision in district court when that decision is appealed only on other grounds.
Background / Facts: This appeal arises out of an inter partes reexamination filed by Google in parallel with the recently decided litigation in Function Media v. Google. Despite the conclusion of that litigation and Google’s failure to appeal the validity decision with respect to claims 52, 63, 90, and 231, the PTO denied Function Media’s petition to dismiss from the reexamination these claims because the appeal may nevertheless raise claim construction issues that might impact the validity of those claims.
Issue(s): Whether an invalidity challenge in an inter partes reexamination can be maintained by the PTO following a final decision in district court when that decision is appealed only on other grounds.
Holding(s): No. Under the version of 35 U.S.C. § 317(b) that governs this appeal, the PTO is barred from maintaining an inter partes reexamination of a patent claim once a “final decision has been entered” in a civil action holding that the third-party requester failed to “sustain[] its burden of proving the invalidity” of that patent claim. This rule only applies when “all appeals have terminated” and exists to prevent duplicative, harassing actions against a patentee. If a defendant brought an invalidity challenge in a district court litigation and was unsuccessful, it is not permitted to bring the same challenge in an inter partes reexamination. “This is exactly what happened with claims 52, 63, 90, and 231 … Google’s failure to appeal the determined validity of those claims removed them from any subsequent actions.”