The Law Office of Manuel de la Cerra has had tremendous success using the Patent Office’s post-issuance procedures to completely eliminate or substantially reduce risks from patent infringement allegations. The law allows the public to petition the Patent Office to reconsider an issued patent, provided the petition provides an adequate legal basis on which the Patent Office to act. These petitions are highly detailed and complex. Mr. de la Cerra has been very active in preparing, prosecuting and defending reexamination petitions before the Patent Office.
As shown in the following case studies, the Patent Office's post-issuance proceedings can substantially reduce the time, expense and hassle of patent litigation:
- Case study #1: A patentee asserted three patents, and 21 claims against Mr. de la Cerra’s client in federal district court. Mr. de la Cerra located extremely pertinent prior art and prepared a first round of reexamination petitions. The Patent Office ordered reexamination and Mr. de la Cerra successfully persuaded the federal court to stop the litigation pending a final decision on the reexamination request. The Patent Office invalidated all the originally asserted claims. On two of the originally asserted patents, the patentee amended the patent claims and the newly amended claims were then confirmed. The remaining patent was found to be completely invalid and the patentee could not amend the claims to overcome the cited references. At this point, Mr. de la Cerra had effectively cut off any damages occurring from 2001 to 2010 because under federal patent law, if a patent claim is amended during reexamination then it is only enforceable from the date the amended claim emerges from the reexamination. Mr. de la Cerra then prepared another round of reexamination requests. The Patent Office again ordered reexamination and invalidated another four claims from the remaining two patents that had been originally asserted. This again reduced the risk to the client by further eliminating worthless patent claims. Finally, Mr. de la Cerra prepared a final round of requests, and the Patent Office has agreed to reexamine the only remaining patent claims of the pending lawsuit, and appears poised to invalidate all the asserted claims.
- Case Study #2: A petition for reexamination was pending against a patent held by Mr. de la Cerra’s client. The Patent Office originally rejected all the pending claims. Mr. de la Cerra successfully persuaded the Patent Office to reverse its position and confirm the validity of all the pending claims. In a subsequent proceeding on this very same patent, the federal district court found that the patent was valid and enforceable relying heavily on the Patent Office’s reexamination finding that was patent was valid. Mr. de la Cerra also represented the patentee in the federal litigation bench trial. The District Court is now ready to enter a final judgment in favor of Mr. de la Cerra’s client.
Since all cases are fact specific, Mr. de la Cerra cannot guarantee a particular outcome. But it is important to hire an experienced patent attorney who can competently evaluate the various options available to effectively and efficiently resolve patent litigation.