多方複審在對應訴訟中將形成禁反言

筆記

MPEP 2686.04規範複審（reexamination）與訴訟（litigation）的程序
在多方複審（inter partes reexamination）的程序中，若提出複審的一方同時為以系爭專利進行訴訟的一方時，複審過程中來往答辯"在相同的議題下"將形成歷史禁反言（estoppel）

摘錄相關內容：
Further, an inter partes reexamination already requested by that party, or its privies, on the basis of such issues will not be maintained by the Office; in such an instance, the prosecution will be terminated and the proceeding will be concluded. This is a statutory estoppel which can attach to an inter partes reexamination third party requester that is also a party to litigation concerning the patent for which reexamination has been requested.

In any inter partes reexamination where the requester (or its privies) is also a party to ongoing or concluded litigation as to the patent for which reexamination has been requested, the potential for this statutory estoppel to attach must be considered. The following provides a discussion of the interaction of 35 U.S.C. 317(b), 35 U.S.C. 314, and the inter partes reexamination process.

once one proceeding finally ends in a manner adverse to a third party, then the issues raised (or that could have been raised) with respect to the validity of a claim in that proceeding would have estoppel effect on the same issues in the other proceeding.

幾個考慮禁反言的情況：
(A) The 35 U.S.C. 317(b) estoppel applies only to patent claims that were litigated in the suit, i.e., litigated claims. The estoppel does not apply to non-litigated patent claims.
（多方複審程序產生的禁反言僅適用於進行訴訟的權利範圍上，並不適用於未有訴訟的權利範圍）
(B) The 35 U.S.C. 317(b) estoppel applies only to issues which the requester or its privies raised or could have raised in the civil action. The estoppel does not apply where new issues are raised in the request.
（多方複審程序產生的禁反言僅適用複審請求人或其利害關係人所曾提出的議題上，不適用新的議題）
(C) The 35 U.S.C. 317(b) estoppel applies only in a situation where a final decision adverse to the requester has already been issued.
（多方複審程序所產生的禁反言僅適用於在最終決定不利於複審請求人的情況下）

Ron