The term “parallel universe” has been used to describe the situation where patent validity is considered simultaneously by both a district court or the ITC and the PTO.  It should be noted that the proceedings are “parallel” only in the temporal sense.  To the extent that the term connotes any other identity of procedure, the term is a misnomer.  In actuality, the proceedings are quite different in both scope and procedure.

Overview

• Scope of Proceedings
• Standard of Review
• Claim Construction
• Decision Makers
• District Court v. Central Reexamination Unit
• Cumulative Effect

Understanding those differences are critical to any informed decision making on parallel reexamination proceedings.  Before tackling reexamination strategy considerations, we first explore some basic differences in the two proceedings.  Here we describe in more detail the “parallel universes” of the courts and the PTO.  These two tribunals are substantively different in both scope and standard of review.  Understanding the differences is vital to any strategic reexamination decision making.