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Mary Pat Thynge: Preserving Trial Counsel’s Role in Reexamination

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Controlling costs and increasing efficiency are vital components of any patent-protection strategy. A recent memorandum order by magistrate judge Mary Pat Thynge highlights these concerns in the context of reexamination. By directing that a patentee’s trial counsel may participate in a later reexamination even after viewing a defendant’s confidential information, the Court avoided an economically disruptive outcome for the patentee.

In particular, the Court emphasized that “[f]orcing plaintiff to rely on less knowledgeable counsel during reexamination would . . . increase costs and duplicate effort.” It would also create litigation inefficiencies:

“[B]ecause reexamination (especially inter partes reexamination) is an increasingly important venue for challenging a patent’s validity, preventing trial counsel exposed to defendants’ confidential information from fully participating in reexamination proceedings would force plaintiff to split its resources between two fronts of the same war.”

Xerox Corp. v. Google Inc., C.A. No. 10-136-JJF-MPT (D. Del. Sept. 8, 2010) (Thynge, M.J.).

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