Cooper Technologies v. Dudas

Cooper Technologies Co. v. Dudas, 2007 WL 4233467 (E.D.Va.)

Facts: Plaintiff Cooper Technologies owns U.S. Patent # 6,984,791 (‘791)
entitled “Visual Latch Indicator Arrangement for an Electrical Bushing and
Terminator.” The patent was issued from the ‘693 application filed April 14,
2003. The ‘693 application was the last in a series of continuation
applications filed by Cooper. Cooper filed suit against defendant-inventor
Thomas & Betts Corporation alleging infringement of the ‘791 patent. Thomas &
Better in December 2006 filed a request with the Patent Office for inter partes
reexamination of the ‘791 patent. After granting request for reexamination, the
Paten tOffice concluded that claims 1 through 30 of the ‘791 patent were
invalid. Cooper seeks review of that decision arguing that the ‘791 patent did
not issue from an “original application” filed after November 1999 (the operable
date of the AIPA) and instead from an “original application” filed on June 20,

Issue: Whether “original application” as used in the American Inventor’s
Protection Act (AIPA) and interpreted by the US Patent Office includes
continuation applications?

Holding: Yes, the Patent Office’s interpretation is not arbitary, capricious,
or contrary to law

Reasoning: As part of the AIPA, Congress created the inter partes reexamination
procedure to allow third parties to notify the Patent Office of issues bearing
on the validity of an existing patent. AIPA notes that “this subtitle…shall
take effect on the date of the enactment…and shall apply to any patent that
issues from an original application filed in the US on or after that date.”
The Patent Act references two types of patents: original and reissue patents.
Reissue patent is a patent that corrects errors in a previously issued patent.
Contrary to what Cooper argues, the Court notes that Congress did not intend
“original application” to refer broadly to “first application” but rather
refers to a “shorthad form to any application for an original patent, and not
to the first filed application in a series of continuation application.”
Because the original application on which patent ‘791 issued was the ‘683
application (April 14, 2003) and not the ‘460 (June 20, 1994), or the “first
application,” the plaintiff is not immune from reeximination under AIPA.

Critical Analysis: The court cites policy reasons for allowing “original
application” to include continuation applications. The cited purpose of AIPA
is to create “a viable, economically attractive alternative to litigation,” for
third parties challenging patent validity. According to footnote 9, 40% of
inter partes reexamination proceedings pending before the Patent office involve
patent from an application, though filed after November 1999, claims priority to
an application filed before that date. It seems obvious from this statistic
that allowing Cooper to use his “first application” date as the “original
application” date for AIPA purposes, would frustrate Congress’ clear intent of
subjecting new claims made in continuation applications to inter partes
reeximination procedures. In my personal opinion, allowing plaintiff to win on
such a narrow reading of the AIPA would lead to market frauds where the Patent
Office failed to find the reason for invalidity even though a third party
rightfully caught and notified the Patent Office of the error.

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