SETTLEMENT BETWEEN PATENT HOLDER AND COMPETITOR DID NOT BAR PATENT AND TRADEMARK OFFICE FROM REEXAMINING GOLF BALL PATENTS

摘要

The United States Patent and Trademark Office (PTO) was not a party to the settlement agreement between a patent holder and its competitor, and thus the agreement did not abrogate the PTO's ability to reexamine four patents claiming a multilayered golf ball, as requested by the competitor. The inter partes reexamination statute created a nondiscretion-ary duty for the PTO to conduct a reexamination when it received a request and has made an initial finding that a substantial new question of patentability existed. The statute did not impose any requirement on the PTO to first determine whether the requestor was contractually prohibited from making such a request. Further, allowing a private contract to prohibit reexamination was contrary to the public policy interest in ensuring that patents were valid. Callaway Golf Co. v. Kappos, 2011 WL 3206880 (E.D. Va. 2011)