Two years ago, my small two-person firm was sued in US Civil Court for patent infringement. The cost to fight this case was astronomical- so we agreed to mediation quickly to keep the business going. This case never physically went to court- no depositions, no discovery, no appearances before the judge.
Now, in 2023, we find out that there exists from an independent third-party firm six prior art documents that describes the very claims we were accused of infringing, and that the third party firm was using their technology in the exact fashion as the claimed infringement. Two of these prior art documents were funded by the US Department of Transportation and those results are on the DOT website. These six documents pre-date the patent application by over a year. In fact, that third party contractor and the firm that instituted the infringement case against us both worked for a large private company simultaneously and both received funding to develop the technology described in the patents. Unsubstantiated on my end, but it appears that the private company hired two different firms to develop a solution to a problem they were having and that both firms realized that there was only one way to do this. (If it is relevant, that third party firm went out of business in 2008 and never filed a patent on this technology.)
We are considering an ex parte review to introduce these prior art documents.
One requirement of an ex parte review application is:
"A certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request."
My question is, would a mediation settlement preclude us from filing this newly discovered prior art under the estoppel rule?