Any requested reexamination filed while an earlier filed reexamination is pending must raise an SNQ different than that raised in the pending reexamination. Each request for reexamination must raise its own SNQ, as compared to the pending reexamination proceeding for the same patent. Previously, one could use the same SNQ as in the pending reexamination. A TPR was able to provide continued input during the reexamination proceeding by filing multiple ex parte reexamination requests and having them merged, thus resulting in an essentially inter partes reexamination, without the statutory estoppels. Patent owners or TPR, depending on who was losing in the pending reexamination proceedings, could delay the proceedings indefinitely. Extensions of time in reexamination proceedings are difficult to get granted. They must include a statement of what action the patent owner has taken to provide a response as of the date the request for the extension of time. The Patent Owner must provide a factual accounting of reasonably diligent behavior by all those responsible for preparing a response to the Office action within the time period for filing a response. A statement of why, in spite of the actions taken so far, the requested additional time is needed. If a second request for reexamination is filed after an action closing prosecution in an inter partes reexamination the proceedings will generally not be merged. Merger would run contrary to the statutory “special dispatch” requirement of 35 USC 314. If prior art is cited to the USPTO after an action closing prosecution the patent owner must submit a 37 CFR 1.182 petition, including a factual accounting providing a sufficient explanation of why the information could not have been submitted earlier and an explanation of the relevance of the information submitted with respect to the claimed invention.
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On March 7, 1912, the Commissioner of Patents decided in Ex parte Bayles, 176 O.G. 749 that “[u]ntil a[n] [reissue] application is ended in all its divisions the vitality of the original patent continues so far as required to support that portion of the [reissue] application which remains undecided.” This would be true even if the parent reissue patent were to issue during the pendency of the divisional application. On August 31, 1911, the petitioner in Bayles filed a reissue application containing both method and apparatus claims found in the original patent. Subsequently, by amendment, the petitioner canceled the method claims for the purpose of filing a divisional reissue application. The divisional reissue application claiming the method was filed prior to issuance of the parent reissue application claiming the apparatus. The Commissioner relied on the August 31, 1880 decision of the Acting Attorney-General in the case of ex parte Greaves (C.D., 1880, 213; 18 O.G., 623; 16 Op. Atty. Gen., 560) holding that the good sense of the maxim pendente lite nihil innovator applied. The purported surrender of the original patent when the parent reissue patent issued after the filing of the divisional reissue application did not prevent a division of the reissue from issuing. In MPEP § 1451 (II) states that “[t]he decision of In re Graff, 111 F.3d 874, 42 USPQ2d 1471 (Fed. Cir. 1997) interprets 35 U.S.C. 251 to permit multiple reissue patents to issue even where the multiple reissue patents are not for "distinct and separate parts of the thing patented." This section further cautions that “[a]s is true for the case of multiple divisional reissue applications, all of the claims of the patent to be reissued must be presented in both the parent reissue application and the continuation reissue application in some form, i.e., as amended, as unamended, or as canceled. The same claim of the patent cannot, however be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim, in either its original or amended versions. …Where the parent reissue application issues **>before< the examination of the continuation >reissue application<, the claims of the continuation >reissue application< should be carefully reviewed for double patenting over the claims of the parent >reissue application<. Where the parent and the continuation reissue applications are examined together, a provisional double patenting rejection should be made in both cases as to any overlapping claims. See MPEP § 804 - § 804.04 as to double patenting rejections. Any terminal disclaimer filed to obviate an obviousness-type double patenting rejection ensures common ownership of the reissue patents throughout the remainder of the unexpired term of the original patent.” However, the MPEP is silent as to the effect of the language of 35 U.S.C. § 252 which indicates that “[t]he surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.” Do the principles announced in ex parte Bayles apply? Namely, because a continuation reissue was filed prior to issuance of the parent reissue patent does surrender of the original patent not take place until issuance of the last continuation reissue patent? Suppose that the original patent claimed an invention AB. Within two years of the grant of the original patent a broadened reissue application was filed claiming the invention as AB, AbrBsp and AspBsp. During examination applicant facing a rejection of claims to AB, and AbrBsp, chooses to file a continuation reissue as to these claims, while thereafter letting the parent reissue application claiming only AspBsp issue. Putting aside the obviousness-type double patenting issue that can be obviated by filing a terminal disclaimer in the continuation reissue application, what effect, if any, does section 252 have on the examination of claims AB in the continuation reissue application. Are claims to AB surrendered by operation of section 252 or do the Bayles principles apply to avoid the surrender of original patent claims to AB? We are unaware of any Federal Circuit precedent directly on point. We leave it to you to decide.
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Unlike in ex parte reexamination, a third party requester may participate at every stage of the proceedings. A third party requester (TPR) may once file written comments on any response by the patent owner to an Office action. 35 USC 314(b)(3). All proposed grounds of rejection raised by the TPR, and all TPR comments must be specifically addressed by the examiner. The TPR may appeal any proposed ground of rejection not adopted by the examiner as a final decision favorable to patentability to the Board of Patent Appeals and Interferences (BPAI) under 35 USC 134, and to the Federal Circuit under 35 USC §§ 141-144. 35 USC 315(b)(1). The TPR may be a party to nay patent owner appeal of a rejection to the BPAI under 35 USC 134, and to the Federal Circuit under 35 USC §§ 141-144. 35 USC 315(b)(2). A TPR cannot file an inter partes reexamination request: (1) while a first inter partes reexamination is ongoing -35 USC 317(a); (2) where a final decision has been entered against the TPR in a civil action, the TPR cannot request or maintain an inter partes reexamination based on the same issues-35 USC 317(b); (3) where a final decision has been entered against the TPR in an inter partes reexamination that is favorable to the patent owner, the TPR cannot request or maintain an inter partes reexamination based on the same issues-35 USC 317(b); and (4) for a any patent that issued from an original application filed in the U.S. before November 29, 1999-Section 4608 of P.L. 106-113. Estoppel attaches against any TPR in a later civil action if the TPR loses: as to reasserting grounds of invalidity against challenged patent claims-35 USC 315(c) or as to challenging facts established in the reexamination proceedings-Section 4607 of P.L. 106-113. USPTO reexamination rules were clarified in 2006 to require that in order for a filing date to be accorded to an inter partes reexamination request the request must meet all applicable statutory requirements of 35 USC 311. Final rule-71 Fed. Reg. 44219, August 4, 2006. This provides the Office, the patent owner and the public with a better understanding of the nature of and a focusing of the requester’s challenge. To receive a filing date there must be a statement identifying each substantial new question of patentability (SNQ) and proposed ground of rejection. Every patent claim for which reexamination is requested must be identified. How all cited documents apply to the claims and are applied in a corresponding SNQ/proposed rejection must be explained in detail. For each identified SNQ/proposed rejection, the request must explain how all the cited documents identified for that SNQ/proposed rejection are applied to meet/teach the claim limitations, to thus establish the identified SNQ/proposed rejection. This practice change prohibits general SNQ statements such as-the claims are obvious over any of references A, B, C, and D, taken alone or in combination. It also prohibits citation of references in the request without statements of how the references are applied to the claims. If the reexamination request is for fewer than all the patent claims, the USPTO will generally review only the claims for which reexamination is requested that raise an SNQ. The USPTO may, however, exercise its discretion to examine nonrequested claims - where the expenditure of added resources is deemed justified. 1311 Off. Gaz. Pat. Office 197 (October 31, 2006).
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By Scott A. McKeown
| December 9, 2009

--Third Party Tactics in Reexamination --

Part II of our discussion on 2282/2686  Previously, we analyzed Patent Owner compliance with MPEP 2282/2686 in patent reexamination in the wake of Larson Manufacturing Co. of South Dakota, Inc. v. Aluminart Products (Fed. Cir. 2009).  Specifically, the previous post explored the Patent Owner’s duty to notify the Office of concurrent proceedings (2282 for ex parte, 2686 for inter partes).   In this installment, we explore MPEP 2282/2686 relative to the duty to notify the Office of external proceedings, such as a district court litigation involving the patent at issue.   For example, 2282 provides:  Ordinarily, no submissions of any kind by third parties filed after the date of the order are entered into the reexamination or patent file while the reexamination proceeding is pending. However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. (emphasis added) The lack of ability to participate in an ongoing ex parte reexamination is deemed a significant drawback by such Third Party Requesters.  Notably, 2282 allows a Third Party Requester to appropriately file materials in an ongoing ex parte reexamination. As such, 2282 is often employed by Third Party Requesters in an attempt to circumvent this prohibition.  Likewise, even though inter partes reexamination provides for third party participation by statute, such participation is limited to the extent of Patent Owner action (See 37 CFR 1.947).  Thus, Third Parties often seek opportunities to submit additional information via 2686.  In response to these Third Party tactics, the Office has continually refined 2282 & 2686. The underlined text below has been highlighted to show these refinements as expressed in 2282, the red text reflects the 2006 changes, and the blue the 2008 changes (2686 includes substantially similar changes).  As can be appreciated, the Office is attempting to address ambiguities in the previous language having to do with the content of an appropriate 2282 submission.   . . . .However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. >Such decisions include final court decisions (even if the decision is still appealable), decisions to vacate, decisions to remand, and decisions as to the merits of the patent claims. Non-merit decisions on motions such as for a new venue, a new trial/discovery date, or sanctions will not be entered into the patent file, and will be expunged from the patent file by closing the appropriate paper if they were entered before discovery of their nature. Further, papers filed in the court from litigations or other proceedings involving the patent will not be entered into the record (and will be expunged if already entered) if they provide a party's arguments, such as a memorandum in support of summary judgment. If the argument has an entry right in the reexamination proceeding, it must be submitted via the vehicle (provision(s) of the rules) that provides for that entry right. It is not required nor is it permitted that parties submit copies of co-pending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status. Any submission that is not permitted entry will be returned, expunged, or discarded, at the sole discretion of the Office.< It is to be noted that if the Office, in its sole discretion, deems the volume of the papers filed from litigations or other proceedings to be too extensive/lengthy, the Office may return >, expunge or discard, at its sole discretion,< all or part of the submission. In such an instance, a party may limit the submission in accordance with what is deemed relevant, and resubmit the papers. Persons making such submissions must limit the submissions to the notification, and must not include further arguments or information. Where a submission is not limited to bare notice of the prior or concurrent proceedings (in which a patent undergoing reexamination is or was involved), the submission will be returned by the Office. It is to be understood that highlighting of certain text by underlining, fluorescent marker, etc., goes beyond bare notice of the prior or concurrent proceedings.  As shown above, the 2006 changes (red) provided the Office discretion in accepting voluminous court filings of Patent Holders or Third Party Requesters. As Patent Holder’s in a concurrent proceeding must file significant amounts of discovery and pleadings to comply with their duty of disclosure, candor and good faith, this change seems to provide the Office some relief in discouraging voluminous filings.   The last portion of red text is the first attempt to address inappropriate filings of Third Party Requesters.  The blue text, as discussed next, is a further attempt to address the same improper behavior by refining the meaning of decisions.  Improper behavior relative to 2282/2686 is most often found in reexaminations involved in concurrent district court proceedings.  In such cases, the Third Party defendant will unilaterally create a court filing commenting on the reexamination. The court filing essentially rebuts a recent reexamination response of the Patent Owner. Thereafter, the Third Party simply files the paper under the auspices of 2282/2686 with the Office.  Such tactics have recently played out in several district court disputes.  As can be appreciated from the 2008 changes noted above, submissions made for the purpose of infusing something other than bare notice, such as third party argumentation, are inconsistent with MPEP 2282/2686 (as published in July of 2008).   In a recent district court case such tactics were characterized as:  . . . counsel appears to be walking the line between aggressive advocacy and strategic exploitation/manipulation of the PTO’s rules and this Court’s docket.    While this practice may be viewed as “walking the line” with respect to protective order issues of a district court, in view of the above changes to 2282/2686, and ethical guidelines relating to papers filed for improper purposes with the PTO, it would be wise to avoid tempting the Office of Enrollment and Discipline in this regard.
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On May 26, 2008, Troll Busters LLC (Troll Busters) filed a request for inter partes reexamination of U. S. Patent No. 6,869,779 (“the ‘799 patent”).  Originally, Troll Busters named itself as both the sole real party in interest and the third party requester.  However, as the PTO became aware of Troll Buster’s website, http://www.troll-busters.com, questions arose as to whether the actual real party in interest was correctly identified as required by 35 U.S.C. § 311(b)(1) and 37 C.F.R. 1.915(b)(8). On their website, Troll Busters proclaims that “Troll Busters invalidates patents, not just any patents but patents being asserted by patent trolls, those ugly beasts who try to dominate the innovations of others….Troll Busters takes aim and fires in our own name.  The patent Troll will never know who or how many are behind the ‘hit’.” If Troll Busters had filed an ex-parte re-examination request the real party in question would not have been an issue.  However, in inter partes reexamination, “an entity named as the sole real party in interest may not receive a suggestion from another party that a particular patent should be the subject of a request… and be compensated by that party for the filing of the request …without naming the [other] party[.]” Inter Partes Reexamination Proceeding Control No. 95/001,045, Decision Vacating Filing Date, p. 7-8, August 25, 2008. Furthermore, “an entity may not be paid, or be directed or controlled as to the manner in which the request for inter partes reexamination is filed for a given patent, without naming the party or parties who paid for, or directed/controlled, the filing of the request for inter partes reexamination.” Id at 8. The provisions 35 U.S.C. §§ 315 and 317 and 37 C.F.R. 1.907 were intended to limit the potential for circumvention of the inter partes reexamination estoppel provisions.  Primarily, these provisions were drafted to prevent a requester, and its privies, from filing additional inter partes reexamination requests on any such patent that would contravene the estoppel provisions of sections 315 as well as 317. Upon awareness of the Troll Buster’s business model, the PTO, after originally assigning a filing date to Troll Buster’s request, issued a show cause order to verify the real parties in interest.  However, in response Troll Busters did not identify if other individuals involved in the project engaged Troll Busters to file the request for inter partes reexamination.  Troll Busters claimed that future financing will be paid by Troll Busters, but did not attest to who paid the expenses for filing the original request. In defense, Troll Busters claimed it provided freedom to operate services and undertook such “projects” on its own volition to open up markets and broaden competition.  However, Troll Busters also admitted it was “seeking” foundation grants to continue its work.  Although the Office found the relationship between grants and filing of specific requests to be unclear, the Office decided that whoever provided the grant would appear to be a real party in interest. The Office concluded its “Decision Vacating Filing Date” with a list of three actions undertaken by the requester which may constructively establish another entity as a real party in interest: 1)      Accept payment from another group, pay the requester to file the request for inter partes reexamination, and have itself named solely as the real party. 2)      Obtain money for foundation grants, file a “quid pro quo” request for inter partes reexamination where the foundation wants reexamination on a specific patent that the foundation deems anti-competitive, and name itself solely as real party in interest. 3)      Allow another entity to direct or control the content,(e.g., provide the prior patents/printed publications on which the reexamination is to be based) of the request whether such is termed “technical review” or some other phrase.
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