English
Preventing Harassment in Patent Reexamination: MPEP § 2240’s Smoking Gun Requirement
The legislative history of 35 U.S.C. § 312 suggests that a purpose of the substantial new question of patentability (“SNQ”) prerequisite is to prevent patent owner harassment via seriatim requests for reexamination.[1] Consistent with that purpose, MPEP § 2240.II provides:
In certain situations, after a grant of a second or subsequent request for ex parte reexamination, where (A) the patent owner files a petition under 37 CFR 1.182 as part of the statement or as the statement, and (B) it appears clear that the second or subsequent request was filed for purposes of harassment of the patent owner, if the petition is granted, prosecution on the second or subsequent reexamination would be suspended. {Emphasis added.}
However, absent an overt and documented threat to tie up a patent in reexamination, can a patent owner establish a “clear” intent by the third party requester to harass a patent owner? The answer to date appears to be no. The contributors of this blog are unaware of a single successful 37 C.F.R. § 1.182 (“182”) petition (i) to suspend a second or subsequent reexamination or (ii) to vacate an order granting a second or subsequent reexamination due to patent harassment.
With the emerging use of reexamination as a litigation strategy, it is difficult to imagine that ex parte reexamination has not been misused to harass patent owners. So what can patent owners do to avoid serial ex parte requests?
When the patent in reexamination is in district court litigation, the patent owner should seek an order from the court requiring the third party requester (i) to submit all purported SNQs in a single subsequent reexam request to prevent harassment and (ii) to agree to be estopped from filing further reexam requests when a NIRC is mailed. If the case is stayed, the patent Owner should seek stipulations that no further requests wil be filed, and that thedefendant will be bound by the outstanding request.
Outside of judicial management, however, the patent holder appears to have little recourse with respect to harassing filings. While petitions may be pursued to seek vacatur of serial requests for reexamination, if harasssment is the sole basis and there is no smoking gun, it is unclear how many requests must be filed to reach the USPTO’s unspoken threshold of pain.
[1] See In re Recreative Technologies, 83 F.3d 1394, 1397 (Fed. Cir. 1996).
P.S. Yes, but some old trial counsels have told me that this kind of serial reexamination “game playing” does not win you any friends with some judges, who may even question why the second set of prior art was not submitted in the first reexamination?
[I suppose one response could be that the second reexamination was necessary to rebut arguments for re-allowance of original or amended claims in the first reexamination?]
The problem is aggrevated by the fact that only patent owners have a PTO disclosure duty, not adverse party reexamination requesters, so they can hold back part of the prior art they know about for a second reexam request unless and until the patent owner gets it by litigation discovery.