By Scott A. McKeown
| September 1, 2011
Claim Changes in Patent Reexamination & Reexamination Certificates

Claim Changes in Patent Reexamination & Reexamination Certificates


When faced with the assertion of a patent of dubious validity, prospective defendants increasingly resort to patent reexamination as a cost effective mechanism to dissolve the dispute.

In many patent disputes, patent reexamination is conducted in parallel to a district court or ITC proceeding. Of course, as the reexamination proceeding advances, the reexamination prosecution history creates new defensive opportunities such as, additional prosecution history disclaimer and/or estoppel arguments; enhanced, or additional  inequitable conduct positions; and new non-infringement arguments.

Claim changes and/or cancellation are a boon to defendants as potentially mooting current infringement contentions or at least creating an intervening rights defense.  Yet, it is important to keep in mind that such claim changes are not effective until the proceeding is concluded. This past Monday in Keung Tse v. eBay, Inc., et al (CAND), the Court considered whether cancellation/amendment  of a claim during patent reexamination mooted an otherwise justiciable dispute, explaining:
Only claim 21 of United States patent number 6,665,797 is asserted in this action. A reexamination of the ’797 patent was initiated in July 2007 by defendants in a different district court action, and in July 2009, the United States Patent and Trademark Office issued a final rejection of several claims, including claim 21. Plaintiff then filed the instant action in December 2009 — at a time when claim 21 of the ’797 patent did not officially exist.

Plaintiff appealed the USPTO rejections, and he amended claim 21 in March 2010, during the appeal process. The Board of Patent Appeals and Interferences reversed the rejection as to amended claim 21, but affirmed the rejection of other claims. Plaintiff then appealed the BPAI decision to the Court of Appeals for the Federal Circuit; that appeal remains pending (see Dkt. No. 133).

.           .          .           .           .             .          .         .

The court continued,
No reexamination certificate has been issued for the ’797 patent. Thus, the original version of claim 21 has been cancelled, but the amended version has not yet issued. There is no claim 21 at this time, and there is no guarantee that a reexamination certificate eventually will issue with the an amended version of claim 21 in its current form.

(emphasis added, decision dismissing the action here)

While, practically speaking, claim 21 has been "changed" during reexamination, such alterations are not effective until the certificate issues. As noted in MPEP 2250,
Amendments proposed in a reexamination will normally be entered and be considered to be entered for purposes of prosecution before the Office (if they are timely and comply with the rules); however, the amendments do not become effective in the patent until the reexamination certificate under 35 U.S.C. 307 is issued and published.

Thus, claim 21 of the original patent still exists in a technical sense until cancelled or amended by certificate, which has yet to happen. Thus, the court is incorrect to assume that claim 21 "does not exist."

The effective date of a claim cancellation/amendment may seem esoteric, but, ignoring this reality could lead to premature summary judgement motions on non-infringement, intervening rights, etc. Of course, such a development is a strong argument in favor of staying a case, which seemed the more appropriate remedy here.

(Note:  the Patentee did not respond to the Court's Order to show cause as to why the case should continue, which may explain the result.)

This case was brought to my attention by the great Docket Navigator.
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