As discussed previously, patent owners continue to struggle with the motion-based amendment requirements of the USPTO’s Patent Trial & Appeal Board (PTAB). In recent months, patentees subject to Inter Partes Review (IPR) and Covered Business Method (CBM) challenges have begun exploring alternative USPTO avenues for presenting amendments. In particular, patentees are following the advice of the PTAB and initiating patent reissue and reexamination proceedings.
Patentees generally find patent reexamination more attractive than patent reissue. This is due to the special dispatch accorded a patent reexamination, the relatively narrow scope of prior art review, and insulation from 112 and 101 issues. However, as made clear recently, patent reissue may be the only escape for patentees struggling at the PTAB.
As background, the PTAB explained in their Idle Free Systems decision that a motion to amend in an IPR, PGR or CBM is a limited opportunity:
If a patent owner desires a complete remodeling of its claim structure . . .it may do so in another type of proceeding before the Office. For instance, a patent owner may file a request for ex parte reexamination, relying on the Board’s conclusion of a petitioner’s having shown reasonably likelihood of success on certain grounds of unpatentability as raising a substantial new question of unpatentability. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2013-00027, Paper 26 (June 11, 2013).
A recent decision of the USPTO’s Central Reexamination Unit (CRU) tested the reexamination theory expressed above.
In IPR2013-00289, the patentee filed a co-pending request for ex parte patent reexamination. The reexamination request presented the very same grounds of unpatentability as presently at at issue in the IPR (in the manner suggested above). Presumably, the reexamination was initiated by the patentee to pursue claim amendments. (Reexamination Control No. 90/013,148).
Once the reexamination was filed by the patentee, the petitioner requested its termination arguing the filing was an “end-around” the amendment constraints of the PTAB. In denying the request to terminate the reexam the PTAB noted that the “pursuit of amendments in an ex parte reexamination is not inconsistent with our guidance in this proceeding,” and, quoted the passage above from the Idle Free Systems IPR. (here)
On the same day the PTAB issued its order denying the petitioner’s motion to terminate the reexamination proceeding the CRU denied reexamination (here). The CRU explained, citing to the Official Gazette Notice from March 1, 2005 titled “Notice of Changes in Requirement for a Substantial New Question of Patentability for a Second or Subsequent Request for Reexamination While an Earlier Filed Reexamination is Pending,” that a Reasonable Likelihood of Prevailing (RLP) as accepted the PTAB does not necessarily support the existence of a Substantial New Question of Patentability (SNQ). The CRU explained that unlike an SNQ, there is no aspect of the RLP threshold that requires the ground be “new.” The CRU explained:
The statement from Idle Free appears to be contrary to established Office policy (as detailed above) [discussing the SNQ standard]. Further, the statement is inaccurate at least to the extent that it implies that any finding of RLP perforce raises a substantial new question of patentability. However, unlike RLP, the SNQ standard requires that the question be new. Thus, it is possible for an RLP to be raised without meeting the SNQ standard, Further, the statement from Idle Free above appears to imply that the same grounds of unpatentability can be used for any number of reexaminations, which is counter to Office policy as published in the 2005 Notice.
The statement above that an RLP doesn’t have to be new is a bit of an overstatement. 35 U.S.C. 325(d) provides that the PTAB may deny trial on issues previously considered by the Office. Clearly, 325(d) is not required, but discretionary. Still, a challenger is unlikely to prevail on old questions and it is hard to fathom the PTAB inviting such and still finding an RLP. All the CRU really had to say was a later reexamination filed on same co-pending IPR grounds is not new. Fair enough.
With respect to reissue, the CRU explained:
The second statement that PO can pursue new claims in “another type of proceeding” appears to more correctly be applied to reissue proceedings. Patent owner is attempting to add new, more specific claims to the patent. This appears to be an admission by PO that the patent is erroneous in that patentee claimed “more or less than he had right to claim in the patent”, in accordance with 35 U.S.C. 251. This is in agreement with In re Tanaka (640 F.3d 1246. 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011), which found an error under 35 U.S.C. 251 may be based upon the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims.
It is strange indeed for a decision of the examining corps to call into question a PTAB Order. Nevertheless, it is clear that patentees hoping to leverage patent reexamination will need to do so prior to a PTAB Trial Order. Once the grounds of a petition are accepted by the PTAB, patent reissue may be the only viable option (supplemental examination also utilizes the SNQ standard). How these concurrent amendment efforts will fare under patentee estoppel is another open question.