The PTAB considers grounds of unpatentability, and allows for amendments. Ultimately, all reexaminations go to the PTAB under the BRI standard. If consistency is the concern asking PTAB judges to put on diffferent claim construction hats for different proceedings doesn’t make any sense at all to me.

I think the intent of this provision is to force the PTAB away from BRI to a pure Philips analysis. Adding in the 282 presumption is likely just negotiation fodder, no way that gets support in this anti-patent environment.

Scott

To my knowledge, the postgrant validity/revocation trials are *not* patentability proceedings, as you say. They are not denominated “examination” or “reexamination.” There is no examiner. There is no CRU. The PTAB has even made this clear to petitions who have tried to use these proceedings like traditional reexamination: these proceedings are *trials* and the burden is on the petition, not the PTO or anyone else, to prove invalidity.

In view of the above, it makes perfect sense to use district court type claim construction. (The best policy would be to always use that type of claim construction – but that’s an argument for another day.)

The alternative, which the PTAB currently uses, threatens to eviscerate the presumption of validity. Why even have a presumption of validity if you can just hail the patentee back into the PTO, where the presumption disappears? Are the “more likely than not” type standards for grating petitions enough to justify throwing out the entire presumption?

And how much sense does it make to have different forums construing claims in completely different ways? What does that do for predictability, stability, repose, and uniformity of patent law?

I think the situation was far less likely to come to a head in the reexamination context. A DJ filing did not preclude a later reexamination filing, and, in any event, reexamination took too long to matter. As with many patent dispute strategies, the speed of the PTAB is disrupting accepted practices.

Yes, that occurred to me as well. Misrepresentation as a small entity was guarded by inequitable conduct for patent owners…not so for challengers.

For example, what would stop a requester from just claiming micro entity status and filing anonymously to save $9000? I guess the short answer is their registration # would….registered practitioners are unlikely to pull that kind of stunt. Still, for those requests for reexam submitted by the public (few as they are), are much more difficult to police.

As to creating shell organizations, that is a long way to go to save a few thousand bucks. I don’t worry about that one as much.

But a TPR by definition has no interest in the patent for which post-grant proceedings are requested. With respect to ex parte reexam in particular, in which disclosure of the real party in interest isn’t required, what’s to prevent a party from creating a small entity and filing the request through that entity?

Although the PTO repeatedly warns of the perils of committing fraud on the Office by improperly claiming small entity status, it’s not clear to me that it would be strictly improper to do so under the rules that predicate small entity status on the status of a patent or application. And I don’t immediately see how this rule package changes that.

It is true that there is no statutory estoppel in ex part reexam. Yet, in my experience, the ability to reuse failed reexam arguments in a later proceeding is of little practical value. That is to say, when three examiners of the Central Reexamination Unit disregard your submitted art, the patent is effectively “laundered” in that regard.

As to the “reasonably could have raised” component of statutory estoppel, while also not present in ex parte reexam, the stigma of the previous failed challenge is a fact that resonates with judges and juries. What I am seeing is small companies clinging to ex parte reexam for cost reasons. Larger organizations will employ it occasionally in combination with other litigation/post grant strategies, but for time sensitive or pressing business concerns, inter partes challenges are the clear choice.
Scott