Inter Partes Reexamination
By Scott A. McKeown
| February 10, 2017
Article III Standing Found for PTAB Appeal Where Threat of Suit

Article III Standing for PTAB Appeals Once Again Revisited by Federal Circuit


Last month, the Federal Circuit made clear that Article III standing is necessary for petitioners to appeal from adverse decisions in AIA trial proceedings in Phigenix, Inc. v. ImmunoGen, Inc. (here)  The Phigenix decision follows an earlier decisionConsumer Watchdog v. Wisconsin Alumni Research Foundation (Warf) finding the same Article III standing requirement for the now defunct inter partes patent reexamination. 

Yesterday, in PPG Industries, Inc., v. Valspar Sourcing, Inc., the Federal Circuit again addressed the issue of standing in appeals from the Patent Trial and Appeal Board (PTAB). At issue in these consolidated appeals was whether PPG Industries, Inc. (“PPG”) had standing to appeal the PTAB’s decisions in two inter partes reexaminations where the patent owner Valspar Sourcing, Inc. (“Valspar”) was the prevailing party. Showcased in this appeal is evidence deemed to satisfy Article III standing for an appeal from the PTAB.
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By Scott A. McKeown
| August 27, 2015
Pendency Statistics on Petitions Filed During Patent Reexamination

USPTO Releases Petition Timelines


The Office of Petitions has launched a new USPTO Patents Petitions Timeline that provides information on petition types that can be filed throughout each stage of the patent prosecution, and reexamination process. For each petition type, users can easily access information on average pendency over the past 12 months of decided petitions, the deciding office, petition grant rates, and link to specific sections of the Manual of Patent Examining Procedure (MPEP) or other parts of the USPTO website that relate to each petition type. (here)

Given the pro forma nature of many prosecution related petitions, of most interest are the more unusual filings, such as petitions to revive abandoned applications.

Of perhaps the greatest interest is the pendency information pertaining to petitions filed during patent reexamination. I have often referred to this practice as the "black arts" as such practice is fraught with uncertainty, and pendency can be quite significant.
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By Scott A. McKeown
| October 28, 2014
CAFC Denies PTO Rehearing on New Rejection Discretion

CAFC Cites Inconsistencies in Reexamination Appeal Ruling

Back in June, the Court of Appeals for the Federal Circuit (CAFC) decided Q. I. Press Controls, B.V.,v. Quad/Tech, Inc. (here) The appeal stemmed from an inter partes reexamination of U.S. patent 6,867,423 (95/000,526). Of particular interest in the appeal from the Patent Trial & Appeal Board (PTAB) was the allowance of claims 1-60 in view of the rejection of claims 61-72. That is the Board rejected claims 61-72 on a combination of references never applied to claims 1-60, but, the allowed claims (1-60) and rejected claims (61-72) only differed in minor respects.

On appeal, the requester raised this inconsistency with the CAFC and cried foul (despite never having raised the potential rejection formally for claims 1-60). In reversing the Board, the CAFC stated that the combination must be applied to claims 1-60 as a new rejection under 37 C.F.R. § 41.77(b). In doing so, the CAFC opinion could be interpreted to suggest that a new rejection under 41.77 was no longer discretionary, but mandatory.  

The PTO took issue with this aspect of the opinion. Earlier this month, the CAFC declined the PTO's rehearing request directed to this concern.

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By Scott A. McKeown
| October 1, 2014
IPR Final Decisions Track Reexamination Outcomes

USPTO Inter Partes Patent Challenge Statistics Remain Consistent

With two full years of Inter Partes Review (IPR) proceedings on the books, we now have an adequate sample of decisions—158 through 9/26/14. While most IPR decisions are still pending appeal, the results are consistent with earlier inter partes reexamination outcomes.

As of September 2013, 696 inter partes reexamination certificates had been issued. (Not even half of the 1919 such proceedings pursued over the thirteen year history of the now defunct, never ending, reexamination option). 
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By Scott A. McKeown
| March 21, 2013
CAFC Denies Discovery in Inter Partes Patent Reexamination Dispute

AIA Cited by CAFC  as Remedying Known Patent Reexamination Deficiency


As predicted based upon the earlier oral argument, the Federal Circuit closed the door on the potential for discovery in inter partes patent reexamination in Abbott Laboratories v. Cordis Corp. (here) Specifically, the CAFC held that parties to such a patent reexamination proceeding cannot subpoena documents or testimony before the USPTO under 35 U.S.C. § 24.

Interestingly, as was the case earlier in Lingamfelter v. Kappos, the Court utilized the developments of the recent AIA legislation as a lens by which to view the earlier inter partes reexamination statutes, contrasting the earlier legislative intent as:

Congress’s most recent amendment to the Patent Act further demonstrates that Congress intended for subpoenas under section 24 to be made available in those proceedings in which depositions are relied upon by the PTO. In 2011, Congress replaced inter partes reexamination with a new proceeding called inter partes review.  . . . The purpose of this reform was to “convert[] inter partes reexamination from an examinational to an adjudicative proceeding,” and one of its touted “improvements” over the former proceeding is to allow the limited use of depositions.  . . . In particular, Congress provided for depositions of affiants in the proceeding, and also authorized parties to “seek such discovery as the Patent Office determines is otherwise necessary in the interest of justice.”  . . . In the course of implementing these mandates, the PTO has recognized that the AIA authorizes parties to seek section 24 subpoenas in the new proceedings.

The Court also shot down arguments on due process grounds explaining that there is an opportunity to be heard by a disinterested decision maker in patent reexamination. As such the need for extra controls, such as discovery, are not justified by a "serious constitutional problem."

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By Scott A. McKeown
| November 7, 2012
CRU Workload Extending Patent Reexamination Pendency?

Reexamination Filing Surge Dismissed as Speculative


Back in September, I explained that the USPTO received an unprecedented number of reexamination filings in the closing days before the September 16th. This surge was a result of several factors: First, the fee for ex parte patent examination was jumping from $2520 to $17,500 as of the 16th;  and, as a result of the one year anniversary of enactment of the America Invents Act (AIA) on the 16th, September 15th was the last day to file a request for inter partes patent reexamination.


Currently, the Central Reexamination Unit (CRU) is working through the bolus of filings, still trying to get them all docketed and reviewed within the 90 day statutory period. Seizing upon this influx of work, a Patentee recently argued against staying their district court proceeding pending inter partes patent reexamination — arguing that the USPTO process would now be much slower.



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By Scott A. McKeown
| October 3, 2012
CAFC Sides with USPTO on SNQ Debate

CAFC Finds SNQ Denial Not Subject to Appeal in Inter Partes Patent Reexamination


Back in March of 2011, an expanded panel of the Board of Patent Appeals & Interferences (BPAI) decided Belkin International et al., v. Optimumpath LLC. Belkin's appeal stemmed from a denial of a proposed SNQ of an inter partes patent reexamination request of  U.S. Patent 7,035,281 (95/001,089). The initial request for inter partes patent reexamination was granted as to claims 1-3 and 8-10, but denied as to claims 4-7 and 11-31.

The denial of the SNQ targeting claims 4-7 and 11-31 was petitioned to the Director of the Central Reexamination Unit (CRU). Upon reconsideration, the Director refused to reverse the examiner. On the other hand, Belkin did not petition the denial of SNQs pertaining to the claims being actively reexamined (claims 1-3 and 8-10). During prosecution of the reexamination, the rejection of claims 1-3 and 8-10 was withdrawn by the examiner. Thereafter, Belkin appealed the withdrawn rejection of claims 1-3 and 8-10 together with the denial of the SNQs pertaining to those reexamined claims.

The procedural issue before the Board was whether or not denied SNQs, which pertain to claims being actively reexamined (i.e., claims 1-3 and 8-10) must be petitioned rather than appealed to the BPAI. The Board found that:
[I]f the Director makes the non-appealable determination that no substantial new question of patentability has been raised, then reexamination is not performed for those claims in question with respect to the corresponding prior art references. There cannot have been a final decision (either favorable or unfavorable) on the patentability of the claims in question under 35 U.S.C. § 315(b), the claims not having been reexamined in the first place for lack of a substantial new question of patentability. (emphasis added)

Yesterday the CAFC weighed in on the debate.
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By Scott A. McKeown
| August 30, 2012
USPTO Warns on Late Inter Partes Patent Reexamination Filings

September 15 Deadline Fast Approaching


Yesterday, the USPTO issued a notice entitled September 15, 2012 Deadline to File Requests for Inter Partes Reexamination Proceedings and Modification of Notice of Failure to Comply Form (here) The notice is essentially a warning to practitioners that although September 15th is the official filing deadline for inter partes patent reexamination filings, the practical filing deadline is likely the week of September 4th.
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By Scott A. McKeown
| August 10, 2012
Propriety of Third Party Reexamination Declarations

CAFC Avoids Determining Propriety of Third Party Declaration Practice in Inter Partes Patent Reexamination


Yesterday, in Lingamfelter v. Kappos, (here) the CAFC decided that the Patentee had waived the right to contest the propriety of the third party declarations filed in their inter partes patent reexamination. (earlier post here)

The crux of the Patentee’s argument was that the inter partes reexamination statute permits the USPTO to accept “written comments” from Requesters---and “comments” as recited in the relevant statute cannot embrace testimonial “evidence” of declarants.35 U.S.C.§ 314(B)(2) The Patentee further decried the allegedly improper practice as unfair, pointing out that discovery is not permitted; thus there is no way to demonstrate the inaccuracy of the submitted evidence.

The CAFC seemed intrigued by the Patentee's contentions during oral argument, but ultimately side stepped the issue finding the argument waived, explaining:
We need not address the merit of Lingamfelter’s arguments, however, because in our view, he has waived them. To begin with, Lingamfelter was too late in challenging the introduction of the evidence into the record. He did not object when third party requesters’ evidence was submitted to the examiner at the early stages of the inter partes proceedings (in July 2005), or when the first appeal from the examiner’s decision was presented to the Board (in December 2006). It was not until he elected to reopen the case before the examiner (in February 2010 and more than four years after the proceedings had begun) that he contended the examiner lacked authority to receive the contested evidence from third party requesters. Even at that late stage, however, Lingamfelter still did not sufficiently brief the issues that he raises in this appeal.

While a loss for this Patentee, it seems very likely that the issue will reemerge at the CAFC in the months ahead.
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By Scott A. McKeown
| July 24, 2012
Higher Patent Reexamination Threshold Suffers from SNQ Hangover

Claim-by-Claim Application of RLP Standard a Problem for Patent Challengers in Late Stage, Parallel Litigation 


As the era of Inter Partes Patent Reexamination (IPX) draws to a close, recent third party requesters are finding the the new standard for initiating IPX to be quite problematic. The higher standard, has led to a greater percentage of partial and full IPX denials.

A random review of 80 requests filed under the new Reasonable Likelihood of Prevailing (RLP) standard reveals over 25 requests that were either partially (or even fully denied by examiners). Compared to the prior grant rate of close to 95%, it would seem the new “higher standard” is having Congress’ desired effect.
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