–Third Party Tactics in Reexamination —
Part II of our discussion on 2282/2686 Previously, we analyzed Patent Owner compliance with MPEP 2282/2686 in patent reexamination in the wake of Larson Manufacturing Co. of South Dakota, Inc. v. Aluminart Products (Fed. Cir. 2009). Specifically, the previous post explored the Patent Owner’s duty to notify the Office of concurrent proceedings (2282 for ex parte, 2686 for inter partes). In this installment, we explore MPEP 2282/2686 relative to the duty to notify the Office of external proceedings, such as a district court litigation involving the patent at issue. For example, 2282 provides: Ordinarily, no submissions of any kind by third parties filed after the date of the order are entered into the reexamination or patent file while the reexamination proceeding is pending. However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. (emphasis added) The lack of ability to participate in an ongoing ex parte reexamination is deemed a significant drawback by such Third Party Requesters. Notably, 2282 allows a Third Party Requester to appropriately file materials in an ongoing ex parte reexamination. As such, 2282 is often employed by Third Party Requesters in an attempt to circumvent this prohibition. Likewise, even though inter partes reexamination provides for third party participation by statute, such participation is limited to the extent of Patent Owner action (See 37 CFR 1.947). Thus, Third Parties often seek opportunities to submit additional information via 2686. In response to these Third Party tactics, the Office has continually refined 2282 & 2686. The underlined text below has been highlighted to show these refinements as expressed in 2282, the red text reflects the 2006 changes, and the blue the 2008 changes (2686 includes substantially similar changes). As can be appreciated, the Office is attempting to address ambiguities in the previous language having to do with the content of an appropriate 2282 submission. . . . .However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. >Such decisions include final court decisions (even if the decision is still appealable), decisions to vacate, decisions to remand, and decisions as to the merits of the patent claims. Non-merit decisions on motions such as for a new venue, a new trial/discovery date, or sanctions will not be entered into the patent file, and will be expunged from the patent file by closing the appropriate paper if they were entered before discovery of their nature. Further, papers filed in the court from litigations or other proceedings involving the patent will not be entered into the record (and will be expunged if already entered) if they provide a party’s arguments, such as a memorandum in support of summary judgment. If the argument has an entry right in the reexamination proceeding, it must be submitted via the vehicle (provision(s) of the rules) that provides for that entry right. It is not required nor is it permitted that parties submit copies of co-pending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status. Any submission that is not permitted entry will be returned, expunged, or discarded, at the sole discretion of the Office.< It is to be noted that if the Office, in its sole discretion, deems the volume of the papers filed from litigations or other proceedings to be too extensive/lengthy, the Office may return >, expunge or discard, at its sole discretion,< all or part of the submission. In such an instance, a party may limit the submission in accordance with what is deemed relevant, and resubmit the papers. Persons making such submissions must limit the submissions to the notification, and must not include further arguments or information. Where a submission is not limited to bare notice of the prior or concurrent proceedings (in which a patent undergoing reexamination is or was involved), the submission will be returned by the Office. It is to be understood that highlighting of certain text by underlining, fluorescent marker, etc., goes beyond bare notice of the prior or concurrent proceedings. As shown above, the 2006 changes (red) provided the Office discretion in accepting voluminous court filings of Patent Holders or Third Party Requesters. As Patent Holder’s in a concurrent proceeding must file significant amounts of discovery and pleadings to comply with their duty of disclosure, candor and good faith, this change seems to provide the Office some relief in discouraging voluminous filings. The last portion of red text is the first attempt to address inappropriate filings of Third Party Requesters. The blue text, as discussed next, is a further attempt to address the same improper behavior by refining the meaning of decisions. Improper behavior relative to 2282/2686 is most often found in reexaminations involved in concurrent district court proceedings. In such cases, the Third Party defendant will unilaterally create a court filing commenting on the reexamination. The court filing essentially rebuts a recent reexamination response of the Patent Owner. Thereafter, the Third Party simply files the paper under the auspices of 2282/2686 with the Office. Such tactics have recently played out in several district court disputes. As can be appreciated from the 2008 changes noted above, submissions made for the purpose of infusing something other than bare notice, such as third party argumentation, are inconsistent with MPEP 2282/2686 (as published in July of 2008). In a recent district court case such tactics were characterized as: . . . counsel appears to be walking the line between aggressive advocacy and strategic exploitation/manipulation of the PTO’s rules and this Court’s docket. While this practice may be viewed as “walking the line” with respect to protective order issues of a district court, in view of the above changes to 2282/2686, and ethical guidelines relating to papers filed for improper purposes with the PTO, it would be wise to avoid tempting the Office of Enrollment and Discipline in this regard.