USPTO Vacates Reexamination Certificate Cancelling All Claims?Typically, a patent reexamination proceeding is terminated after a patentability determination of the USPTO. Termination may occur during the prosecution phase or after the appeal phase is concluded. Occasionally, a patent reexamination is terminated based upon a failure of a Patentee to present timely filings. Once terminated, a certificate is published informing the public of the outcome of the patent reexamination proceeding (i.e., claim changes/cancellations).For those terminations caused by the failure to present a timely filing, such as an interview summary (ex parte) or a response to an office action, it is possible to petition under 37 CFR § 1.137(b) to have the late papers entered and the termination vacated; thereafter, the patent reexamination proceeding continues. But what if the petition is not filed until months after the initial termination, and after the printing of a certificate informing the public that all claims of the patent have been cancelled?The answer might surprise you.In Extreme Networks, Inc. v. Enterasys Networks, Inc., (WDWI), after an adverse jury verdict, defendant Enterasys sought ex parte patent reexamination of the Extreme Network patents at issue. The verdict found Enterasys liable for $200k in damages, but more importantly, an injunction was entered against the defendant (now stayed).In April of 2010, first office actions were issued in two of the ex parte patent reexaminations (90/010,433 & 90/010,432) . In June of 2010, petitions for extension of time were filed by Extreme to extend the due date for filing the responses; these petitions were denied. In July of 2010, both reexaminations were terminated as a response was never filed to the April office actions. 4 months later, reexamination certificates were printed cancelling all claims of the respective patents.Relying on the printed certificates, Enterasys motioned for the court to dissolve the injunction. Shortly thereafter, Extreme petitioned the USPTO to vacate the terminated reexamination proceedings, despite the fact that the certificates had already printed. Extreme claimed that the months of delay in filing their response was unintentional; curiously, the USPTO granted the petitions.Enterasys then filed a new motion with the court alleging that the petition filing constituted clear inequitable conduct (as the decision not to file a response after the extension denial was intentional), and that the injunction threat was no longer equitable. The court denied the relief requested by Enterasys, but continued the stay until the conclusion of the patent reexaminations (decision here)Petitions to vacate a terminated patent reexamination are not uncommon. Yet, here, the reexaminations were not only terminated, they were concluded, and resulted in printed certificates. Only after the printing of the certificates were the petitions submitted to the office. It is unclear how the USPTO can justify jurisdiction over such concluded proceedings. Indeed, 37 CFR § 1.570(d) provides:If a certificate has been issued which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue applications or reexamination requests relating thereto. (emphasis added)Here the office decision vacated the reexamination certificate that cancelled all claims, and allowed further proceedings. This action seems directly at odds with 1.570(d).Moreover, even assuming such vacatur were proper on another basis, public policy would seem to favor reliance upon printed reexamination certificates. Certainly practitioners should be allowed to correct simple mistakes, but with so many patent reexaminations being related to high profile litigations (as was the case here) it should not take 6 months to file a simple petition…..just my two cents. Very, very strange case.This case was brought to my attention by the great Docket Navigator.
Typically, a patent reexamination proceeding is terminated after a patentability determination of the USPTO. Termination may occur during the prosecution phase or after the appeal phase is concluded. Occasionally, a patent reexamination is terminated based upon a failure of a Patentee to present timely filings. Once terminated, a certificate is published informing the public of the outcome of the patent reexamination proceeding (i.e., claim changes/cancellations).
For those terminations caused by the failure to present a timely filing, such as an interview summary (ex parte) or a response to an office action, it is possible to petition under 37 CFR § 1.137(b) to have the late papers entered and the termination vacated; thereafter, the patent reexamination proceeding continues.
But what if the petition is not filed until months after the initial termination, and after the printing of a certificate informing the public that all claims of the patent have been cancelled?
The answer might surprise you.
In Extreme Networks, Inc. v. Enterasys Networks, Inc., (WDWI), after an adverse jury verdict, defendant Enterasys sought ex parte patent reexamination of the Extreme Network patents at issue. The verdict found Enterasys liable for $200k in damages, but more importantly, an injunction was entered against the defendant (now stayed).
In April of 2010, first office actions were issued in two of the ex parte patent reexaminations (90/010,433 & 90/010,432) . In June of 2010, petitions for extension of time were filed by Extreme to extend the due date for filing the responses; these petitions were denied. In July of 2010, both reexaminations were terminated as a response was never filed to the April office actions. 4 months later, reexamination certificates were printed cancelling all claims of the respective patents.
Relying on the printed certificates, Enterasys motioned for the court to dissolve the injunction. Shortly thereafter, Extreme petitioned the USPTO to vacate the terminated reexamination proceedings, despite the fact that the certificates had already printed. Extreme claimed that the months of delay in filing their response was unintentional; curiously, the USPTO granted the petitions.
Enterasys then filed a new motion with the court alleging that the petition filing constituted clear inequitable conduct (as the decision not to file a response after the extension denial was intentional), and that the injunction threat was no longer equitable. The court denied the relief requested by Enterasys, but continued the stay until the conclusion of the patent reexaminations (decision here)
Petitions to vacate a terminated patent reexamination are not uncommon. Yet, here, the reexaminations were not only terminated, they were concluded, and resulted in printed certificates. Only after the printing of the certificates were the petitions submitted to the office. It is unclear how the USPTO can justify jurisdiction over such concluded proceedings. Indeed, 37 CFR § 1.570(d) provides:
If a certificate has been issued which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue applications or reexamination requests relating thereto. (emphasis added)
Here the office decision vacated the reexamination certificate that cancelled all claims, and allowed further proceedings. This action seems directly at odds with 1.570(d).
Moreover, even assuming such vacatur were proper on another basis, public policy would seem to favor reliance upon printed reexamination certificates. Certainly practitioners should be allowed to correct simple mistakes, but with so many patent reexaminations being related to high profile litigations (as was the case here) it should not take 6 months to file a simple petition…..just my two cents. Very, very strange case.