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.

Of course, when the entire request is denied, requesters may, while time permits, digest the examiner’s comments, polish their proposed rejections, and simply file again. However, this option disappear on September 16th, when IPX is discontinued in favor of the new post grant provisions of the AIA. Those IPX filers that are in parallel litigation, and have their IPX requests denied closer to the September deadline, may soon be forced into some very unfavorable positions. 

First, requesters that are involved in litigations that were initiated (by service of complaint) more than 12 months prior to September 16th will not be able to simply file an Inter Partes Review. As the new IPR statutes preclude late stage litigants from seeking the help of the USPTO. So, after September 16th, refiling may not be an option.

Second, a denied requester can petition the Director’s to review the examiner’s denial of IPX. However,  judging from the few decisions recently rendered, none were found persuasive and the Director’s decision is final and non-appealable. 

Third, a request for ex parte reexamination (EXP) is a less robust option due to the loss of requester participation rights.

For those requesters that are faced with a partial IPX order (less than all requested claims being reviewed), the options are even more problematic. While the IPX proceeding advances in prosecution, a requester’s only option is to petition for relief to the director of the examiner’s determination not to reexamine some claims of the request. A second IPX cannot (absent Director approval) be requested by virtue of 35 U.S.C. § 317; and 37 C.F.R. 1.907. Likewise, for late-stage litigants, IPR would not be available as a second option.

Review of recent requests (both granted and fully or partially denied)  provides insight into the Office’s interpretation of the new RLP threshold. Examiner’s seem to be applying the standard as “if I can reject a particular claim, grant the proceeding as to that claim; if I can’t reject a particular claim, deny the proceeding as to that claim.” In other words, the USPTO is applying the RLP standard on a claim by claim basis rather than “if I can reject at least one claim in the request, grant the proceeding for all requested claims and then either reject claims (adopt rejections) or confirm claims (refuse to adopt rejections) as appropriate”.

Yet, noticeably absent from the reviewed petitions was any argument that the examiner has misapprehend how to apply the new threshold to the proceeding.  The language of the statute makes clear:  “the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request.”  Nowhere does the new statute state or imply that the threshold should be applied on a claim by claim basis, as is typically the case with “SNQ” practice

September is shaping up to be a very busy month for all.