Scott McKeown & Chico Gholz

No “Iterative” or “Unfettered” Amendment Process in Patent Interference

The petitioner briefing to date in Cuozzo Speed Technologies, LLC v. Lee (No. 15-446; S.Ct) emphasizes the “examinational” application of the USPTO’s broadest reasonable interpretation (BRI).  The briefing argues that since PTAB trials are “adjudicative” as opposed to “examinational,” BRI could not have been contemplated by Congress for adjudicative proceedings (since, it is argued, that such adjudicative proceedings do not provide the same degree of amendment opportunity as examinational proceedings).  Yet, absent from the petitioner’s opening brief, save a single footnote, footnote 6, is any acknowledgement  that patent interference is an adjudicative proceeding that has applied BRI for decades to both involved applications and patents — and also limits amendment options to a motion process — just like Inter Partes Review (IPR).

That amending in patent interference operates in the same manner as AIA trials should hardly be surprising given that the AIA trial rules were built upon the existing patent interference framework.  Can this decades-old, adjudicatory framework, that both uses BRI and requires amendment by motion, be distinguished by Cuozzo?

In footnote 6 of Cuozzo’s Opening Brief (here), it is suggested that BRI is acceptable in interference because “a patentee may ‘narrow its claims by filing an application to reissue the patent [and] request that the reissue application be added to the interference’,” citing Bamberger v. Cheruvu, 55 U.S.P.Q.2d 1523, 1526 (B.P.A.I. 1998) (non-precedential).  In other words, parties to an interference (whether they are in the interference on a patent or in the interference on an application) have an unfettered right to amend their claims by seeking patent reissue.  Setting aside this overly simplistic characterization for a moment, one might suggest the same patent reissue option to Cuozzo as an avenue to “unfettered” amendment options.

First, in interferences one doesn’t actually amend claims in an involved application in the typical manner of a patent reissue.  Rather, one substitutes or adds different claims by motion under 37 C.F.R. § 41.121(a)(i), 37 C.F.R. § 41.208(a)(2), and Standing Order 208.3.1. See Standing Order 208.5.2. More significantly, as evidenced yesterday in Bamberg v. Dalvey (Fed. Cir. March 9, 2016), such motions to amend are not entered as a matter of right, and are not uniformly granted. (In Bamberg, (here) the motion was denied because the movant didn’t comply with the rules governing such motions, and the Federal Circuit affirmed.)

Second, leave to file an application to reissue a patent involved in an interference and to have the reissue application added to the interference must itself be sought on motion under 37 C.F.R. $ 41.121(a)(i), 37 C.F.R. 41.208(a)(2), and Standing Order 208.5.1, and such motions are also not uniformly granted. Moreover, even if such a motion is granted, one doesn’t automatically get the right to present as many new claims as one desires. See generally Gholz, What to Do if the APJ Limits the Number of Claims to be Added to a Patent or an Application in Interference, 18 Intellectual Property Today No. 4 at page 26 (2011).

It is expected that these misunderstandings will be corrected in the Respondent briefing in the weeks ahead.