CAFC Decides Patent Reissue was Improperly Broadened Based on Previous Markman Definition

Yesterday, in ArcelorMittal France v. AK Steel Corp. (CAFC 2015), the CAFC considered the impact of a reissue of U.S. Patent 6,296,805 on a previous appeal decision.  The ‘805 patent, directed to rolled steel, recited the claim limitation “very high mechanical resistance.”  In an earlier infringement suit between the parties, the district court found this terminology to define “a tensile strength greater than 1500 MPa.” This construction was upheld by the CAFC on appeal, and the case as remanded as to other issues.

During the appeal of the claim construction, Patentee reissued the ‘805 patent as reissue patent RE44,153.  The reissue patent included a new claim, claim 23, that recited “mechanical resistance in excess of 1000MPa.”  The originally construed claims remained in the reissue patent. Once back in the district court, Patentee amended its complaint to include claim 23 of the new reissue patent.  Thereafter, on summary judgement, the district court ruled the reissue patent invalid for improper broadening. In the second appeal, decided yesterday, the CAFC agreed that claim 23 of the ‘153 reissue was improperly broadened.  

Ostensibly, the USPTO did not consider 1000MPa limitation as broadening relative to the specification of the ‘805 patent.  On the other hand, the CAFC found  “greater than 1000MPa” to be broadening based upon the district court’s previous construction that the scope of “very high mechanical resistance” was greater than 1500MPa. This difference in construction highlights the potential incongruity between USPTO and district court claim construction practices.

At the heart of the CAFC’s affirmance was the continued distaste for collateral attacks on previous judgments.  The Court explained that the “law of the case doctrine” prevents deviation from the decision of a prior appeal (i.e., claim construction) absent extraordinary circumstances tied to “new evidence”  — the CAFC did not find the patent reissue to constitute such.

The successful prosecution of the RE153 patent is not “new evidence” sufficient to trigger the extraordinary circumstances exception to the mandate rule and the law of-the-case doctrine. Permitting a reissue patent to disturb a previous claim construction of the original claims would turn the validity analysis under 35 U.S.C. § 251 on its head. The basic inquiry under § 251 requires comparing the scope of the claims of the reissue patent to the scope of the original claims to determine if the reissue patent “contains within its scope any conceivable apparatus or process which would not have infringed the original patent.” Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 1039 (Fed. Cir. 1987). If the reissue claim itself could be used to redefine the scope of the original claim, this comparison would be meaningless.

Note, the reissue that was pursued was not a “broadening reissue,” which is only possible if pursued within two years of original patent issuance. Instead, the ‘153 reissue was a narrowing reissue. Presumably the former would constitute new evidence under the law-of-the-case doctrine.

It is well established that a claim is considered to be broadening if the patent owner would be able to sue any party for infringement who previously could not have been sued for infringement. In this case, given the court’s earlier construction, if the defendant did not make steel of a strength greater than 1500MPA, claims that expanded the range down to 1000MPA would clearly permit a new infringement charge (assuming the defendant made steel with a strength of 1000MPa or greater).  On the other hand, if the baseline construction of the USPTO were applied, the broadening determination outcome in this case would have been different. 

Markman constructions may be considered by the USPTO, but are not binding on the agency. In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007).  However in this case, one might argue that the since the claims had been assessed by the courts as to infringement scope, regardless of any PTO analysis to the contrary, the court construction was of heightened importance from a public policy perspective.

All that said, since the original claims did not recite a numerical range at all, the examiner may have just missed the issue altogether. This is because, absent the history of the litigation (which was filed), the claims would seem to be narrowing to the naked eye. it is worth noting that there were no substantive rejections of the claims during reissue examination. More recently, reissue applications have been moved from the general examining corps to the to the Central Reexamination Unit (CRU).

Limitations of Patent Reissue

As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011)

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same “public reliance” policy reasoning is utilized in other obscure aspects of patent reissue practice. For example, the Orita doctrine, prevents applicants from obtaining by reissue, claims that because of a requirement for restriction in which they had acquiesced, they could not claim in their patent. Last week, the CAFC explained yet another limitation on patent reissue practice, the “original patent” limitation of patent reissue. 

Antares Pharma, Inc. v. Medac Pharma Inc., (Fed. Cir. 2014), emphasized the original patent requirement of 35 U.S.C. § 251, namely:

Whenever any patent is, through error . . . ,deemed wholly or partly inoperative or invalid. . . by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall . . . reissue the patent for the invention disclosed in the original patent . . . .

35 U.S.C. § 251(a) (emphasis added).

In Antares, the defendant argued that the patent was impermissibly broadened by patent reissue as it had recaptured previously surrendered subject matter. In an attempt to side-step recapture, the patentee argued that the broadened subject matter was an overlooked aspect of the invention, and in fact, was an altogether different invention. This position was ultimately fatal under the “original patent” analysis, as the Court explained:
The original claims are significantly different in scope and coverage than the asserted claims. Claims 1–22 are focused on jet injectors, and every one of those claims contains the “jet injection” limitation. The asserted claims are focused on particular safety features and do not contain the jet injection limitation. Indeed, appellants themselves argue that the asserted reissue claims cover a different invention than that originally claimed * * * * The original specification here does not adequately disclose the later-claimed safety features to meet the [original patent standard]. 

Although safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification. Rather, the safety features were serially mentioned as part of the broader conversation: how to build the patented jet injection device *****

These “suggest[ions]” or “indicat[ions]” of alternative inventions are not sufficient to satisfy the original patent requirement of § 251. * * * Nowhere does the specification disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention. This does not meet the original patent requirement under § 251.

(internal citations omitted)

With the emergence of PTAB patentability trials as a serious road block to patent assertion, patent reissue and patent reexamination are increasingly utilized to refine claims prior to assertion. Where broadening patent reissue is pursued, recapture concerns taken together with the original patent requirement can create quite the Catch-22.

Requests for Comment Touch Upon Claim Construction Standards at the PTAB

Back in June, the USPTO issued a Request For Information (RFI) in the Federal Register. The Notice, entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board posed 17 questions for consideration by those stakeholders involved in the patent challenge proceedings of the America Invents Act (AIA). Responses are due to the USPTO on September 16th, and, will be considered by the agency for the purpose of optimizing AIA trial proceedings going forward.

Over the next two weeks, I will explore the issues driving these queries as well as proposals for resolving problem areas. First up, is the question directed to claim construction, that is:

1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?

This question presents an issue that the PTAB has grappled with in several proceedings to date. Namely, given that expired patents are interpreted under a Phillips v. AWH standard rather than the traditional Broadest Reasonable Interpretation (BRI), should the Board, in certain situations, decline to apply BRI in favor of Phillips. For example, if a petition is filed in September of 2014 on a patent that is set to expire in August of 2015 (the middle of any PTAB trial that would follow) should the Board adopt a practice that would interpret such patents under Phillips instead of BRI? Another example would be where the unexpired term is disclaimed in the middle of a proceeding, should that change BRI practices?

Unfortunately, the USPTO is unlikely to get meaningful feedback on this question. This is because many are viewing this question as an invitation to challenge the use of BRI in any PTAB trial proceeding.  

The PTAB cannot adopt a Phillips claim analysis for AIA trial proceedings as doing so would create absolute chaos. Patent reexamination, supplemental examination, and patent reissue proceedings are becoming increasingly related to post-grant trial proceedings. Applying different claim construction standards (at least in theory) to the same claims would foster nothing but inconsistency and confusion. Couple this with the increase in patent reexamination speed (as a result of the drop in demand since the AIA) and the movement of patent reissue to the Central Reexamination Unit (CRU) for increased speed/efficiency, and these potential inconsistencies could be before the Board for decision within the same time frame — a perfect storm.

As to the feedback the USPTO is seeking with this question, practically speaking, any patent challenged within 3 years of expiration might be optionally accorded an expired patent claim construction. This is because although amendment may still be possible 8-10 months post-petition filing, subsequent appeal to the CAFC may expend the remainder of the enforceable term, rendering any such amendment moot. (i.e., the amended claim would not issue prior to expiration as a result of the appeal). Of course, this same treatment would need to carry over to reexamination/supplemental examination/reissue. As to disclaimer of patent term, such rare occurrences could be required of patentees in AIA proceedings pre-institution so that constructions need not be switched mid-proceeding. 

The justification for the use of BRI at the USPTO is the ability to amend. Yet, critics are quick to point out that amendment is practically impossible before the PTAB, and, therefore, Phillips should be applied instead. The common-sense solution here is to address the amendment process, which is the next issue to explore in this series.

Central Reexamination Unit (CRU) Takes on Patent Reissue Workload

Yesterday, the USPTO issued an internal memo to the Examining Corps informing them that the Central Reexamination Unit (CRU) would be taking responsibility for patent reissue applications going forward. (Memo here) This move was first considered some years back under Director Kappos to remedy the excessive pendencies of patent reissue proceedings. However, that effort was shelved as a result of political headwinds (primarily examiner union complications).

Since that time, the workload of the CRU has lessened thanks to the elimination of inter partes patent reexamination, and to a lesser extent, the lack of interest in supplemental examination. Yet, patent reissue has remained a pendency quagmire due to examiners unfamiliarity and lack of consistent exposure to some of the quirky issues common in reissues (recapture, oaths, correctable defects, etc).

Moving these unique, but important post grant proceedings to a dedicated unit of examination specialists is LONG overdue — and welcome news for patentees.

Stringent PTAB Amendment Process to Drive Patent Reissue Filings

As discussed previously, patent owners continue to struggle with the motion-based amendment requirements of the USPTO’s Patent Trial & Appeal Board (PTAB). In recent months, patentees subject to Inter Partes Review (IPR) and Covered Business Method (CBM) challenges have begun exploring alternative USPTO avenues for presenting amendments. In particular, patentees are following the advice of the PTAB and initiating patent reissue and reexamination proceedings.

Patentees generally find patent reexamination more attractive than patent reissue. This is due to the special dispatch accorded a patent reexamination, the relatively narrow scope of prior art review, and insulation from 112 and 101 issues. However, as made clear recently, patent reissue may be the only escape for patentees struggling at the PTAB.

As background, the PTAB explained in their Idle Free Systems decision that a motion to amend in an IPR, PGR or CBM is a limited opportunity:

If a patent owner desires a complete remodeling of its claim structure . . .it may do so in another type of proceeding before the Office.  For instance, a patent owner may file a request for ex parte reexamination, relying on the Board’s conclusion of a petitioner’s having shown reasonably likelihood of success on certain grounds of unpatentability as raising a substantial new question of unpatentability.  Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2013-00027, Paper 26 (June 11, 2013).

A recent decision of the USPTO’s Central Reexamination Unit (CRU) tested the reexamination theory expressed above.

In IPR2013-00289, the patentee filed a co-pending request for ex parte patent reexamination. The reexamination request presented the very same grounds of unpatentability as presently at at issue in the IPR (in the manner suggested above). Presumably, the reexamination was initiated by the patentee  to pursue claim amendments. (Reexamination Control No. 90/013,148).

Once the reexamination was filed by the patentee, the petitioner requested its termination arguing the filing was an “end-around” the amendment constraints of the PTAB. In denying the request to terminate the reexam the PTAB noted that the “pursuit of amendments in an ex parte reexamination is not inconsistent with our guidance in this proceeding,” and, quoted the passage above from the Idle Free Systems IPR. (here)

On the same day the PTAB issued its order denying the petitioner’s motion to terminate the reexamination proceeding the CRU denied reexamination (here). The CRU explained, citing to the Official Gazette Notice from March 1, 2005 titled “Notice of Changes in Requirement for a Substantial New Question of Patentability for a Second or Subsequent Request for Reexamination While an Earlier Filed Reexamination is Pending,” that a Reasonable Likelihood of Prevailing (RLP) as accepted the PTAB does not necessarily support the existence of a Substantial New Question of Patentability (SNQ). The CRU explained that unlike an SNQ, there is no aspect of the RLP threshold that requires the ground be “new.” The CRU explained:

The statement from Idle Free appears to be contrary to established Office policy (as detailed above) [discussing the SNQ standard]. Further, the statement is inaccurate at least to the extent that it implies that any finding of RLP perforce raises a substantial new question of patentability.  However, unlike RLP, the SNQ standard requires that the question be new.  Thus, it is possible for an RLP to be raised without meeting the SNQ standard, Further, the statement from Idle Free above appears to imply that the same grounds of unpatentability can be used for any number of reexaminations, which is counter to Office policy as published in the 2005 Notice.

The statement above that an RLP doesn’t have to be new is a bit of an overstatement. 35 U.S.C. 325(d) provides that the PTAB may deny trial on issues previously considered by the Office. Clearly, 325(d) is not required, but discretionary. Still, a challenger is unlikely to prevail on old questions and it is hard to fathom the PTAB inviting such and still finding an RLP. All the CRU really had to say was a later reexamination filed on same co-pending IPR grounds is not new. Fair enough.

With respect to reissue, the CRU explained:

The second statement that PO can pursue new claims in “another type of proceeding” appears to more correctly be applied to reissue proceedings.  Patent owner is attempting to add new, more specific claims to the patent.  This appears to be an admission by PO that the patent is erroneous in that patentee claimed “more or less than he had right to claim in the patent”, in accordance with 35 U.S.C. 251. This is in agreement with In re Tanaka (640 F.3d 1246. 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011), which found an error under 35 U.S.C. 251 may be based upon the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims.

It is strange indeed for a decision of the examining corps to call into question a PTAB Order. Nevertheless, it is clear that patentees hoping to leverage patent reexamination will need to do so prior to a PTAB Trial Order. Once the grounds of a petition are accepted by the PTAB, patent reissue may be the only viable option (supplemental examination also utilizes the SNQ standard). How these concurrent amendment efforts will fare under patentee estoppel is another open question.

USPTO Post Grant & PTAB Updates

In recent weeks the USPTO has issued updates on various aspects of post grant patent practice and PTAB performance. The PTAB reports that their significant backlog has not only stopped growing, but will soon begin shrinking thanks to the increased hiring of administrative patent judges (APJs). With a typical ex parte application appeal pending 2-3 years in many cases, this is welcome news for appellants. (presentation here)

On the post grant side, an update was provided on patent reissue practice. The presentation mostly recapped recent case law developments and changes to oath practice. (presentation here)

An update was also provided from the PTAB Trial Section on the patentability trials of the America Invents Act (AIA). The PTAB reports that upward of 70% of Inter Partes Review (IPR) and Covered Business Method (CBM) filings are in the electrical/software arts. This is not surprising considering these proceedings are emerging as the preferred antidote to the patent troll problem. Other highlights include insight into the PTAB’s preferred claim construction and petition practices. (presentation here)

Terminal Disclaimer Permanent Once Patent Issues

Back in January of 2011 I discussed the appeal decision in Ex parte Shunpei Yamazaki relative to patent reissue practice. In Yamazaki, a reissue patent application was filed shortly after issuance of U.S. Patent 6,180,991 for the purpose of withdrawing an earlier filed terminal disclaimer.

By way of background, the ‘991 patent issued on January 30, 2001 (based upon an application filed April 21, 1995). During the original prosecution, a terminal disclaimer was filed (November of 1996) to overcome a double patenting rejection. Thereafter, the claims subject to the earlier double patenting rejections were amended. Since the amended claims were believed to be distinct from those of the earlier patent, the Applicant petitioned to withdraw the earlier filed terminal disclaimer (April 1999). The petition remained pending for some 20+ months at the USPTO, but, the patent issued prior to any USPTO action on the petition filing. The petition was ultimately dismissed as moot once the ‘991 Patent issued.

Adding insult to injury, the USPTO explained in their belated petition decision that a terminal disclaimer could not be removed once a patent issues as patent reissue did not contemplate such mistakes as “error” under the reissue statute. In other words, even though the patent holder had disclaimed some 14 years of patent term by mistake, there was no mechanism to cure that mistake post issuance. Nevertheless, the Patentee filed a patent reissue application in an attempt to withdraw the terminal disclaimer.

In deciding the propriety of a patent reissue proceeding to remove a terminal disclaimer, an expanded panel of the BPAI (now PTAB) held that patent reissue could not reset the term of the original patent (which was set by the disclaimer). Interestingly, the BPAI decision also included concurring opinions that would have held differently had the patent not expired prior to completion of the reissue proceeding (December 2003).

Last week, the CAFC affirmed the USPTO, and made clear that patent reissue cannot withdraw a terminal disclaimer, even if the reissue proceeding were capable of concluding prior to expiration.

In their decision the CAFC explained (here):

[W]e recognize that the reissue statute “is remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally.”In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986). Yet “the remedial function of the statute is not without limits.” In re Serenkin, 479 F.3d 1359, 1362 (Fed. Cir. 2007). In this case, the various delays Yamazaki experienced in prosecuting his reissue application, while puzzling and undeniably unfortunate, had no effect on the eventual outcome because, as discussed, § 251 precluded the PTO from allowing the Reissue Application at any point during its pendency. Cf. In re Orita, 550 F.2d 1277, 1280–81 (CCPA 1977) (rejecting a reissue application as seeking a correction that would have offended statutory requirements).

In footnote 3 of the opinion, the CAFC emphasizes the significant delays in both the patent reissue proceeding and original prosecution of this case. Unfortunately, patent reissue, while an important post grant tool for patentees, is still plagued to this day by unacceptable delays and maddening inefficiency.

In re Youman Faults BPAI Recapture Analysis

Back in 2010, the BPAI rejected certain claims in Ex parte Youman as attempting to recapture previously surrendered subject matter via a patent reissue application. This case was noteworthy for several reasons, not the least of which was its 10+ year pendency before reaching a Board decision. A link to the earlier BPAI decision is found (here).

As a reminder, Youman sought to broaden certain means-plus-function elements of his issued patent, and modify language relating to the selection of displayed characters of an electronic program guide via a television remote control.

The originally issued claims recited a “selection means…cycling forward and backward” through displayed characters. This feature was added to distinguish over the art of record during the prosecution of the underlying patent application. In the patent reissue application (broadening), this language was broadened to using a wireless remote control for “changing from a first to a second character.” This change was rejected by the BPAI as an attempt to recapture previously surrendered subject matter.

In rejecting the claim as recapturing previously surrendered subject matter, the BPAI relied upon some of the same MPEP language (“overlooked aspects”) later criticized by the CAFC in In re Mostafazadeh. In its most recent consideration of the recapture doctrine, the CAFC focused on the claim language that must be analyzed in the third prong of the recapture test.  By way of reminder, the recapture doctrine has been distilled down to a three part test, namely:

(1) Determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;

(2) Next, determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) Finally, determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.

As steps 1 and 2 were not disputed in Youman the CAFC explained the BPAIs mistake in applying step 3 as:

[T]he Board failed to distinguish between instances where an added limitation has been modified versus instances where an added limitation is eliminated in its entirety. As Mostafazadeh teaches, such a distinction is critical to applying correctly step three of the recapture rule.

The majority of our precedent (including precedent relied on by the Board) involves instances where the patentee eliminates the added limitation in its entirety; in such circumstances it is clear that the surrendered subject matter has been recaptured and the scope of the reissue claim is even broader than the original. . . . .

In the case at bar, however, the Board has already determined that the added limitation—cycling—has not been eliminated; rather, it has been broadened to changing. Board Decision, 2010 WL 3503790, at *9. Such modification does not instantly implicate the recapture rule bar, as the Board held; rather, such a broadening modification must be evaluated to determine if it materially narrows relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured.

The [USPTO] argues that material narrowing should be determined relative to the patented claim, rather than the original claim. We disagree. Using the original claim as a frame of reference for determining whether the reissue claim materially narrows is consistent both with case law and the purposes underlying the reissue statute. By measuring material narrowing relative to the original claim, which was deliberately surrendered during the original prosecution, we are ensuring that the patentee is unable to recapture what it surrendered deliberately, but allowing room for error, as required by the reissue statute. . . .

With regards to determining whether a modified limitation is materially narrowing, Mostafazadeh should provide the Board with guidance for conducting such analysis. . . . .Mostafazadeh establishes, as a ceiling for determining whether a modified limitation material narrows, any recapture of surrendered subject matter that was in the prior art of the original prosecution. The logic of such a ceiling flows from the concept of “error” under the reissue statute. When a patentee is narrowing its claim limitations due to prior art that would otherwise render the claims unpatentable, the patentee can only be doing so deliberately, without any possibility of error. Thus, if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue. The Board’s failure to distinguish this case from instances where the added limitation is deleted in its entirety and to conduct the proper analysis for a modified limitation is reason enough to vacate and remand.

(emphasis added)

Interestingly, with respect to the above underlined statement, the Court made no reference to the fact that the claims omitted the previous means-plus-function language. Thus, the structure of the previous function (linked in the specification in a means-plus-function sense) has, in fact, been eliminated in some respect. Moreover, the originally issued claim recited a user control means and a selection means. Yet, the reissue claims require only the wireless remote control. Further, the original prosecution history emphasizes the ability to use fewer buttons as a distinction. (presumably the selection means)

The case should make for an interesting remand.  Unfortunately, the patent expires on November 29, 2014, so there is not much term left to “reissue” at this point. (disturbingly, this reissue application has been pending since November 24, 1999).

Continuation Practice in Broadening Patent Reissue Applications Examined

Yesterday, the CAFC decided an important question pertaining to broadening patent patent reissue practice. (In re Staats, decision here). The issue before the Court was whether a broadening patent reissue application of Apple Computer Patent 5,940,600 was filed within the proscribed two year window.

During prosecution of the subject patent reissue application (a third, broadening continuation filing) the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the proscribed two year window. The Office reasoned that the error in the original reissue filing (parent) was allegedly unrelated to the error presented for correction in the third filing…presented for the first time 7 years later. In essence, the Office argued that it is not enough to merely present a “place holder” intent to broaden within the proscribed two years only to file a continuation years later that attempts to broaden in “unforeseeable” ways.

The CAFC heard arguments on the BPAI decision back in September of 2011 and strongly hinted that earlier CCPA precedent would control the case. Not surprisingly, the Court reversed the USPTO based on previous precedent In re Doll 419 F.2d 925,928 (CCPA 1970) and explained that Doll could not be overruled absent the en banc consideration of the Court, noting:

[W]e see no basis for limiting Doll to situations where later broadened claims are related to, or are directed to the same embodi-ment as in the original application. The PTO’s approach is, moreover, unmanageable. Every claim must, by definition, be different in scope than the other claims of the patent, and it is difficult to distinguish one patent embodiment from another or to determine when a later claim is related to an earlier claim. A rule requiring that the new claims be related to the previously submitted claims, or be directed to the same embodiment, would be difficult to administer in a consistent and predictable way. . . . . In short, this panel is bound by Doll. See S. Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc) (adopting the decisions of the CCPA as binding precedent); In re Am. Fertility Soc’y, 188 F.3d 1341, 1347 (Fed. Cir. 1999) (holding that an earlier precedential decision is binding precedent on later panels). If the PTO believes we should overrule Doll, that is a matter that must be presented to the en banc court.

Yet, the concurring opinion strongly suggests that that the PTO’s public policy arguments for potentially overruling Doll would fall flat.

In the end, the PTO . . .  falls back on policy concerns it claims allow it to ignore the face of § 251 and to disregard both its own and this court’s pronouncements regarding the proper operation of that governing provision. Given the limited life of additional claims which can be sought through the type of continuing reissue practice at issue here, the protections afforded by the intervening rights provisions in 35 U.S.C. § 252, and the countervailing implementation concerns the PTO’s new standard creates, however, the PTO’s policy arguments are over-stated – substantially so. Even if those policy statements were not overstated, they would be an insufficient reed upon which to rest such a sweeping change in the law.

Indeed, most practitioners avoid broadening patent reissue practice altogether by simply maintaining a pending, regular continuation application. The notion that anyone would pursue broadening patent reissue as a matter of course ignores the significant pendency problems, as well as thorny recapture and intervening rights issues. As such, it would seem unlikely that the Office will pursue en banc review.

In re Tanaka Decision Likely to Drive Two-Part Supplemental Examination Filing Strategy

During yesterday’s Strafford Legal webinar on the topic, I explained that Supplemental Examination (SE) is a mechanism of the AIA that is designed to effectively cure inequitable conduct via a new post grant proceeding of the USPTO. This mechanism, effective September 16, 2012 will be available to all issued patents.

In operation, SE allows a Patentee to submit very detailed explanations of potential issues that may serve to render the patent invalid under an inequitable conduct theory in litigation. Upon submission of Substantial New Questions of patentability (SNQs) detailing such potential defects, the Office will reconsider or correct such information; that is to say the Office will perform a “supplemental examination.”

If the SNQs of an SE request do not rise to the appropriate level to justify further proceedings, an SE certificate is issued stating such, and the proceeding concludes. Likewise, should SNQs be identified in the request for SE, a certificate is issued identifying such. Thereafter, a modified form of “re-examination” is initiated by the Office to explore the SNQs presented in the request. Should the Office determine that the identified SNQs do not preclude patentability in the reexamination phase, a reexamination certificate is issued to complement the SE certificate. Thus, SE is modeled on the same “but for” materiality standard pronounced in Therasense.

At first blush, the option to cure potential inequitable conduct issues seems an attractive option for Patentees. Yet, practically speaking, there may be very few instances in which an SE filing is advisable.

First, the level of detail required to present an SNQ in an SE request is significant, unlike other post grant options— such as patent reissue. The CAFC’s decision in Tanaka may present a more appealing option for those seeking to correct all but the most pronounced inequitable conduct problems.

Consistent with Tanaka, a patent reissue application can be pursued based upon the simple addition of new dependent claims. Thereafter, IDS filings can be submitted for many of the same SNQs that would otherwise be presented in a request for SE. Perhaps most importantly, there would be no need to explain these issues with the same detail as required by the SE rules. After considering such IDS filings, should the Office allow the claims without amendment “but for” materiality is disproven. In other words, inequitable conduct on such issues is for all practical purposes cured by operation of the patent reissue. On the other hand, if it becomes apparent that amendment is required (thus proving “but for” materiality), the Patentee can simply abandon the reissue filing and pursue the more detailed, and much more expensive, SE filing.

Second, as mentioned above, the cost of the SE filing is significant.

As outlined in January’s rule package for supplemental examination, a filing fee of $ 5,180 is necessary to request supplemental examination, and another $16,000 for the resulting ex parte reexamination (should the supplemental examination request raise a substantial new question of patentability (SNQ). Conversely, the filing fees for patent reissue are currently set at a fraction of the cost of an SE filing.

Moreover, the SNQ standard applied in SE is a very low hurdle (over 94% of SNQs are accepted by the Office in ex parte patent reexamination filings.) On the other hand, the prima facie standard necessary for a first action is considerably higher. As such, it is not that uncommon in current ex parte patent reexaminations proceedings for the Office to grant an SNQ, then promptly issue a first action confirmation of the claims. Under the SE cost structure, a Patentee would be paying $16,000 for a determination that may be seemingly made for several hundred dollars via a patent reissue IDS filing.

Third, calling out practitioner conduct is fraught with peril.

It seems extremely unwise for a law firm to pursue SE for issues arising from it’s earlier prosecution representation as they must detail such issues in an SNQ format. Depending upon the circumstances, the request itself could serve as a road map for a malpractice charge. Likewise, filing a request and calling out the conduct of a competitor, in a public filing, may be equally unwise.

The USPTO has predicted roughly 100 SE fillings per year based upon current Patentee initiated ex parte patent reexamination filings (the thinking being SE offers the same advantages with additional benefits). Yet, SE filings are expected to be few and far between. For those that are pursued, testing the waters first via patent reissue would seem to be a prudent strategy.