Patent Owner Use of Reexamination for Patents Granted Prior to KSR v. Teleflex. Stephen G. Kunin Partner. AIPLA Webcast, April 20, 2011

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1 Patent Owner Use of Reexamination for Patents Granted Prior to KSR v. Teleflex Stephen G. Kunin Partner AIPLA Webcast, April 20, 2011

2 Should Patent Owners Use Reexamination to Strengthen Patents Issued Prior KSR? The Supreme Court in KSR Int l l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) overturned the Federal Circuit s non-obviousness obviousness holding on, inter alia, the grounds that the Federal Circuit improperly applied a rigid teaching, suggested or motivation (TSM) ( ) test as an exclusive test for determining non-obviousness obviousness The result threw into question the validity of thousands of patents issued on the basis of the application of the rigid TSM test by the USPTO and the courts

3 The Patent Owner s Dilemma The conundrum created for patent owners whose patents were issued prior to is what, if anything, they should do to preserve their statutory presumption of validity when seeking to assign, license or enforce their patents rights

4 Should Patent Owners Use Reexamination to Strengthen Such Patents? Ex parte reexamination is available to patent owners to correct their issued patents anytime during the life of the patent But reexamination will only be ordered where patents and/or printed publications raise a substantial new question of patentability (SNQ) ( as to at least one patent claim

5 Ex parte Reexamination Ex parte reexamination may be based on patents and printed publications not previously considered or previously considered, but shed in a new technical light For a SNQ to be established the patents and printed publications must be non-cumulative to the prior art of record in the original patent or prior reexamination and be important to a reasonable examiner in determining the patentability of the claims for which reexamination is requested

6 Ex parte Reexamination The important to a reasonable examiner standard for a SNQ does not require that the patents and printed publications establish a prima facie case of unpatentability of a claim for which reexamination is requested A patent owner request for reexamination must show a SNQ for at least one claim for which reexamination is requested, but can explain how the patent claims remain patentable over the patents and printed publications that raise a SNQ

7 SNQ A SNQ must be based on technical similarity between the claimed invention and the patents and printed publications A clarification in the law, such as in KSR cannot alone form the basis for a SNQ

8 Factors Favoring Patent Owner Filing for Reexamination Potential assignees or licensees refuse to purchase or license patents based on patents or printed publications that would invalidate some patent claims, but which could be corrected through reexamination by cancellation, amendment or addition of new claims No current infringers that would raise concerns about impact of intervening rights if claims were cancelled or amended

9 Factors Favoring Patent Owner Filing for Reexamination Prosecution history clearly shows that allowance of claims resulted from application of rigid TSM test Patent is not in litigation Patents or printed publications are known to patent owner after patent issuance that create a SNQ Patent owner needs to seek reexamination of only one independent patent claim while protecting other patent claims from the reexamination proceedings

10 Factors Against Patent Owner Filing for Reexamination Patent is in litigation thereby increasing risk of loss of past damages resulting from intervening rights If patents and printed publications used in reexamination request were not of record in the original patent and were known to the patent owner finding of a SNQ against at least one patent claim and rejection of claims thereafter may strengthen opponents materiality proof in an inequitable conduct defense

11 Factors Against Patent Owner Filing for Reexamination No statutory presumption of validity of patent in reexamination Claims are given their broadest reasonable interpretation consistent with the supporting written description Only preponderance of evidence burden of proof is required to reject claims in reexamination

12 Factors Against Patent Owner Filing for Reexamination 92% of reexamination requests are granted First action NIRC are rare, since 2005 formation of CRU If the patent is in litigation there is a reluctance to cancel or amend rejected claims which can lead to final rejections and appeals

13 Factors Against Patent Owner Filing for Reexamination The USPTO is given deference in its fact finding where substantial evidence is presented Declarations may be needed to overcome prima facie cases of obviousness that may present enforcement problems when the patent is litigated

14 Factors Against Patent Owner Filing for Reexamination The prosecution history of the original patent does not reflect that the rigid TSM test was the basis for the allowance of patent claims Its is easier for the USPTO to establish a prima facie case of obviousness under KSR It may be easier to defend the patent in litigation, because of the statutory presumption of validity, clear and convincing evidence standard and lay juries that may be patent owner friendly

15 Factors Against Patent Owner Filing for Reexamination A hard-fought battle at the PTO could potentially lead to evidence of non-willfulness in concurrent litigation, especially if the PTO confirms some aspect of defendants' invalidity opinion. If the patent owner has to question his own patent, perhaps that alone is evidence of non-willfulness. Potential for inconsistencies in positions taken before the PTO and in concurrent litigation

16 Bias Against Reexamination Since a third party may request reexamination of the patent and may have a motivation to do so, a patent owner may choose not to be the first to request reexamination In most cases weighing of the pro and con factors would result in the patent owner not filing for reexamination

17 Conclusion In most instances patent owners are ill- advised to seek reexamination of their patents that were issued prior to KSR The risks of something bad happening to the patent claims is greater than having the PTO determine that no SNQ is presented or that a first action NIRC will issue

18 Thank You If you have questions are comments regarding this presentation you can reach me at: or