Reexamination, Reissue, Certificate of Correction and New America Invents Act Proceedings: Substantive and Strategic Overview

Reexamination, Reissue, Certificate of Correction and New America Invents Act Proceedings: Substantive and Strategic Overview Eugene T. Perez, Esq. Birch, Stewart, Kolasch & Birch, LLP February 3, 2012 2012 Birch, Stewart, Kolasch & Birch, LLP

Many Ways to Change a Patent Issued patents may be corrected, modified, or attacked in several ways including: Ex Parte Reexamination; Inter Partes Reexamination; Reissue; Certificate of Correction; Disclaimer (i.e., statutory or terminal); and Interference.

Leahy-Smith America Invents Act (Sept. 16, 2011 - Public Law 112-49) The AIA added: Post-Grant Review (09/16/12*); Inter Partes Review (to replace inter partes reexamination on 09/16/12); Supplemental Examination (09/16/12); and Post-Grant validity review of business method patents (09/16/12, but ends 09/16/20). *Based on Sec. 3 patents

Topics Grounds - Generally Error/Grounds for Reissue The Recapture Rule in Reissues Grounds for Filing Reexam IPR versus PGR Comparison of Threshold Standards Intervening Rights Estoppel Real Party In Interest (and Privy) Use of Petitions Improper Certificates of Correction Disclaimers

Grounds - Generally Reissue Patent Owner (PO) files all patentability grounds Reexamination Ex parte PO can file Inter partes - third party only Prior art patents and publications

Grounds - Generally (cont d) Post-Grant Review Third party files All patentability grounds Smaller time frame to request Inter Partes Review Third party files Prior art patents and publications

Error and the Declaration for Filing Reissue What is an error and pitfalls to avoid

Reissue - 35 U.S.C. 251 A reissue application is filed when an issued patent, through error and without any deceptive intention, is considered to be wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent Sec. 20 Technical Amendments of AIA deletes and without any deceptive intention (effective September 16, 2012) Therasense concern

Reissue: Types of errors the claims are too narrow or too broad; the drawings or disclosure of the specification contain inaccuracies; the applicant failed to claim or incorrectly claimed foreign priority; and the applicant failed to make reference to or incorrectly made reference to prior copending U.S. applications.

No error no reissue In re Keil, 1 USPQ2d 1427 (Fed. Cir. 1987): Patent owner filed reissue without any change to claims to provoke interference against another patent. Attempt to file reissue application without corrective change is, in general, prohibited.

Error Deliberate acts usually may not serve as basis for reissue. Example: Failure to timely file a divisional application with non-elected claims is not an appropriate error.

A different type of error that is allowed: In re Tanaka (CAFC 2011) Original patent claims - - Claim 1: independent Claim 2: dependent on claim 1 Reissue: add new dependent claim 3 (no change to original claims 1-2) Is this an acceptable error?

Reissue Error: In re Tanaka (cont d) BPAI: Addition of narrower, dependent claims does not present the type of error that is correctable by reissue under 35 U.S.C. 251 because the patent was not inoperative without the new dependent claims. CAFC: each claim has a purpose that is separate and distinct from the remaining claims.

Reissue Error: In re Tanaka (cont d) CAFC: the omission of a narrower claim can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by the law.

Reissue - The Declaration Requires a statement of at least one error which is relied upon to support the reissue application, i.e., which provides a basis for the reissue. PITFALL: Insufficient to reproduce the amended claims and assert the error is evident from the amendment. The error must be specific refer to the specific claim(s) and specific claim language

Reissue Declaration (cont d) Otherwise the Examiner will reject the claims for defective oath/declaration Will also require a supplemental reissue oath/declaration stating the error (in more detail)

Reissue Declaration (cont d) PITFALL: Because of changes or amendments made during prosecution, a previously identified error may no longer apply. Then a supplemental oath/declaration will be needed to identify at least one error now being relied upon as the basis for reissue, even though the prior oath/declaration was earlier found proper by the Examiner.

Reissue Declaration (cont d) USPTO has proposed several changes to the reissue declaration (see Fed. Reg., Vol. 77, No. 4 (01/06/12), including: Requiring specific identification of any broadening of a patent claim, rather than merely provide an alternative statement that there is correction of an error of claiming more or less than a patentee was entitled to claim. A claim broadened in any respect must be treated and identified as a broadened claim.

Recapture Rule And Recent Federal Circuit Cases Modifying Rule

The Recapture Rule You can get broadening reissue within 2 years. PITFALL: But cannot obtain claims of same/broader scope than claims cancelled from original application (to get allowance). May obtain claims narrower in scope than cancelled claims, but broader in scope than the patent claims. The recapture rule serves the same policy as the doctrine of prosecution history estoppel.

Recapture Rule 3 Step Analysis Three steps in recapture analysis (from In re Clements, 45 USPQ2d 1161 (Fed. Cir. 1997)): (1) determine whether and in what aspect the reissue claims are broader in scope than the patent claims; (2) determine whether the broader aspects of the reissue claims relate to the surrendered subject matter; and (3) determine whether surrendered subject matter has crept into the reissue claims.

Recapture Rule In re Clements (cont d) If reissue claim as broad/broader in some aspects but narrower in other aspects than previously cancelled/amended claims, then: a) if reissue claim broad/broader in an aspect relevant to previous prior art rejection (what was surrendered), Recapture Rule bars claim (even if claim is narrower in another unrelated aspect). b) if reissue claim narrower in an aspect relevant to previous prior art rejection, Recapture Rule does not bar claim (even if claim is also broader in an aspect unrelated to the rejection).

Recapture Rule - Recently Modified In re Mostafazadeh, 98 USPQ2d 1639 (Fed. Cir. 2011) Technology: packaging for semiconductor chips Applicants added circular attachment pads during prosecution During reissue, patent owner wanted to eliminate circular but keep attachment pads

Recapture Rule In re Mostafazadeh (cont d) A narrowed limitation may be modified, however, so long as it continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Thus, some small amount of recapture is allowed. Eliminating limitation entirely - recapture rule applies.

Recapture Rule In re Mostafazadeh (cont d) Here, recapture of surrendered subject matter was not avoided by materially narrowing claims. attachment pads known in the art and by itself not considered materially narrowing Again, Patent Owner wanted to delete circular from circular attachment pads What if attachments pads limited another way?

Recapture Rule Entire Family History to Be Reviewed In analyzing recapture, the prosecution history of the original application as well as the history of the entire patent family (i.e., related applications including divisional, continuation, or CIP) will be reviewed. MBO Labs v. Becton, Dickinson & Co., 94 USPQ2d 1598 (Fed. Cir. 2010).

Ex Parte Reexam Advantages and Disadvantages

Ex Parte Reexam PO or 3 rd Party may file request. Advantage: anonymous and no estoppel. DRAWBACK: limited participation by 3 rd Party: In general, no right to respond to patent owner No right to appeal or participate in patent owner s appeal PO may conduct personal interview with Examiner without influence of 3 rd Party

Ex Parte Reexam: Strategies to Consider Consider when the prior art attack is simple (e.g., 102) and contesting PO s responses not needed. Consider if PO will have to amend claims and create intervening rights (e.g., limited disclosure in specification). Do not consider when 3 rd Party desires more participation, and instead consider inter partes reexam, PGR, IPR and/or (concurrent) litigation.

Ex Parte Reexam (cont d) CAUTION: USPTO has proposed adding sections (6) and (7) for 37 C.F.R. 1.510(b) (see Fed. Reg., Vol. 77, No. 4 (01/06/12)): (6) That the statutory estoppel provisions of IPR and PGR do not prohibit the ex parte reexam. (7) Identifying real party(ies) in interest to the extent necessary to determine whether any IPR or PGR filed subsequent to the ex parte reexam bars a pending ex parte reexam filed by the PRI or its privy from being maintained. May be submitted under seal though.

Inter Partes Reexamination Patents that Qualify; Windows for Filing; Advantages and Disadvantages

Inter Partes Reexam: Who and Qualifying Patents Only 3 rd Party files. CAUTION: Patent has to issue from original application filed on or after 11/29/99. But an original application can include a later filed related application even though the parent patent was filed before 11/29/99. Cooper Technologies Co. v. Dudas, 536 F.3d 1330, 87 USPQ2d 1705 (Fed. Cir. 2008).

Inter Partes Reexam: When and Prior Art Basis When: Any time during period of enforceability (not necessarily expiration) of patent. Must be prior art in the form of patents or printed publications. Cannot be based on prior public use or sale, lack of written description, etc.

Inter Partes Reexam: Old Prior Art Seen In New Light But prior art that is not new can be seen in a new light. In re Swanson, 540 F.3d 1368, 88 USPQ2d 1196 (Fed. Cir. 2008): Federal Circuit found claims valid in view of prior art reference; same prior art reference can raise substantial new question of patentability for purposes of ex parte reexamination proceeding (claims found unpatentable).

IP Reexam Advantages to Third Party Requester Presumption of Validity In litigation, a patent receives a presumption of validity, which requires that a patent be proven invalid by clear and convincing evidence. In an inter partes reexam, no such presumption of validity. The accused infringer contests validity on equal ground with the patent owner. Also applies to IPR and PGR.

IP Reexam Advantages to Third Party Requester Examiner versus Judge The Patent Examiner will likely understand more complicated attacks on patentability Third party requester can characterize prior art, etc. A jury or a judge in a court may not appreciate such attacks or will simply give more deference to the fact that the PTO previously made a determination in favor of patentability. Many judges may not even have a technical degree.

IP Reexam Advantages to Third Party Requester - Costs Inter partes reexam is a much less costly method of contesting validity versus litigation in courts. No discovery allowed in inter partes reexam. Patent Owner cannot inquire about a product accused to infringe. Third Party Requester can protect trade secrets.

IP Reexam Advantages to Third Party Requester Effects on Litigation The Patent owner can create prosecution history estoppel while addressing the Examiner s rejections. e.g., Patent Owner comments on prior art use in Markman hearing in parallel litigation to narrow claim scope. Third Party Requester may submit adverse decision (e.g., Office Action rejecting claims) in parallel litigation to show claims are invalid.

IP Reexam Advantages to Third Party Requester Effects on Litigation (cont d) But court may not allow such a submission: Microsoft Corp. v. Commonwealth Scientific & Industrial Research Organisation, 6-06-cv-00549 (April 9, 2009 E.D. TX): without any [final] conclusions of the PTO to rely upon, evidence that the PTO is currently reexamining the patent may work to unduly alleviate defendants clear and convincing burden for both invalidity and willfulness in front of the jury.

IP Reexam Advantages to Third Party Requester Stay Litigation Inter partes reexam can provide important timing and procedural advantages over litigation. District courts sometimes grant stays of litigation when inter partes reexam is ordered. Sometimes parallel litigation with reexam (e.g., Callaway v. Acushnet).

Merger or Suspension The USPTO may merge (sua sponte) or suspend one or more concurrent proceedings. For example, with concurrent reissue and inter partes reexam of the same patent, USPTO may suspend the later filed proceeding until conclusion of the earlier filed proceeding. USPTO considers different statutory rights of PO and TPR.

IPR and PGR General Similarities and Differences Between the Two

Inter Partes Review & Post Grant Review Similar advantages to reexam, such as preponderance of evidence standard; 3 rd party participation; PO creating PHE; etc. IPR: all patents will qualify (key?) PGR: only patents subject to new 102/103 (so on or after March 16, 2013, but even later than this date) Slow ramp up in use likely

IPR & PGR (cont d) IPR: File the later of: 9 months after grant/reissue, or After termination of any PGR. PGR: within 9 months of patent grant Of reissue grant too, so long as not requesting cancellation of claim same as/narrower than claim in original patent. Shorter window than IPR DISADVANTAGE: How many issues are sufficiently defined or matured within 9 months?

IPR & PGR (cont d) IPR: witnesses submitting affidavits or declarations may be deposed, or otherwise necessary in the interests of justice PGR: some discovery related to factual assertions advanced by either party IPR and PGR: settlement possible [Threshold standards, intervening rights, estoppel and RPI requirement discussed in later slides]

Threshold Standards A Comparison

Have to Meet Threshold Standard to Even Start Proceeding Ex Parte Reexam: Substantial New Question of Patentability (SNQ) Supplemental Examination: SNQ Inter Partes Reexam: SNQ before AIA; now reasonable likelihood that the petitioner would prevail Inter Partes Review: reasonable likelihood Post-Grant Review: more likely than not at least one claim is unpatentable

Different Threshold Standards SNQ: A reasonable examiner would consider the teaching to be important in deciding whether or not at least one claim of the patent is patentable. Relatively low standard, and thus most ex parte reexam (and previous inter partes) requests are granted.

Different Threshold Standards (cont d) With SNQ standard, 92% ex parte and 95% of inter partes requests are granted as of Sept. 30, 2011. Lower than prima facie case of unpatentability. Though request initially granted, sometimes patentability of claims are confirmed without a first Office Action rejecting claims.

Different Threshold Standards (cont d) reasonable likelihood : elevated standard over SNQ, but unclear USPTO appears to be granting inter partes reexam, and on the same day issuing the first Office Action that rejects the claims by (substantially) adopting the third party requester s proposed rejections. See, e.g., Reexam Control Nos. 95/000,646 (filed 10/18/11); 95/001,788 (10/18/11) Denied in Reexam Control No. 95/001,780

Different Threshold Standards (cont d) more likely than not : Some believe above SNQ standard but below reasonable likelihood standard. But legislative history - - PGR standard is higher than IPR standard.

Intervening Rights In Reissue and Reexam

Intervening Rights PITFALL: Patent owner has to consider that amending the claims (during reissue, reexam, PGR or IPR) can create intervening rights (35 USC 316, 252). Intervening rights: Absolute & Equitable. Example: Court may allow continued infringement of patent to protect investments made before grant of reissue patent or reexam cert. Court will decide what is fair to both parties concerning scope of rights and possible royalties.

Intervening Rights (cont d) Infringer is liable for infringement of Reissue patent claim if Reissue claim is substantially identical to original patent claim. If claim changed in Reissue patent from original patent and competitor now infringes Reissue patent, competitor may be entitled to intervening rights. Infringer may enjoy intervening rights for activity that infringes Reissue claims if court determines it is appropriate under limited circumstances.

Intervening Rights (cont d) Under 35 U.S.C. 307, a patent is not revised by any amendment or cancellation of a claim made during a reexamination proceeding until a reexamination certificate is issued. Patent owner has to also consider arguments of claim construction as creating intervening rights.

Intervening Rights Based on Arguments Marine Polymer Tech. v. Hemcon, Inc., 100 USPQ2d 1257 (Fed. Cir. 2011): If the scope of the claims was actually and substantively changed as result of patentee's arguments to PTO, the claims have been amended by avowal or estoppel, and intervening rights apply, even if patentee did not amend language of claims on reexamination. Hemcon has absolute intervening rights.

Intervening Rights Based on Arguments (cont d) Rehearing en banc recently granted. See also University of Virginia Patent Foundation v. General Electric Company, 2010 U.S. Dist. LEXIS 119114 (W.D. Va. 2010)(Moon, J.) Intervening rights to apply in an ex parte reexamination to an unamended claim. Patent owner argued a new interpretation to the base claim in connection with the cancellation of a dependent claim. Judge holds narrower scope for the original claim.

Estoppel Be Mindful of Concurrent or Potential Litigation

Different Estoppels Ex part reexam: no estoppel Inter partes reexam: raised or could have raised IPR and PGR: raised or reasonably could have raised during the review Better estoppel versus inter partes reexam

Inter Partes Reexam: Three Estoppel Provisions A certification by the third party requester that the estoppel provisions of 1.907 do not prohibit the inter partes reexamination. Rule 907 has three provisions

Rule 907 The Three Estoppel Provisions 37 C.F.R. 1.907(a)-(c): Once reexam ordered, the TPR or its privies cannot file a subsequent inter partes reexam. If a final decision in civil action, then neither that party nor its privies can request inter partes reexam based on issues raised or could have raised in the civil action. If a final decision in the inter partes reexam (and favorable to patentability), then neither that party nor its privies can request inter partes reexam based on issues raised or could have raised in the reexam.

Raised or Could Have Raised raised or could have raised : Newly discovered prior art not being subject to estoppel provision. This is a big disincentive for TPR to file inter partes reexam (how do you define could have raised?).

AIA: Raised or Reasonably Could Have Raised For PGR and IPR, cannot raise an issue in later USPTO proceeding (e.g., ex parte reexam), ITC or civil action Estoppel effective with written decision of PTAB Much faster than inter partes reexam Post-grant estoppel has bigger implications versus inter partes review

The Real Party in Interest Requirement And Privy

Requesting Inter Partes Reexam 37 C.F.R. 915(b)(8): A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy.

Real Party in Interest The person or entity whose rights are involved and stands to gain from the petition or proceeding (or lawsuit) even though the petitioner is someone else IMPORTANT: due to estoppel provisions.

Certification of the Real Party in Interest The purpose of identifying the real party in interest is to allow others to evaluate if they are prevented from filing a new request for reexamination

Certification of the Real Party in Interest (cont d) 35 U.S.C. 317: Once an order to reexamine has been issued under 1.931, neither the third party requester, nor its privies, may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate is issued under 1.997, unless authorized by the Director The requirement avoids harassment of patent owner by multiple filings of reexams

What happens when the TPR fails to identify all privies? Control No. 95/000,166: Patent Owner (PO) filed a petition on October 1, 2007 alleging the TPR (Samsung) failed to identify the real party in interest (RPI) in the original request for reexam PO also alleged that failure to identify all parties in interest will mean the unidentified parties will be able to evade the estoppel provisions of 35 U.S.C. 315(c) and 317(b)

What happens when the TPR fails to identify all privies? (cont d) The disputed patent involved in multiple litigations (PO has sued one or more defendants for patent infringement, including Samsung and Micron)

What happens when the TPR fails to identify all privies? (cont d) USPTO denies petition: The Office is not required to investigate and determine the accuracy of the TPR certification The Office does not have the tools (e.g., subpoena power; discovery) nor did Congress provide the means (e.g., eliciting testimony; crossexamination; punitive sanctions for noncompliance) to determine the accuracy of the identification of the RPI

What happens when the TPR fails to identify all privies? (cont d) Further, regarding PO s assertion that the TPR has to identify all parties related or codefendants of Samsung, such a construction would be unreasonable

RPI Requirement for AIA Proceedings A request for post-grant review or inter partes review requires identification of all real parties in interest. Estoppel applies to all RPIs as well to any privies to the petitioner. One who is a partaker, or has any part or interest in the proceeding. Involved in a particular transaction that results in a union, connection, or direct relationship with another.

Use of Petitions in Reexam Proceedings Rules 181, 182 & 183

Reexaminations: Rules Are Stringent Plenty of strict rules in reexam: Timelines, page limits, need for supplemental response, etc. Can use a petition to waive a rule (e.g., waive the 50-page limit in inter partes reexam when filing a response to an Office Action). Note: third party requester cannot file petition to extend 30-day due date.

Reexamination: Rule 182 Petition for Request for Continued Reexamination ( RCR ) The RAN issues what can you do? Can file a RCR Request for Continued Reexamination (like RCE for normal prosecution) 1292 Off. Gaz. Pat. Office 20 (Official Gazette dated March 1, 2005) allows for RCR Reopening prosecution: continuation practice is not applicable to a reexamination proceeding.

Procedure: Rule 182 Petition for RCR (cont d) Remember that this is a petition that needs a decision from the USPTO does not toll due dates Should wait first for the RAN to issue - - this is because the RAN itself will indicate whether or not the claim amendments are entered (usually a checked box at the beginning of the RAN)

Rule 181 Petition Two types: (1) Premature ACP invoking supervisory authority of the USPTO Director; and (2) Denial of entry of amendments after the ACP For (1), petition that ACP is premature (M.P.E.P. 2672(VI) and 2673.02) (2) is with respect to the RAN Filing the Petition does not toll the time period for filing a notice of appeal of cross appeal

Rule 183 Petition Petition for Suspension of Rules When filing the Rule 181 Petition, should simultaneously file (a) Rule 183 Petition requesting waiver of prohibition of an extension of time for filing an appeal brief, and (b) a request for an extension of the period to file the appeal brief until after a decision on the petition under Rule 181 (MPEP 2673.02)

Rule 183 Petition Exceeding Page Limits Can file Rule 183 Petition to waive page limits. Response cannot exceed 50 pages in length (but excludes claims and references). 37 C.F.R. 1.943(b). Patent Owner appellant briefs are not to exceed 30 pages or 14,000 words. 37 C.F.R. 1.943(c). Unclear how these petitions will be used in IPR and PGR.

Use of Certificates of Correction When Not Proper

What Can Be Corrected? Claims incompletely or incorrectly printed in patent by USPTO Misspelling of words or names Mistakes in drawings Incorrectly named inventors, if correct names are of record if adding inventor, need Petition, more gov t fees and statement(s) signed by inventor(s) and assignee

What Cannot Be Corrected? Cannot correct claim to priority (unless USPTO mistake). Need to use Reissue Application, or can be corrected in an ex parte or an inter partes reexamination proceeding if there is also a prior art issue.

When PO Should Have Filed A Certificate of Correction Group One Ltd. v. Hallmark Cards Inc., 74 U.S.P.Q.2d 1759 (Fed. Cir. 2005) Printing error by USPTO omitted key claim language The error in claim 1 could have been corrected with a Certificate of Correction, but the patentee did not request a COC District Court can only correct error if it is evident from face of patent (which it was not) Claims invalid for indefiniteness

Improper Certificate of Correction Central Admixture Pharmacy Serv. Inc. v. Advanced Cardiac Solutions, 82 U.S.P.Q.2d 1293 (Fed. Cir. 2007) patent claims recited chemical solution used during heart surgery that contained dissolved calcium and glucose at certain concentrations. original claims recited concentrations based on osmolarity (per liter) units. Certificate of Correction (over 2 years after patent grant) changed to osmolality (per Kg) units.

Improper Certificate of Correction (cont d) Patent record did not indicate that osmolarity was a mistake or that it should have been corrected to osmolality. CAFC held that the claim change was not supported by the record and broadened the claim after 2 years, so COC was invalid (so revert to original claims).

Disclaimers Two Types

Disclaimers Statutory Disclaimer: Patent owner may disclaim a complete claim or claims of his or her patent. Patent owner has reason to believe that the claim or claims are too broad or otherwise invalid.

Disclaimers (cont d) Terminal Disclaimer: Disclaims or dedicates to the public the entire term or any portion of the term of a patent or patent to be granted. Applies to all claims in patent. Certificate of Correction, Reissue, and Reexamination are not available to withdraw or otherwise nullify the effect of a recorded terminal disclaimer.

Questions? Eugene T. Perez, Esq. etp@bskb.com