Overview of Post-Grant Patent Practice Tools

Overview of
Post-Grant Patent Practice
Kevin Laurence of Stoel Rives LLP
and
Matt Phillips of Renaissance IP Law Group
LLP

Seminar for
The Chartered Institute of Patent Attorneys
London, United Kingdom
9 May 2012

2

Agenda
• Tools for Challenging Patents
• Review Proceedings
• Post-grant review (PGR)
• Inter partes review (IPR) proceedings
• Interim (business method) proceedings
• Reexamination
• Tools for Correcting Patents
• Reissue
• Owner-initiated reexamination
• Supplemental examination
Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012

3

Current Post-Grant Tools
3

Inter Partes
Reexamination Tools for
Patent Challengers
Ex Parte at the PTO
Reexamination

Tools for Reissue
Patent Owners
to Correct Patents
Certificate of
at the PTO Correction

Disclaimer


4

Post-Grant Tools
after September 16, 2012
4

Post-Grant Review

Tools for
Inter Partes Review Patent Challengers
at the PTO
Ex Parte
Reexamination

Supplemental
Examination
Tools for
Patent Owners Reissue
at the PTO
Certificate of
Correction

Disclaimer


5

Overview of Tools
FOR Patent Challengers
5

6

Tools for Patent Challengers
6
Until 9/16/12
Prior Art - Other Bases -
Novelty (§ 102), Patentable Subject Matter (§ 101),
Obviousness (§ 103), or Utility (§ 101),
Double Patenting Enablement (§ 112),
Written Description (§ 112)

Printed
Publication

Application
Filed On or
After 11/29/99

Ex Parte Inter Partes
Litigation
Reexam Reexam


7

From 9/16/12 Until Sometime After 3/16/13
7

Prior Art
Other Basis
(§§ 102, 103, or
(§§ 101,112)
x2 Pat.)

Printed
Publication

Outside Charged with
Initial 9-Mo. Infringement of
Window Bus. Meth. Pat.

Business
Method Patent Litigation
Reexam Review
Review


8

Sometime After 3/16/13 Until 9/16/20
8

Prior Art
Other Basis
(§§ 102, 103, or
(§§ 101,112)
x2 Pat.)

Printed
Publication

Outside Inside Charged with
Initial 9-Mo. Initial 9-Mo. Infringement of
Window Window Bus. Meth. Pat.

Business
Ex Parte Inter Partes Post-Grant
Reexam Review Review
Review


9

After 9/16/20
9

Prior Art
Other Basis
(§§ 102, 103, or
(§§ 101,112)
x2 Pat.)

Printed
Publication

Outside Inside
Initial 9-Mo. Initial 9-Mo.
Window Window

Litigation


10

EPO Oppositions & Post-Grant Review:
Timing & Alerts

Opposition Post-Grant Review
9-month window to initiate
EPO provides the Register USPTO does not yet provide an
Alert service (formerly alert service.
WebRegMT), which
provides automatic Third parties provide notices such
updates regarding as Minesoft’s Patenttracker alerts.
changes to data contained
in the European Patent
Register.


11

Basis/Threshold/Initiation

Opposition Post-Grant Review Proceeding

Almost any basis of challenge Almost any basis of challenge
available (except lack of available (except best mode)
clarity and unity)
Straw men permitted No strawmen - real-party-in-
interest must be identified
Admissibility of an opposition Most show that it is more likely
is only considered on formal than not that at least one
grounds challenged claim is unpatentable


12

Presumption & Burden
Claims are presumed to be valid
in litigation but not in PGR
Opponent has the Evidence must be proven merely
burden of proof but by a preponderance of evidence
it can be reversed instead of the higher standard
in certain limited required in litigation, clear and
circumstances convincing evidence


13

Construction & Prosecution History Estoppel
Likely given their broadest
reasonable interpretation and not
the narrow construction given
during litigation in U.S. district
courts
Statements made Prosecution history estoppel –
during prosecution statements made during
do not bind patent prosecution impact review
proprietor during proceeding and litigation
the opposition

14

Response by Patent Owner to
Petition for Post-Grant Review
• Before PGR is ordered, the patent owner has
an opportunity to file a response to the third
party’s petition setting forth the reasons why
a post-grant review should not be instituted.
• After such a response has been filed or after
the response period has expired, the PTO
will then have three months to determine
whether to institute a post-grant review
proceeding.


15

Procedures
Opposition Division - 3 examiners Patent Trial & Appeal Board (PTAB) –
including one who granted patent 3 administrative patent judges (APJs)
Limited rights to make claim amendments (no broadening)
Administrative proceedings such as oppositions and review proceedings provide
less robust opportunities for discovery than litigation
oral hearings
Proceeding may continue despite settlement
intervention after 9-month window, joinder permitted
even during appeal
Appeals are made to the Boards of Appeals are made to the Federal Circuit
Appeal; no estoppel so patent can
still be revoked by national court


16

Concurrent/Related Litigation

parallel national court proceedings parallel litigation regarding
regarding infringement infringement and patentability (when
counterclaimed)
No legal estoppel Estopped, with respect to a
challenged claim, from raising any
ground in court, inter partes review or
ex parte reexamination that the
petitioner raised or reasonably could
have raised
Claim interpretation at EPO does Need for consistent characterizations
not control infringement litigation at PTO and parallel litigation


17

Duration and Costs
2-4 years; 5 months for preliminary proceeding and
then once PGR is ordered, it must be
appeals typically require completed within 12 months unless good
24-30 months cause is shown for an additional 6 months;
appeals typically take about a year at the
Federal Circuit
Filing fee = €745 Proposed minimum filing fee is $35,800
After filing the notice of After filing the petition to request a post-
opposition, the costs for the grant review proceeding, the costs for the
patent proprietor and the patent owner or the petitioner may be ≈
opposer may be £5,000 - £100,000-£400,000.
£40,000.


18

Review Costs Likely Close to Interference
Costs
18

Source: AIPLA Report of the Economic Survey 2011

19

Kill, Wound, and Miss – What Will be
the Results of PGR and IPR?
U.S. EPX U.S. IPX EPO Opp’n

Kill Miss
Miss Miss
26%
Kill Kill
44%
Wound
Wound Wound
30%

Kill = All claims cancelled
Wound = Claims amended
Miss = All claims confirmed


20

Popularity – 3rd Time Is the Charm
EPX in ’80; EPX, IPX in ’99; EPX, IPR and PGR in ‘11

5% opposed/year

?%
reviewed/year

0.5%
reexamined/year


Cooperation between Litigators and
Review/Reexamination Counsel
21

vs.

Reexam/Review Litigators
Counsel


22

Comparison of the Availability of
Review Proceedings – cont’d
Post-Grant Review Inter Partes Review
• Available during a first • Available during a second
window, within nine window, nine months after
months after grant of issuance and any PGRs
original or broadening have terminated
reissue patent • Available on September 16,
• Post-grant review statutes 2012
go into effect on 9/16/12 • Unlike with inter partes
but only patents governed reexam, there is no eligibility
by the first-inventor-to-file cutoff based on patent’s
provisions are eligible for filing date
post-grant review (some • Number of IPRs may be
time after 3/16/13) limited to 281 per year in
each of the first 4 years

23

Comparison of the Availability of Review
Proceedings & Stays– cont’d
If sued for infringement, petitioner, real
party in interest & privies have 1 year to
seek inter partes review
Not available if petitioner or real party in interest has filed declaratory judgment
action
Subsequent declaratory judgment action filed by petitioner or real party in
interest will be automatically stayed unless patent owner consents
No stay of litigation pending PGR if
1) Patent owner brings suit
within 3 months of grant, and
2) Patent owner moves for
preliminary injunction


24

Comparison of Review
Initiation Criteria
Proceeding Criteria to Initiate

Ex Parte Substantial new question of patentability
Reexamination (SNQP)

More likely than not (greater than 50% chance)
Post-Grant Review that challenged claim is unpatentable (MLTN)
or novel/unsettled important legal question
Reasonable likelihood (50/50 chance) that the
petitioner would prevail (RLP), which is a
Inter Partes Review somewhat flexible standard that allows the
judge room for the exercise of judgment.” 77
Fed. Reg. 7041, 7046 (Feb. 10, 2012)


25

Initiation Threshold – cont’d
• No need to show that the patentability issues are new?
– Maybe not. See 35 U.S.C. § 325(d): “In determining
whether to institute or order a proceeding under this
chapter [32 – post-grant review], chapter 30 [ex parte
reexam], or chapter 31 [inter partes review], the Director
may take into account whether, and reject the petition or
request because, the same or substantially the same prior
art or arguments previously were presented to the
Office.”
– Proposed rules say nothing about this.


26

Bases/Grounds for Review Proceedings
• “[A]ny ground that could • Only on a ground that
be raised under [35 could be raised under
U.S.C. §] 282(b) [(2) or section 102 (novelty) or
(3)] (relating to invalidity 103 (obviousness) and
of the patent or any only on the basis of prior
claim)” 35 U.S.C. § art consisting of patents
321(b). or printed publication.”
• All grounds for 35 U.S.C. § 311(a).
unpatentability except • Double patenting?
best mode


27

Other Differences between Post-Grant
Review and Inter Partes Review
• While the estoppel implications are the same,
the broader bases available for PGR means
that IPR creates less estoppel issues
• Standard for additional discovery
• IPR: Interests of justice
• PGR: Good cause (lower showing)


28

Similarities between Post-Grant Review
and Inter Partes Review
• Petition Requirements (70 pages for PGR and 50 pages for IPR)
• Patent Owner’s Preliminary Response
• Notice
• Patent Owner’s Response
• Motion to Amend
• Evidence and Exclusion of Evidence
• Hearing
• Settlement
• Final Written Decision
• Appeal
• Estoppel

29

Procedure for Review Proceedings
Patent Owner Response &
Petition Discovery Mo. to Amend
2 mo.
Preliminary Petitioner Reply &
Response Discovery Opposition
3 mo.
Patent Owner
Review Motions
Reply
?
YES
Oral Hearing
Notice of Review 12 mo. Final Written
(+ 6 mo.) Decision

Appeal Appeal
Initial Conference ?
Call
Settlement
Certificate
Agreement


30

Requirements for a Petition
Requesting PGR or IPR
• Mandatory notices
• Grounds for standing
– Availability of the patent for review
– Statement of non-estoppel
• Identification of challenge
– Each claim challenged
– Statutory ground for challenge
– How each challenged claim should be interpreted
– Why each challenged claim is unpatentable
– Relevance of supporting evidence for each challenge
• Supporting evidence as exhibits
• Fee; certificate of service; 50/70-page limit

31

Requirements for a Petition
Requesting PGR or IPR - cont’d
• Mandatory notices
– Each real party-in-interest
– Related matters
– Lead and back-up counsel
– Service information
• Also due from patent owner within 21 days
after service of the petition
• Duty to supplement


32

Fees for PGR or IPR Proceedings
• Sliding scale based on number of claims challenged
No. claims challenged Fee for PGR Fee for IPR
1 – 20 $35,800 $27,200
21 – 30 $44,750 $34,000
31 – 40 $53,700 $40,800
41 – 50 $71,600 $54,400
51 – 60 $89,500 $68,000
Each additional 10 $35,800 $27,200

• Non-challenged base claims on which a challenged claim
depends count toward the claim count for fees


33

Page Limit and Petition to Waive
• Excluded parts:
– Table of contents
– Table of authorities
– Certificate of service
• Motion to waive the page limit
– Petitions “must comply with the stated page
limits”
– But, an overlength petition can also be filed
with a motion


34

Preliminary Patent Owner Response
and Notice of Review

Preliminary Review NO
Petition End
Response ?

2 mo. 3 mo. YES

Notice of Review


35

Preliminary Patent Owner
Response in PGR or IPR
• May argue why no review should be instituted
– Petition is barred
– References are not prior art
– The prior art lacks a material claim limitation
– The prior art teaches away for the proposed combination
– The petitioner’s claim interpretation is unreasonable
• Prohibited
– Amendments
– New testimonial evidence
• May expressly waive right to file preliminary response
• May disclaim claims to avoid review


36

Notice of Review in PGR or IPR
• Sets the scope of the review
– Claims under review
– Grounds of challenge to be considered
• Will take into account patent owner’s preliminary
statement, if filed
• Notice of review will be published in Official
Gazette
• Notice will include a Scheduling Order
• Board’s decision whether to institute a review is not
appealable, but a party can request rehearing

37

PGR or IPR Proceeding

Owner Owner
Discovery Discovery
Period Period
Petitioner Motions to
Discovery Exclude Evidence
Period


38

Initial Conference Call

• About one month after Notice
• To discuss
– Scheduling Order
– Motions that parties plan to file
• Each side will submit a Motions List in advance
• Filing a motion not on the list will require prior
authorization and likely will not change the
schedule


39

Owner’s Initial Discovery Period

• Owner may take discovery once the proceeding
is instituted
• Types of “routine” discovery
– Exhibits cited in papers
– Cross examination of declarants
– Inconsistent information
• Additional discovery
– Must request by motion
– Standard is “interests of justice”


40

Owner’s Response
• Page limit is the same as the petition
• Can include evidence
– Should include all evidence owner intends to
rely on
• May be accompanied by a Motion to Amend
– As a separate paper
– See next slide


41

Motion to Amend
• The patent owner may file 1 motion to amend the
patent in 1 or more of the following ways:
– Cancel any challenged patent claim
– For each challenged claim, propose a reasonable
number of substitute claims
– One is presumed reasonable
• Additional motions to amend only upon
– Joint request to materially advance settlement
– Patent owner’s showing of good cause
– Pre-authorization by Board needed


42

Petitioner’s Reply & Opposition

• Petitioner can depose owner’s declarants
• Petitioner’s next filings
1) Reply to owner’s response
2) Opposition to Motion to Amend
• If petitioner files (2), then owner can file a
reply


43

Evidence Battles in PGR or IPR
1) Objection
– Due during deposition or
– Due within 5 days of service of the evidence
– Due within 10 days after institution of review if evidence arose
in preliminary proceeding
2) Supplementation
– Supplemental evidence due within 10 days of objection
3) Motion to Exclude
4) Motion in Limine
• Federal Rules of Evidence apply


44

Motion Practice
• All requests for relief must be by motion
• Movant has burden of proof
• Must get Board’s advance authorization to file
motion
– Scheduling Order will pre-authorize many motions
– Any other opposed motion will require conference call with Judge
to obtain authorization
• Notice of Motion per 37 C.F.R. § 42.21
• Statement of material facts
– Separately numbered sentences
– With citations to record

45

Motion Practice cont’d
• Non-moving party files Opposition
– Must identify disputed material facts
– Due one month after service of motion
• Moving party may file Reply
– May only respond to arguments raised in Opposition
– Due one month after service of opposition
• Page limits
– Motion: 15 pages
– Opposition: 15 pages
– Reply: 5 pages


46

Oral Hearing in PGR or IPR
• Either party may request
• Scheduling Order will set deadline for request
• Generally, petitioner will go first
• Demonstrative exhibits
– PTO advises against them
– If used, must serve 5 days in advance
• Generally, no live testimony
• No new evidence


47

Final Written Decision in PGR or IPR
• Due within 12 months of institution of
proceeding
• Time may be extended up to 6 months by the
Chief Administrative Judge
• Rehearing of Final Written Decision
– Due 30 days from final decision
• Rehearing of individual judge decisions
– Due 15 days from decision
– Reviewed by panel for abuse of discretion
• PTO will publish Certificate after rehearing and
appeal periods lapse

48

Appeal in PGR or IPR
• Final Board decision may be appealed
– To the Federal Circuit
– By either (losing) party
– Both parties may participate in appeal
• Deadline to file Notice of Appeal is 63 days from
date of final Board decision


49

Settlement in PGR or IPR
• To settle, parties must file written settlement
agreement before final written decision
• Board may still make patentability determinations,
notwithstanding the settlement, if the settlement is
inconsistent with the evidence
• Parties may request that the settlement be kept
nonpublic
– Exceptions for U.S. Gov’t agencies to access the settlement
– Any person may request access to the settlement for good cause
(very rare)
• No estoppel for petitioner


50

Petitioner Estoppel in PGR or IPR
• Claim by claim
• Estopped parties
– Petitioner
– Real parties in interest
– Privies of the petitioner
• Trigger: Final Written Decision by Board
• Scope: Grounds “raised or reasonably could have
raised”
• Forums in which estoppel applies
– “[P]roceeding before the Office”
– Civil action under 28 U.S.C. § 1338
– ITC proceeding


51

Review Petitioner Estoppel
Patentability
Challenges Raised
or Reasonably
Review Another PTO
Could Have
Petition Proceeding
Raised in IPR

Final Written Decision:
Challenge Failed

52

Review Petitioner Estoppel
Patentability
Challenges Raised
Review Court or ITC or Reasonably
Petition Litigation Could Have
Raised in IPR

Final Written Decision:
Challenge Failed

53

Patent Owner Estoppel in PGR or IPR
• Cancelation of claim in review precludes patent
owner from taking action inconsistent with the
adverse judgment, including obtaining in any
patent:
– Substantially the same claim
– Claim that could have been filed in the review
– Specification amendment denied during the review
• Source: 37 C.F.R. § 42.73(d)(3), not statute
• Concern is owner having continuation during
review


54

Handling Confidential Information
in PGR or IPR
• Can file confidential information with motion to
seal
– Proposed protective order should accompany motion
– Unless and until motion is denied, information will be
protected
• Even petition can have motion to seal
• PTO has published model and default protective
orders
• Can file motion to expunge confidential information
after proceeding concludes

55

Transitional Program for Review
of Business-Method Patents
• Created by AIA § 18 but not codified in Title 35
• Availability
– Available beginning 9/16/12 until 9/16/20
– Only for those “sued for infringement” or
“charged with infringement” AIA § 18(B).
– No limitation based on the filing date of the
patent
– No limitation based on the time since the
patent issued


56

• Availability cont’d
– Only for “covered business method patent”
– “[A] patent that claims a method or corresponding
apparatus for performing data processing or other
operations used in the practice, administration, or
management of a financial product or service, except that
the term does not include patents for technological
inventions.” AIA § 18(d)(1) (emphasis added)
– Technological Invention? “[C]onsidered on a case-by-case
basis: whether the claimed subject matter as a whole
recites a technological feature that is novel and unobvious
over the prior art; and solves a technical problem using a
technical solution.” 37 C.F.R. § 42.301(b)

57

• Conducted like a post-grant review (PGR)
• If the patent under review is governed by the pre-
AIA definitions of prior art, then the prior art that
can be used in a review is limited to
– That which qualifies under pre-AIA § 102(a), or
– That which qualifies under a new hybrid of pre-AIA §§
102(a) and 102(b). See AIA § 18(a)(1)(C)(ii).
• Estoppel affecting subsequent court action extends
only to arguments actually raised (not those that
“reasonably could have [been] raised”)


58

• Stay of litigation pending review
– Statutory factors
• Whether a stay, or the denial thereof, will simplify the issues in
question and streamline the trial;
• Whether discovery is complete and whether a trial date has been
set;
• Whether a stay, or the denial thereof, would unduly prejudice the
nonmoving party or present a clear tactical advantage for the
moving party; and
• Whether a stay, or the denial thereof, will reduce the burden of
litigation on the parties and on the court.
– Immediately appealable
– No exception for recent patentee seeking preliminary
injunction

59

Sometime After 3/16/13 Until 9/16/20
59

Prior Art
Other Basis
(§§ 102, 103, or
(§§ 101,112)
x2 Pat.)

Printed
Publication

Outside Inside Charged with
Initial 9-Mo. Initial 9-Mo. Infringement of
Window Window Bus. Meth. Pat.

Business
Review


Avoid Paralysis from Too Many Options for Weed Killers at
the Supermarket of Post-Grant Tools

60

61

Ex Parte Reexamination


62

Typical Flow of Ex Parte Reexam
Request First Office action Final Office action

SNQP? Interview Interview

YES
Response Response
Order granting
reexamination

NIRC

Reexamination
Appeal
certificate


63

Ex Parte Reexamination Highlights
• Initiated by request for reexamination
– May be filed by owner or third party or PTO Director
– Must present a substantial new question of patentability
• Handled by Central Reexamination Unit (CRU)
• Ex parte prosecution
– Short deadlines
– No extensions of time as a right
– Interviews very common
– Compact prosecution with liberal after-final amendments
• No broadening allowed
• Claim changes can have serious consequences
• Much interplay with litigation


64

Ex Parte Requests by Technology
800

Mechanical
700
Electrical 229
221
600
Chemical 237 203
235
500

198 165
400
155
414 395
150
300 305 335
275
107 188 228
200 156
118
78
100
124 130 138 118 133 138 120 137 143
87
0
2002 2003 2004 2005 2006 2007 2008 2009 2010 2011


65

Case Study No. 1


66

Case Study No. 1 – Patent
U.S. Pat. 5,575,925


67

Case Study No. 1 – Claim
10. A method of installing a catch basin filter in a catch basin,
the catch basin comprising:
an inlet through which water and solids flow into the catch basin,
an outlet through which water flows out of the catch basin, wherein the inlet is positioned
above the outlet, and
a plurality of basin sidewalls, each sidewall having an upper end at the inlet and a recess
located at the upper end, the sidewalls defining a chamber, the grate located on the top of the
basin inlet and having grate sides positioned in the recesses, and
the filter comprising:
a filter bag having an open top, a closed bottom and one or more sidewalls extending
between the top and the bottom of the bag; and
a flap joining the top of each sidewall,
said method comprising the steps of:
placing the filter bag in the catch basin so that each of the bag sidewalls are adjacent to the
catch basin sidewalls and the filter bag open top is positioned above the filter bag closed bottom;
placing each of the filter bag flaps into the recess of the upper end of the catch basin; and
sandwiching each of the filter bag flaps between the top of the basin and the grate sides,
thereby holding the bag in place.


68

Case Study No. 1 – 1st Reexams
• Reexamination Nos. 90/005,603 & 90/005,652
– Requested 1999 and 2000; merged
– Based on same art (Metal Era Basket)
The image part with relationship ID rId3 was not found in the file.


69

Case Study No. 1 – 1st Reexams
– Certificate issued 2001
– Patentability of all claims confirmed
– PTO agreed with owner that Metal Era Basket did not
disclose the “adjacent” limitation: “each of the bag
sidewalls are adjacent to the catch basin sidewalls”
– PTO accepted owner’s definition (proffered by
argument only) of “adjacent” to require no
intervening structure anywhere between the bag
sidewalls and the catch basin sidewalls.


70

Case Study No. 1 – 2nd Reexams
– Requested 2005 and 2006; merged
– Based on same art (Construction site plans in city hall offices of
Redmond and Bellevue, WA)
The image part with relationship ID rId3 was not found in the file.


71

• Reexamination No. 90/007,475
– Request filed 2005. Granted. SNQP raised.
– First Office action rejection
– Owner’s response makes 2 arguments
(1) Site Plans do not qualify as prior art
(2) Prior art fabric sheet is not “bag”
– Submits dictionary definition
– Submits declarations from PHOSITAs
– Submits declaration from litigation expert witness
– PTO accepts (1) and punts (2), issues NIRC


72

• Reexamination No. 90/008,060
– Request filed 2006
– Based on same “old” art + “new light”
– New light = declarations from Redmond & Bellevue city
employees authenticating site plans, their public availability,
and dates thereof
– Request also answers owner’s substantive arguments re. “bag”
– PTO grants request
– Merged with prior reexam (No. 90/007,475)
– Rejection reinstated ; PTO says the prior art sheet has a
carrying capacity and functions like a bag


73

Case Study No. 1 – 2nd Reexam
• Reexamination No. 90/008,060 cont’d
– Owner amends claim 10 to add “preforming” step:
“preforming the filter bag”
– Rejection maintained and made final; PTO says the prior art
sheet is preformed because it was manufactured
– After final rejection
• Owner’s attorney interview examiner
• Owner amends “preforming” step: “preforming the filter
bag by joining sidewall portions together.”
– Claim allowed with that after-final amendment
– Certificate issued August 2008


74

Case Study No. 1 – Am. Claim
10. A method of installing a catch basin filter in a catch basin,
the catch basin comprising:
an inlet through which water and solids flow into the catch basin,
an outlet through which water flows out of the catch basin, wherein the inlet is positioned
above the outlet, and
a plurality of basin sidewalls, each sidewall having an upper end at the inlet and a recess
located at the upper end, the sidewalls defining a chamber, the grate located on the top of the
basin inlet and having grate sides positioned in the recesses, and
the filter comprising:
a filter bag having an open top, a closed bottom and one or more sidewalls extending
between the top and the bottom of the bag; and
a flap joining the top of each sidewall,
said method comprising the steps of:
preforming the filter bag by joining sidewall portions together;
placing the filter bag in the catch basin so that each of the bag sidewalls are adjacent to the
catch basin sidewalls and the filter bag open top is positioned above the filter bag closed bottom;
placing each of the filter bag flaps into the recess of the upper end of the catch basin; and
sandwiching each of the filter bag flaps between the top of the basin and the grate sides,
thereby holding the bag in place.


75

Case Study No. 1 – Litigation
• Atl. Constr. Fabrics, Inc. v. MetroChem, Inc.,
No. C03-5645-BHS (W.D. Wash.)
– Court lifts stay pending reexamination
– Summary judgment of no infringement liability
• No pre-certificate damages
• Intervening rights for Defendant to sell off inventory
– Defendant redesigns its product to have a seamless bag
– Owner/Plaintiff forced to dismiss infringement count with
prejudice


76

Case Study No. 1 – Lessons
• Central Reexamination Unit is the (Patent
Wrecking) CRU
– The reason the 2nd reexam did more damage with worse art?
• Authenticating evidence as new light to support
a second request
• “Quasi inter partes” ex parte reexamination
• Merely forcing an amendment can be victory
– Eliminate liability for past infringement
– Intervening rights to sell of inventory
– Enable design-around
• Delay caused by reexamination
– 3.5 years for a rather simple reexamination (no appeals)


77

Stay of Litigation
Pending Reexamination
• Common for at least one party (usually
accused infringer) to seek a stay of litigation
pending completion of a reexamination
• Within the sound discretion of a district court
• 57.4% of contested motions for stay pending
reexamination have been granted nationwide
since 1991. LegalMetric (Oct. 2011).


78

Source: LegalMetric (Oct. 2011)


79

Stay of Litigation
Pending Reexamination cont’d
Why does it matter to accused infringer?
– Litigation is expensive
– Race to final judgment:
Successful reexam is not
helpful if it concludes after
final court judgment


80

Case Study No. 3


81

Case Study No. 3 cont’d
• Translogic Tech., Inc. v. Hitachi, Ltd.
• U.S. Patent 5,162,666
– “Transmission Gate Series Multiplexer”
– Owner: Translogic Tech., Inc.
• LESSON: Reexamination can be a valuable
insurance policy against a loss in court!


82

Case Study No. 3 - Timeline


83

Case Study No. 3 – Timeline cont’d


84

Case Study No. 3 – Final Decisions
• In re Translogic Tech., Inc., 504 F.3d 1249 (Fed.
Cir. 2007)
– Affirms PTO Board rejections
– Hitachi participated at Fed. Cir. as intervenor
• Translogic Tech., Inc. v. Hitachi, Ltd., 250 F.
App’x 988 (Fed. Cir. 2007) (nonprec.)
– Summarily vacates district court’s judgment
– Bye, bye $86.5 million


85

Case Study No. 3 – Simplified View
Non-Final
Complaint Judgment
Judgment for
Vacated
B Patentee

Request for Final Judgment
Canceling
Reexam Claims


86

Case Study No. 3 – Variation
Non-Final Affirmed
Complaint Judgment for (Final
B Patentee Judgment)

Request for Final Judgment
Canceling
Reexam Claims


87

Case Study No. 3 - Lessons
• Reexam is an insurance policy for defendants
• The significance of a stay
• The powerful differences in claim construction
and burden of proof and perspective applied
by the PTO and courts
• “Quasi inter partes” ex parte reexamination
• Participation in Federal Circuit appeal by third-
party requester as intervenor

88

Strategic Considerations:
Goals for Third-Party Requester cont’d
• Cancelation of claims
– No infringement liability
• Narrowing of claims
– No pre-certificate infringement liability
– Create intervening rights for future
– Narrowed claims may not be infringed
• Create a more favorable prosecution history
• Establish materiality of withheld reference
• Hope patent owner commits inequitable conduct


89

Reexamination vs. Litigation
• Assuming both are available for your validity question
(i.e., printed publication prior art)
• Differences
– Nature of decision maker
– Claim construction/interpretation
– Evidentiary burdens
– Nature of supporting evidence
– Number of arguments that can practically be made
– Effect of overall equities
– Claims frozen or fluid
– Participation rights
– Cost
– Timing
– Standing requirements


90

Ex Parte vs. Inter Partes
Reexamination
• Inter Partes available only if patent was filed
on or after November 29, 1999
• Differences
– Possible anonymity
– Estoppel
– Participation
– Cost
– Duration
– Likelihood of favorable result?


91

Ex Parte vs. Inter Partes
Third-Party Participation
Ex parte Inter partes
• Request • Request
• Comment on every Office
action and response
• Appeal to Board
• Participate in owner’s • Appeal to Federal Circuit if
appeal at Federal requested on or after
Circuit as an intervenor November 22, 2002


92

Reexamination Duration (Mos.)

All Time
Median

All Time
Avg.

2012
Q1 Avg.

0.0 6.0 12.0 18.0 24.0 30.0 36.0


93

Results
Ex Parte Reexam vs. Inter Partes Reexam

All
All canceled confirmed
12% All
confirmed 11%
24%

All
canceled
44%

Some
Some changes
changes 45%
64%

Third-Party-Requested
Ex Parte Reexams Only

94

Cost of Inter Partes Reexamination
94

Cost of Inter Partes Reexamination

Source: AIPLA Report of the Economic Survey 2011

95

Overview of Tools for
Patent Owners


96

Correction Tools for
U.S. Patent Owners – Until 9/16/12
Printed Publ. Error in
Prior Art Patent

Invalid or
Minor
Inoperative

No
Correction is
Amendment Overclaimed Overclaimed Underclaimed Specification
Obvious
Needed

Corrective
Ex Parte Certificate of
Disclaimer Reissue Claim
Reexam Correction
Construction


97

U.S. Patent Owners – On & After 9/16/12
Information
Prior Art Patent

Invalid or
Minor
Inoperative

No
Correction is
Amendment Overclaimed Overclaimed Underclaimed Specification
Obvious
Needed

Corrective
Ex Parte Suppl. Certificate of
Disclaimer Reissue Claim
Reexam Exam Correction
Construction


98

Reissue


99

Reissue Highlights
• Filing for reissue
– Only owner can file
– Some special requirements re. format and oath
– Owner must admit existence of an error
• Not all errors are correctable by reissue
• Broadening sometimes possible
– Filed as a broadening reissue within two-year anniversary of grant
– Limited by rule against recapture
• Familiar, flexible proceeding
– Usual deadlines; extensions of time available
– RCE, continuation & divisional possible
• Claim changes can have serious consequences
• Protests possible


100

Errors Correctable by Reissue
• Errors in the text of the specification or the drawings
• Claims too broad
– Based on prior art
– Based on 35 U.S.C. § 112
– Just narrowing dependent claims may not be enough
• Claims too narrow
– Cannot broadened more than 2 years after grant
– Different statutory categories are acceptable
– Cannot violate the recapture rule
• Inventorship
• Priority

101

Errors Corrected by Reissue in 2008
Inventorship
1.2%
Priority Specification
5.4% 1.4%

Overclaiming
9.2%

Other Claim
Error
12.8%

Underclaiming
70.0%


102

Errors Not Correctable by Reissue
• Deliberate acts
• Inequitable conduct
• Failure to meet the enablement, written
description or best mode requirements of 35
U.S.C. § 112
• Failure to file divisional or continuation
application
• Undesired or unnecessary terminal disclaimer

103

Case Study No. 1


104

U.S. Patent No. 5,522,283 Claim 1 of: A circular saw blade straightening and
tensioning machine for reducing or eliminating unevenness in circular saw
blades, comprising:
...
a set of straightening and tensioning rollers … the set comprising an upper
shaft and a lower shaft ...


105

Eccentricity Limitations
1. A circular saw blade straightening and tensioning machine for reducing or
eliminating unevenness in circular saw blades, comprising:
...
a hub mounted on one end of each of the upper and the lower shafts,
each of the hubs comprising a center portion horizontally eccentric ... and a pair of side
portions disposed on opposite sides of the center portion, each of the side portions
being horizontally eccentric ... in a direction opposite to that of the center portion;
...


106

RE36,409 – 1st Reissue
Original Application
• Filed January 9, 1995
• Issued June 4, 1996

RE36,409 - 1st Reissue
• Filed June 4, 1998
(2nd anniversary of original patent grant)
• Issued November 30, 1999


107

Eccentricity Limitation as Revised in the 1st Reissue
New Claim 15
• Eliminates “tensioning” limitation.
• Refers to roller shafts and saw blade surfaces as “first” and
“second” rather than “upper” and “lower.”
• Claims hubs with an eccentric center roller and centric side
rollers.

But...
This left open the possibility for a
competitor to redesign its product
so that the center roller was
centric with the shaft axes while
the side rollers were eccentric.


108

US Pat No. RE37,833 – 2nd Reissue
Original Application
• Filed January 9, 1995
• Issued June 4, 1996

1st Reissue
• Filed June 4, 1998
• Issued November 30, 1999

RE37,833 - 2nd Reissue
• Filed as a reissue continuation November 30, 1999
(the day the 1st Reissue issued)
• Issued September 10, 2002
(more than 6 years after original patent issued)

109

Lesson

Because the 1st Reissue was a broadening reissue,
the 2nd Reissue could also be used to broaden
claims, despite the filing of the 2nd Reissue over
3 years after the grant of the original patent.


110

Advantages of Reissue
Relative to Ex Parte Reexamination
• Claims cannot be broadened via reexamination but may be
possible via reissue
• Reissue permits various corrections to be made not just changes
to the claims in response to rejections or prior art
• Reissue is examined by the same examiner as the original patent
while reexamination is handled by CRU
• Reissue prosecution can be terminated by patent owner but
reexamination cannot be terminated
• Reissue permits extensions of time as a right
• Reissue permits the filing of continuations, divisionals and
requests for continued examination
• Reissue prosecution is, for the most part, familiar


111

Reissue vs. Reexam: No. Filed by Owner
1300
Reissues Filed
1200

1100 Owner-Requested
1000 Reexams Filed
900

800

700

600

500

400

300

200

100

0
'90 '91 '92 '93 '94 '95 '96 '97 '98 '99 '00 '01 '02 '03 '04 '05 '06 '07 '08 '09 '10 '11


112

Strategic Considerations
for Patent Owners
• Review patents as soon as possible after issuance for
errors that can be corrected via a certificate of
correction
• Docket at least one reminder to consider filing a
reissue application within two years of issuance so
that a broadening reissue can be considered
• Before asserting a patent against a third party, review
the patent for errors that can be corrected by
disclaimer, a certificate of correction, reissue or ex
parte reexamination


113

Strategic Considerations for Third Parties
in Light of Corrective Options for Patent Owners
• When developing an invalidity or noninfringement position
with respect to a patent of a third party, consider whether the
patent owner could correct the error. Examples include:
– Obtaining a broadening reissue within two years of issuance

– Overcoming a validity issue by filing a narrowing reissue

– Receiving confirmation of the validity of a claim by surviving
reexamination or having a request for reexamination denied

– Eliminating errors under 35 U.S.C. § 112 ,¶¶ 1 & 2 by filing a certificate
of correction

– Eliminating a doubling patent scenario by filing a disclaimer


114

Supplemental
Examination


115

Cleansing Effects of
Supplemental Examination
• No inequitable conduct from original prosecution
relating to information that is considered,
reconsidered or corrected in supplemental exam.
• Exceptions:
– Prior allegation of inequitable conduct pled with
particularity in litigation
– Litigation commenced before supplemental examination
(and resulting reexamination) concluded


Therasense and Supplemental
116

Examination
• If it is necessary to amend claims based on a prior art
reference during a reexamination after supplemental
examination, then the prior art is but-for material
and if intent is also shown then inequitable conduct
has been proven.
• Therasense significantly diminished the need for
supplemental examination such that it may only be
needed when a patent owner wants to eliminate any
doubt that certain conduct has not tainted a patent.


117

Therasense
• Inequitable conduct is defined in Therasense as
requiring proof that an applicant misrepresented or
omitted material information with the specific intent
to deceive the PTO.
– Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276
(Fed. Cir. 2011) (en banc).
• The Federal Circuit requires that intent and
materiality be separate requirements, that the
evidence for intent must show a deliberate decision
to deceive, and that the evidence for materiality
must show that “but-for” the deception, the PTO
would not have allowed the claim.

118

Fraud & Practitioner Discipline
• If PTO believes a “material fraud” may have taken
place, then PTO “shall” refer the matter to the
Attorney General (AG)
– Referral is confidential unless & until AG presses criminal charges
– Will suspect be given notice?
– PTO “regards . . . ‘material fraud’ . . . to be narrower than inequitable
conduct as defined . . . in Therasense.” 77 Fed. Reg. 3666.
• Supplemental examination does not limit liability for
Walker Process fraud and related offenses
• Supplemental examination does not limit ability of
OED to investigate practitioner conduct


119

Requesting
• Who can request supplemental examination?
– Only patent owner
– Requester must establish ownership via Rule 3.73(b) filing
– Third parties are prohibited from participating
• When can supplemental examination be requested?
– Statute and rules provide no time limit
– Perhaps PTO will limit to patents having enforcement
potential?
• Who decides requests for suppl. exam. requests?
– CRU?


120

Requesting
• Only patent owner can request
• Request for PTO to
– Consider or reconsider or correct
– Information believed to be relevant to the patent
• PTO decides
– Within 3 months
– Whether the request raises an SNQP
• If so, PTO will
– Issue certificate saying so
– Order ex parte reexamination

121

Request Requirements cont’d
• Fee
– $5,180 suppl. exam. fee
– + $16,120 ex parte reexam. fee (refunded if reexam. not ordered)
– = $21,300
– + possible over-length document fees
• + $170 for each non-patent document with 21-50 pages
• + $280 for each add’l 50 pages or fraction thereof
• Items of information
– Items that PTO is to consider, reconsider or correct
– Items owner believes to be “relevant to the patent”
– Each item must be reduced to written form
– No more than 10 items can be included in one request


122

• Items of information cont’d
– Statement for each item explaining why either
• consideration
• reconsideration, or
• correction
– . . . of that item is being requested.
• Identification of each aspect of patent for which
supplemental examination is sought
– Examples: Abstract, drawing, specification, claims, priority
entitlement
– If any identified claim includes a 112/6 limitation, request must
point out the corresponding structure


123

• Identification of each issue raised
– One item of information may raise multiple issues
– There is no limit on the number of issues raised
• Detailed explanation of each issue
– For each issue, request must discuss each
• item of information, and
• aspect of the patent
– If issue arises under § 101 or § 112, request must indicate
support for each limitation in each claim to be examined with
respect to that issue
– If issue arises under § 102 or § 103, request must indicate
whether each limitation in each claim to be examined with
respect to that issue is or is not met by the information


124

U.S. Patent Owners – On & After 9/16/12
Information
Prior Art Patent

Invalid or
Minor
Inoperative

No
Underclaime Correction is
Amendment Overclaimed Overclaimed Specification
d Obvious
Needed

Certificate Corrective
Ex Parte Suppl.
Disclaimer Reissue of Claim
Reexam Exam Construction
Correction


125

vs. Reissue
• Advantages of Suppl. Exam. over Reissue
– Cleansing effect against inequitable conduct charges
– Higher threshold to initiate (SNQP vs. error)
– No need to admit error
– Very quick favorable decision if reexamination is not ordered
• Advantages of Reissue over Suppl. Exam.
– Lower threshold to initiate (error vs. SNQP)
– Flexibility (e.g., extensions of time, RCEs, etc.)
– Before Tech. Ctr. rather than CRU?
– No 10-item limit
– No statutory risk of referral to AG
– Greater amendment rights


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