Reissues and Reexams

EPRs may be denied based on abusive filings of IPRs (posted 10/29/21)

In In re: Vivint, Inc., the Federal Circuit held that the Patent Office can deny 35 U.S.C. § 325(d), held that the PTO, “when applying § 325(d), cannot deny institution of [an] IPR basaed on abusive filing practices [and] then grant a nearly identical reexamination request that is even more abusive.” However, the court also stated that “[o]ur ruling today is limited” because 35 U.S.C. § 303(a) grants to the Director the authority to launch an ex parte reexamination on his own initiative. But, because the basis for discretion in § 325(d) does not apply to such “own initiative,” the Director did not invoke the “own initiative” authority.

Preponderance good enough for reexaminations (posted 09/04/15)

§ 1.303 (2012) - Civil action under 35 U.S.C. 145, 146, 306.

(a) Any applicant, or any owner of a patent involved in an ex parte reexamination proceeding filed before November 29, 1999, dissatisfied with the decision of the Board of Patent Appeals and Interferences, and any party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences may, instead of appealing to the U.S. Court of Appeals for the Federal Circuit (§ 1.301), have remedy by civil action under 35 U.S.C. 145 or 146, as appropriate. Such civil action must be commenced within the time specified in § 1.304.

(b) If an applicant in an ex parte case, or an owner of a patent involved in an ex parte reexamination proceeding filed before November 29, 1999, has taken an appeal to the U.S. Court of Appeals for the Federal Circuit, he or she thereby waives his or her right to proceed under 35 U.S.C. 145.

(c) A notice of election under 35 U.S.C. 141 to have all further proceedings on review conducted as provided in 35 U.S.C. 146 must be filed with the Office of the Solicitor and served as provided in § 41.106(e) of this title.

(d) For an ex parte reexamination proceeding filed on or after November 29, 1999, and for any inter partes reexamination proceeding, no remedy by civil action under 35 U.S.C. 145 is available.

The Federal Circuit, in Dome Patent L.P. v. Michelle K. Lee, upheld a district court decision that upheld the Patent Office's decision in an ex parte reexamination proceeding to invalidate Dome's patent under 35 U.S.C. § 103. At issue is U.S. Patent 4,306,042 directed to making polymers for gas permeable contact lenses. The ex parte reeexamination was ordered by the Patent Office at the request of a defendant in an infringement suit

On appeal, Dome argued that the district court erred by only requiring the Patent Office to show obviousness by a preponderance of the evidence, rather than by clear and convincing evidence. If the Patent Office decides after an ex parte reexamination that a preponderance of the evidence establishes the claimed subject matter is not patentable, 35 U.S.C. § 145 authorizes the district court, for reexaminations filed before November 29, 1999, to review whether that final decision is correct. The § 145 action does not concern the different question of whether, as a part of a defense to an infringement action, clear and convincing evidence establishes that an issued and asserted patent should be held invalid. Dome argued rather that the presumption of validity in § 282 applies to its claimed invention because the district court action concerns a claim that the Patent Office previously allowed to be patented. The court ruled, though, that § 282 does not apply in this instance because the action did not involve a defense to a charge of infringement of an issued patent. The court stated that when the Patent Office institutes ex parte reexamination, it reopens prosecution to determine whether the claimed subject matter should have been allowed in the first place. At that point, there is no need to presume that the Patent Office had “done its job” in the previous examination, and so the presumption is not applicable.

Interpartes Reexam Study (05/22/08)

An enigmatic organization calling itself “The Institute for Progress” produced a report entitled “Reexamining Inter partes Reexam”. The study is based on data from the PTO's PAIR system and is notable for calling out the PTO's own statistics as misleading, particularly the pendency statistics. The following findings were highlighted:

  • Inter partes reexam (IPRE) requests have been increasing rapidly. In 2007, there were over 140, roughly six times more than in 2003, when there were fewer than 30 requests filed.
  • More than half of the patents in IPRE proceedings are known to be in litigation during their reexamination, showing that IPRE is not seen as an alternative to litigation as envisioned, but an augmentation of litigation.
  • Virtually all IPRE requests are granted.
  • Only three IPRE cases have received a decision by the BPAI, and none have gone through the entire IPRE process. Without appeal, the average pendency period for IPRE is 43.5 months, much longer than the 28.5 months reported by the PTO, which is based on only 12 IPREs that had reached a final certificate by that date, and many of these skipped steps due to failure of the patent holder to respond. A 95% confidence interval would put the pendency between 34 and 53 months. The average pendency for appealed IPREs is 78.4 months, assuming no reqork by the PTO or secondary appeal.

~NEW~Hal Wegner's take:

“The 'Rivette Reexamination Report' is an explosive condemnation of the PTO’s track record on inter partes reexamination for two reasons. First, the meticulous and intricate detail set forth in the report and the sub silentio confirmation by the PTO of its accuracy give this report tremendous credibility. Second, the study is authored by Fellows of an Institute that includes Kevin Rivette, who chair’s the PTO’s own advisory board. This is thus a mainstream study by the very Chair of the PTO’s own advisory board, hand picked by the Director of the PTO himself.”

Certificate of Correction canceled by Fed. Cir. (04/06/07)

The Fed. Cir. canceled a Certificate of Correction in CAPS v. ACS. The PTO issued a Certificate of Correction after CAPS sued ACS for infringement of their patent. The Certificate of Correction replaced all instances of the word “osmolarity” with the word “osmolality.” The Fed. Cir. held that this change improperly broadened the scope of the claims and canceled the certificate of correction, thereby returning the claims to their original state. The error would have been correctable, had “the presence of the clerical or typographical error, or how to correct that error, [been] clearly evident to one of skill in the art.”

Fed. Cir. says "no" to do-overs (03/08/07)

In In re Serenkin the Fed. Cir. agreed with the Board of Appeals and the Examiner that Serenkin's Reissue is improper because the error upon which the reissue application is based is non-correctable. Serenkin forgot to include drawings with a PCT application which claimed priority to a provisional application. The USRO allowed the applicant to choose between the original filing date without drawings or a new filing date upon submission of the drawings. The applicant was informed that there would be no priority to the provisional if the new date was selected. Serenkin then agreed to a new filing date. A U.S. national stage application eventually issued on the PCT as U.S. Patent 6,109,425. Serenkin obtained new counsel to file a Reissue application to correct the priority back to the provisional application. The Fed. Cir. agreed with the Board of Appeals, holding that “the deliberate action of an inventor or attorney during prosecution generally fails to qualify as a correctable error under § 251.”

More on Reissues: Fed. Cir. broadens applicability (10/16/08)

In Medrad v. Tyco, the Fed. Cir., stated that, under 35 U.S.C. § 251, the phrase, “invalid by reason of the patentee claiming more or less than he had a right to claim in the patent” “encompass[es] any error that causes a patentee to claim more or less than he had a right to claim.”

Medtronic loses on recapture argument (10/16/06)

During proseuction, Guidant amended some claims which were later broadened in a reissue application that was eventually granted. Medtronic claimed that, in the reissue, Guidant improperly recaptured subject matter which was surrendered during prosecution. The Fed. Cir. disagreed in Medtronic, Inc. v. Guidant Corporation, et al., a non-precedential opinion.

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