Terms and Concepts
If the parallel universe of having the same patent subject to review in reexamination and court litigation seems complicated enough, the picture can become even more multi-dimensional if the patent is also subject to additional reexamination, reissue or interference proceedings. There are several scenarios possible under current practice. Another ex parte or inter partes reexamination can be filed on the same patent (If an inter partes reexamination has already been filed, the estoppel provisions of 35 U.S.C. § 317 prevent the third party requester or its privies from filing a subsequent reexamination request. A reissue application, whether broadening or narrowing, can also be filed. Additionally, the patent in reexamination can be involved in an interference proceeding with another patent application. Under present practice, it is conceivable that a single patent could be involved in all of these proceedings concurrently (If proposed S. 515 is enacted, this patent could also be subject to PGR and inter partes review as well. Some critics argue such a regime will effectively make enforcement of a patent prohibitive or impossible).
Multiple proceedings can have a significant impact on pendency, cost, and complexity of the reexamination (Current legislation contained in S. 515 in the U.S. Senate could expland this complexity with the creation of a “first window” post-grant review process and creation of an inter partes review process that will be available for all unexpired patents). Such multiple PTO proceedings involving the same patent are not rare. In fact, multiple reexaminations of the same patent or a reexamination with a parallel reissue application are seen frequently, especially if the patent is perceived as being very valuable or is part of a hard-fought litigation. Since 2000, only 2,560 unique patents have been involved in 5,680 reexamination proceedings at the CRU as of January 1, 2010 [Requests for Reexamination Noticed in Official Gazettes 1999-2010 (January 1, 2010)].
Multiple reexamination proceedings on the same patent explain why the overall ratio of reexaminations to patents is over two to one. Specifically, of these 2,560 unique patents, 286 or 11% have been reexamined more than once, one as many as six times [see, Broadcom Corporation Patent No. 5,425,051 (three ex parte proceedings were requested by Qualcomm in 2006 and three more ex parte proceedings in 2008)]. Three patents have been reexamined five times, 14 reexamined four times, 34 reexamined three times, and 234 reexamined twice.
Should a patent owner or third party requester initiate an additional concurrent proceeding? There are several important political and strategic perspectives to consider before initiating another concurrent proceeding. For instance, certain types of proceedings may be merged by the PTO. For example, multiple reexaminations of the same patent are typically merged into one proceeding. Because of the nearly certain merger, some practitioners have adopted the practice of first filing an ex parte reexamination and then following soon after with an inter partes reexamination. The ex parte reexam typically involves fewer claims and fewer SNQs that the later filed inter partes reexamination. Some argue that this strategy allows the requester to obtain a quick filing date (to enhance the possibility of a stay from the court), and prevents a stay of the inter partes reexamination after merger due to the presence of the ex parte issues. Additionally, ex parte interview rights are typically extinguished after merger of the proceedings. But the Office of Patent Legal Administration (”OPLA”)may be revisiting its merger rationales for this requester-initiated multiple reexamination strategy.
Other practitioners file multiple ex parte reexaminations (alone or in combination with an inter partes reexamination) on the same patent. This “rolling reexams” approach is not prohibited by statute or by the rules. Because the multiple reexaminations are typically merged, patent owners argue that rolling reexaminations delay conclusion of the reexamination proceeding, undermining their statutory right to a reexamination proceeding being handled with “special dispatch,” waste valuable patent term, can effectively turn an ex parte proceeding into an inter partes proceeding, and could be perceived as harassment of the patent owner. There are instances where the PTO has denied second ex parte reexamination requests as not raising a SNQ.
Patent owners faced with multiple reexaminations on the same patent that result in mergers are not without recourse. There is sufficient ambiguity in the merger rules and sufficient statutory bases to allow patent owners to argue against merger in some situations. Patent owners can challenge merger decisions through petition practice and bring any perceived unfair application of the merger rules, or perceived harassing behavior, to the attention of OPLA, which handles many petitions in reexamination matter on behalf of the Director. Because the PTO has complete discretion in merger decisions, it can (and has) dissolved previously merged cases. (See e.g., Reexamination Control Nos. 95/001,205 and 90/009,370). In the authors’ experience, OPLA is receptive to well-crafted arguments and is willing to reconsider previously ordered mergers.
Reissue applications may also be merged with a copending reexamination proceeding. The merged reissue/reexamination proceedings are often transferred to the technology center for handling, rather than the CRU. Some practitioners argue that this strategy creates an unfair advantage by allowing the patent owner to prosecute the reexamination in a technology center that may be friendlier to the patent owner and that operates under different performance metrics for examiners. Practitioners also argue that this technique is used to introduce delay into the PTO proceedings. The authors have been told that the PTO is constantly reviewing its merger procedures for reissues and reexamination to remove the potential for “gaming the system.”
A patent being reexamined may also be involved in an interference proceeding with at least one application [See MPEP §§ 2284, 2686.02]. The general policy of the PTO is that the reexamination proceeding will not be delayed, or stayed, because of an interference or the possibility of an interference [See MPEP §§ 2284, 2686.02]. In a concurrent reexamination and interference, the PTO follows the practice of making the required and necessary decisions in the reexamination proceeding and, at the same time going forward with the interference to the extent desirable [See MPEP §§ 2284, 2686.02]. Any party to the interference may make a miscellaneous motion under 37 C.F.R. § 41.121(a)(3) to suspend an interference pending the outcome of a reexamination proceeding [See MPEP §§ 2284.II, 2686.02II]. Similarly, a party to the reexamination proceeding may file a petition to stay the reexamination proceeding because of the interference [MPEP §§ 2284.V, 2686.02IV].
Multiple Ex Parte Requests
Where a party has a choice in filing an ex parte or inter partes reexamination request, what considerations go into the choice? One factor to consider is that there is no legal limit on the number of ex parte reexamination requests that can be filed. However, the bar for establishing a valid SNQ may become higher with each reexamination request. Because the Examiner makes a determination whether a reference raising an SNQ is cumulative to earlier considered art, the more references already considered raises the bar for references in subsequent reexamination requests.
In what situations should multiple ex parte reexamination requests be considered? The ability to file more than one request can be a valuable tool where the patent owner is seen to mischaracterize the prior art, to make inconsistent statements between the reexamination and the parallel court proceeding, or where there is newly-discovered prior art that surfaces after the previous reexamination request has been filed.
Another factor to consider is the impact that multiple or “rolling” reexamination requests may have on a district court judge. Could multiple reexamination requests impact an already granted litigation stay? At least one district court precluded an accused infringer from filing further ex parte reexamination requests as a condition of granting its motion to stay a litigation on the eve of trial [Visto Corp. v. Research in Motion Ltd., No. 2-06CV-181 (E.D. Tex. complaint filed Apr. 28, 2006)]. The ability to file subsequent reexamination requests may be an important tool in an overall ex parte reexamination strategy. Relinquishing that ability should be carefully considered.
On March 1, 2005, the PTO issued the “Notice of Changes in Requirement for a Substantial New Question of Patentability for Second or Subsequent Request for Reexamination While an Earlier Filed Reexamination is Pending” [March 1, 2005 OG Notice]. In the Notice, the PTO set forth a new policy:
“Under the new policy, the second or subsequent request for reexamination will be ordered only if that old prior art raises a substantial new question of patentability that is different than that raised in the pending reexamination proceeding. If the old prior art cited (in the second or subsequent request) raises only the same issues that were raised to initiate the pending reexamination proceeding, the second or subsequent request will be denied.”
… Further, 35 U.S.C. 303(a) states “[w]ithin three months following the filing of this title, the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request.” It is reasonable to interpret this provision as requiring each request for reexamination to raise its own substantial new question of patentability as compared not only to the original prosecution (in the application for the patent) and any earlier, concluded reexamination proceedings, but to pending reexamination proceedings as well.
When faced with the specter of multiple reexamination requests, a patent owner may consider filing a petition with the PTO arguing that subsequent reexamination requests are being filed for the purposes of harassment or to delay prosecution of a pending request [MPEP § 2240]. If the prior art provided in the subsequent request unquestionably presents a new SNQ, the petition may not have a high likelihood of success. However, when coupled with an argument that the SNQs in the subsequent reexamination requests are cumulative, these petitions may be successful. This should also be a consideration when determining whether to file multiple reexamination requests.
- Raising the Bar for Each SNQ
- Impact on Litigation Stay
- USPTO Policy Notice [March 1, 2005 OG]
- Harassment of Patent Owner [MPEP § 2240]
- Merger of Co-Pending Reexaminations
- Merger of Co-Pending Reissue and Reexaminations
- Merger of Co-Pending Interference and Reexaminations
- Visto Corp. v. Research in Motion Ltd., No. 2-06CV-181 (E.D. Tex. complaint filed Apr. 28, 2006)