Terms and Concepts
As noted tabove, reexamination can be ex parte or inter partes. In ex parte reexamination, a third party requester will receive copies of Office actions and patent owner replies, but cannot otherwise participate in the reexamination proceeding and cannot appeal PTO decisions. In inter partes reexamination, when the patent owner submits a reply to an Office action, the third party requester is entitled to file comments in response thereto. The third party’s comments must, however, be limited to issues raised by the Office action or in the patent owner’s response. The third party requester is entitled to certain appeals, but is also subject to certain estoppels. Both ex parte and inter partes reexaminations are discussed below (Other practitioners and commentators have provided summaries of the mechanics of reexamination practice [See, e.g., J. Steven Baughman, Reexamining Reexaminations: A Fresh Look at the Ex Parte and Inter Partes Mechanisms for Reviewing Issued Patents, 89 J. PAT. & TRADEMARK OFF. SOC’Y 349, 360 (2007); Roger Shang & Yar Chaikovsky, Inter Partes Reexamination of Patents: An Empirical Evaluation, 15 Tex. Intell. Prop. L.J. 1 (2006); Sherry M. Knowles, et al., Inter Partes Patent Reexamination in the United States, 86 J. PAT. & TRADEMARK OFF. SOC’Y 611 (2004)]).
In order to assure timely delivery of papers, both the third party requester and patent owner should provide the PTO with current correspondence address information. In the past, both the patent owner and third party requester utilized the same form when changing correspondence address. The use of the same form resulted in situations where the patent owner correspondence address was used by the PTO as the third party requester correspondence address. The PTO has recently introduced a “Patent Owner Change of Correspondence Address” form and a separate “Third Party Requester Change of Correspondence Address” to address these concerns.
The Request and the SNQ
Rule 1.510(b) sets forth the mandatory elements of an ex parte reexamination request, and Rule 1.915(b) sets forth the mandatory elements of an inter partes reexamination. Both ex parte and inter partes reexamination requests require (1) a statement pointing out each SNQ and (2) a detailed explanation of the pertinence and manner of applying cited patents and printed publications to every claim for which reexamination is requested. The SNQ must be based on prior patents and/or printed publications (37 C.F.R. §§ 1.510(b)(1), 1.915(b)(3)). Other patentability issues, such as prior public use or insufficiency of the disclosure, will not be considered for instituting a reexamination. The PTO will only reexamine those claims for which a SNQ is alleged and found.
The substantial new question (”SNQ”) generally
Both the ex parte and inter partes statutes require that a request for reexamination include at least one SNQ (35 U.S.C. §§ 303 and 312). The legislative history of the ex parte reexamination statute describes the SNQ as new, non-cumulative information about preexisting technology that may have escaped review at the time of the original examination of the patent application and in subsequent reexaminations of the patent, if there have been any. The SNQ could therefore be more aptly named a “substantial new technical teaching.” The establishment of a SNQ has tripped up many practitioners. It is not enough for a reference to be “new,” the reference must also be non-cumulative to the technological teachings previously considered by the PTO during prosecution. Therefore, even a newly discovered reference may not raise a SNQ if the reference merely is cumulative to similar prior art already fully considered by the PTO in a previous examination or reexamination (MPEP § 2242). This is an important point when determining whether to file a reexamination request and which references to use.
The CRU rejects many reexamination requests on first filing for failure to clearly point out a SNQ. Specifically, the authors note a perceived increase in the number of reexamination requests that are receiving a Notice of Incomplete Reexamination Request or requests that are being denied because the requester has failed to establish the reference used as a basis for a SNQ is “non-cumulative.”
Further, there is a common but fundamental misunderstanding by many as to the difference between a SNQ and a proposed ground of rejection. A reexamination request must include both at least one SNQ in addition to a detailed explanation of the pertinency and manner of applying a proposed SNQ to every claim for which reexamination is requested–the proposed ground of rejection (37 C.F.R. §§ 1.510(b) and 1.915(b)). A SNQ is therefore a separate and distinct concept from the proposed ground of rejection (a prima facie case of unpatentability).
Not all previously considered references (“old art”) are ineligible to support a SNQ. Old art previously considered in original or prior prosecution may be used to support a SNQ if shown in a new light. Previously unconsidered art may not provide de facto support for a SNQ if it is merely cumulative to art already considered by the Office. We discuss new light for old art in the following section.
Finally, the PTO will consider an undated document in reexamination if it is accompanied by reliable evidence, such as an affidavit or deposition transcripts, supporting an asserted publication date. Where a reference originated with the patent owner, the CRU might consider issuing a request to the patent owner for additional information under 37 C.F.R. § 1.105. For reexaminations ordered on or after November 2, 2002, a finding of a SNQ, and claim rejections, can be based solely on previously cited/considered “old” prior art, or in combination with other prior art (MPEP §§ 2242(II)(A), 2258.01(A)).
In re Swanson and the SNQ
The Federal Circuit in In re Swanson (In re Swanson, 540 F.3d. 1368 (Fed. Cir. 2008)) clarified what it takes to support a SNQ where a reference was previously used to reject the claims in original prosecution. The ex parte reexamination statute sets forth the universe of references that can be used to raise a SNQ (35 U.S.C. § 303(a) (patents and printed publications)). In addition to a newly discovered reference, a previously applied reference can raise a SNQ if the previously applied reference is presented in a “new light.” Section 303(a) makes this explicit—”[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the PTO or considered by the PTO” (This sentence was added in the 2002 amendment to 35 U.S.C. § 303 to specifically address In re Portola Packaging, Inc., 110 F.3d 786 (Fed. Cir. 1997). In Portola, the Federal Circuit “interpreted the statutory intent [of the ex parte reexamination statutes] as precluding reexamination based on ‘prior art previously considered by the PTO in relation to the same or broader claims.’” In re Swanson, p. 11 (citing Portola, 110 F.3d at 791). Congress explained that the amendment to 35 U.S.C. § 303(a) “overturns the holding of In re Portola Packaging, Inc., a 1997 Federal court decision imposing an overly-strict limit that reaches beyond the text of the Patent Act.” H.R. Rep. No. 107-120, at 2). In re Swanson provides some guidance on what constitutes a “new light” for old art. For example, a SNQ based on previously applied art could arise because the examiner in the original examination misunderstood the actual technical teaching, because the examiner failed to consider a portion of the reference that contained the now cited teaching, or if the examiner applied the reference to a different limitation or claim than that to which the reference is currently being applied.
But a reference does not raise a SNQ if the examiner in the original examination understood the actual technical teaching but got it “wrong” in the rejection. This is a subtle but critical distinction.
KSR and the SNQ
A further unsettled issue for many practitioners is the impact of KSR on reexamination practice. Did KSR open the door to reexamination challenges based on prior art overcome during original prosecution by arguing lack of teaching, suggestion, or motivation to combine?
When KSR was decided at the end of April 2007, the PTO feared an avalanche of reexaminations based solely on an argument that the obviousness standard applied in the original prosecution had been relaxed. This argument was advanced by the third party requester in Ex Parte Reexamination Control No. 90/008,949. In this request, the third party requester argued that the Supreme Court’s decision in KSR provided a “new light” in which to view the references under the doctrine of obviousness. See Order Denying Request for Ex Parte Reexamination in Reexamination Control No. 90/008,949, p. 4. The Ex Parte Reexamination request was denied by the PTO. Id., p. 5. In the denial, the PTO clarified the standard for determination of whether a SNQ exists based on “old art”:
Reexamination is limited to review of new information about preexisting technology, which may have escaped review at the time of initial examination of the patent application. It was not designed for harassment of a patent owner by review of old information about preexisting technology, even if a third party feels the Office’s conclusion based on that old information was erroneous. The reexamination legislative history nowhere provides for review of such old information, each time a court clarifies or re-interprets a standard or point of law that effects the patentability determination. If it did, the reexamination process would be unwieldy, because case law is constantly evolving.
… The KSR decision does not per se create new information about preexisting technology that may have escaped review at the time of the initial examination of the patent application. And, in this instance, the KSR decision does not present or view the “old art” in a different way, or in a “new light,” as compared to what was already considered in the ‘7628 reexamination proceeding.” Id., pp. 6-9. (emphasis in original). The feared avalanche did not materialize but there is no doubt that KSR spawned more reexaminations than would have occurred otherwise.
The PTO pondered this critical issue for over sixteen months and then addressed this question explicitly in Revision 7 of the M.P.E.P. (Manual of Patent Examining Procedure or MPEP), which became publicly available in August 2008. The MPEP now states:
The clarification of the legal standard for determining obviousness under 35 U.S.C. § 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 550, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists. The requirement for a substantial new question of patentability remains in place even if it is clear from the record of a patent for which reexamination is requested that the patent was granted because the Office did not show “motivation” to combine, or otherwise satisfy the teaching, suggestion, or motivation (TSM) test. Thus, a reexamination request relying on previously applied prior art that asks the Office to look at the art again based solely on the Supreme Court’s clarification of the legal standard for determining obviousness under 35 U.S.C. § 103 in KSR, without presenting the art in new light or different way, will not raise a substantial new question of patentability as to the patent claims, and reexamination will not be ordered (MPEP § 2216, Rev. 7, July 2008).
Following that amendment to the MPEP, the Federal Circuit issued its decision in In re Swanson on September 4, 2008. The In re Swanson decision did not address the impact of KSR on the determination of whether references raise a SNQ. The issue therefore remains unsettled.
KSR states that patent examiners, as well as the courts, can review the factual predicates underlying the obviousness calculus and reach the ultimate legal conclusion whether the subject matter is obvious (KSR, 540 U.S. at 413 (“While the sequence of [the Graham factors] might be reordered in any particular case, the factors continue to define the inquiry that controls. If a court, or patent examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under § 103“)). Thus, it makes logical sense that it would be of great interest to the reexamination examiners to know what a person of ordinary skill in the art (“POSITA”) would have known at the time of filing of the original application for which reexamination is requested. The third party requester is advised to consider providing a description of what the POSITA would have known preferably in the reexamination request (or less preferably in a later response to an Office action). This POSITA technical description can be presented in a separate section of the reexamination request, but regardless of how it is provided, it is necessary that the SNQ basis be set forth for each technical reference referred to in this technical description and that each of these SNQs be used in a least one proposed rejection. What is believed to be the first reexamination request that employed such a POSITA technical description is found in Inter Partes Reexamination Control No. 95/000,353 (“the ‘353 request”).
The ‘353 request provided an extensive discussion of the various factors, articulated by the Federal Circuit and discussed in the Examination Guidelines, which may be considered in determining the level of ordinary skill in the art (See e.g., In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995); Customer Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). The specific factors addressed in the ‘353 request included the types of problems encountered in the art, prior art solutions to those problems, rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.
It is not uncommon for reexamination requests, particularly inter partes reexamination requests, to be hundreds of pages long. Some commentators note that such lengthy requests are unduly long and amount to an abuse of the reexamination process. However, other commentators note that, particularly in inter partes reexamination where the requester is faced with “use it or lose it” estoppel provision for known references, a third party requester is forced into lengthy requests in order to fully develop all SNQs available when the reexamination request is filed.
Impact of KSR on Reexamination Practice
The Supreme Court’s decision in KSR v. Teleflex altered the obviousness calculus in a fundamental way by making the obviousness determination more subjective. The full scope of KSR’s impact on patent reexamination remains to be seen, but initial reports indicate that the results may be dire for patent owners, particularly in the predictable arts. Extensive research about the impact of KSR has been done by many groups. That research demonstrates the impact is significant in original prosecution. For instance, perhaps the most extensive publicly available sample and analysis was done by Microsoft’s Corporate Vice President for IP Policy and Strategy, Marshal Phelps and his team. His research was presented at Sedona Patent Litigation 2008 (See Microsoft Obviousness Data Research Slide Deck in Obviousness Panel tab of course notebook of Sedona PL08). As his analysis shows, the most effective way to challenge an obviousness rejection in predictable arts is to persuasively argue, with factual support, that a claim feature is not taught by the references. If the references in fact show each element, either explicitly or inherently, then it seems to be very difficult to overcome an obviousness rejection (Many argue that the mere existence of all of the claim elements in the prior art as the basis for a finding of obviousness turns this test of patentability on its head since most inventions are “combination of old elements.” This applies to some of the most important inventions of all time).
It is clear from recent Federal Circuit and BPAI decisions that mere attorney argument is not sufficient in many cases to prove non-obviousness (See Sundance, Inc. v. Demonte Fabricating LTD., No. 2008-1068, -1115 Slip op. at 4-7 (Fed. Cir. Dec. 24, 2008)). The attorney is typically not an expert in the technology of the claimed invention and is not a person of ordinary skill in the art (Id. (disallowing a patent expert’s testimony stating that “[d]espite the absence of any suggestion of relevant technical expertise, [the patent expert] offered expert testimony on several issues which are exclusively determined from the perspective of ordinary skill in the art”)). To prove non-obviousness it seems the best approach is to tell the story of the invention in its full glory so that the factual predicates are found in the record to support the desired legal conclusion of non-obviousness. While KSR makes many statements about what is or is not obvious, it is clear from Supreme Court law that what the decision-maker requires is all of the relevant facts about the invention and its predecessor technology. Thus it behooves the patent owner to put all of the necessary factual predicates into the reexamination record to support the desired legal conclusion of non-obviousness. Failure to do so could result in the CRU finding the claims not patentable and the BPAI and Federal Circuit on appeal being limited to a record that will not permit a reversal.
KSR is seen by some judges as providing examples of what might constitute good factual predicates to support non-obviousness, but not as a definitive guide on how best to set forth the full story of the invention. These factual predicates include the so-called “secondary considerations” or “objective evidence” of non-obviousness, such as unexpected results, long felt need, failure by others and commercial success. But this list is not definitive and counsel for the patent owner should be vigilant and creative in ferreting out and presenting all factual evidence that supports patentability.
One crucial consideration is how to get factual evidence into the record during reexamination. Factual evidence can be in the form of trial evidence or testimony, publication, award, sales information, product reviews, etc. Should it be from an expert or at least from a witness considered to be a POSITA? The answer often is yes, although it is a tactical decision to have only a POSITA qualification since a qualified technical expert can typically also opine as a POSITA. Reexamination counsel for the patent owner is ill advised to assume either role explicitly or through attorney argument unless she can be qualified as if she is testifying as such in court (Id.).
How should this factual evidence from the expert or POSITA be provided to the CRU? Probably it is best if it is in the form of an affidavit or declaration. But such a submission raises several concerns.
First is the specter of inequitable conduct. Reexamination counsel for the patent owner is particularly vulnerable because the law is somewhat confused in this area of what constitutes sufficient disclosure of pecuniary benefit between affiant/declarant and the patent owner. Future versions of this paper will address this more fully. It behooves the drafter to err on the side of comprehensive disclosure, although such approach increases the size of the administrative record, something the PTO has indicated it would like to avoid, all things being equal (Since the duty of disclosure does not apply to reexamination counsel for third party requester, can “reverse” inequitable conduct be found by the PTO, BPAI or the courts for requester submissions clearly hiding the ball from the reexamination examiners? Or is the only possible violation that of 37 C.F.R. § 11.18? And if the latter is the case, how would such a violation be raised? Would it be done by OPLA based on a Petition from the patent owner that would be referred to The Office of Enrollment and Discipline (OED)? We know the PTO is thinking about these issues but we do not know of any public information from OED showing such a violation has been successfully prosecuted. This different standard of care between reexamination counsel for patent owner and reexamination counsel for third party requester troubles many people and we expect it to be addressed by some tribunal soon).
The second concern is that the reexamination examiners have no mechanism and little experience in assessing the competency and veracity of the information and analysis presented in written submissions (This is a broader problem than the mechanisms available to and experience possessed by reexamination examiners in that in ex parte prosecution there traditionally has been little use of affidavits and declarations. But post-KSR, this could change dramatically especially in light of recent BPAI and Federal Circuit decisions on obviousness). The third concern is the strict page limits imposed on responses to Office actions. We note however, that if the submission is denominated as “factual” as opposed to “argument” it is NOT counted in the page limit.
We expect that the obviousness area of patent practice will experience extensive attention in the next year as applicants, patent owners, and challengers grapple with the practical implications of KSR in PTO examinations, in the CRU, at the BPAI, in the federal courts and at the ITC.
Impact of Reexamination on Remedies
Concurrent reexaminations can have a dramatic impact on remedies available to patent owners in infringement actions. Specifically, any substantive amendments during reexamination to asserted patent claims can invoke the doctrine of intervening rights, which can reduce the damages available to a patent owner. Reexamination can also impact any injunctive relief that a patent owner has obtained.
During reexamination, the patent owner is permitted to make amendments to the claims undergoing reexamination. However, a claim amendment may have a significant impact on the ability of the patent owner to obtain damages for infringement of that claim prior to the issuance of the reexamination certificate. An amendment to a claim creates two important time periods for damages considerations – (1) the period between the issue date of the original patent and the issue date of the reexamination certificate and (2) the period after the issue date of the reexamination certificate until the patent is no longer in force.
The impact on damages is dependent on the scope of the amendment made in the reexamination proceeding. An amendment to a claim may extinguish past damages if the amended claim is not “substantially identical” to an original patent claim. In that case, the patent owner can only recover damages during the second period (after the issue date of the reexamination certificate). However, amended claims that are substantially identical to an original patent claim can be enforced (and damages recovered) from the issue date of the original claims.
The effect of amended reexamination claims during the second time period (after the issuance of the reexamination certificate) is governed by the doctrine of intervening rights (See Fortel Corp. v. Phone-Mate, Inc., 825 F.2d 1577, 1580 (Fed. Cir. 1987)). Intervening rights is a defense to infringing activity occurring after issuance of the reexamination certificate (Seattle Box Co. v. Industrial Crating and Packing Inc., 756 F.2d 1574, 1579 (Fed. Cir. 1985)). Section 252 (Any proposed amended or new claim determined to be patentable and incorporated into a patent following either an ex parte or inter partes reexamination has “the same effect as that specified in section 252 of this title for reissued patents.” 35 U.S.C. §§ 307(b), 316(b)) provides for two separate and distinct intervening rights defenses – absolute intervening rights and equitable intervening rights.
Absolute intervening rights are created by the first sentence of the second paragraph of 35 U.S.C. § 252:
A reissued patent shall not abridge or affect the right of any person or that person’s successors in business who, prior to the grant of a reissue, made, purchased, offered to sell or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent.
Absolute intervening rights extend only to the “specific things” actually made, purchased, offered for sale, or used before the issuance of the reexamination certificate. Other continued activity after a reexamination certificate issues is covered by equitable intervening rights defense. Absolute intervening rights apply only to tangible articles existing prior to the date of the reexamination certificate (Shockley v. Arcan, Inc., 248 F.3d 1349, 1353 (Fed. Cir. 2001)). The applicability of absolute intervening rights to a process practiced prior to the date of the reexamination certificate has not yet been addressed by the Federal Circuit.
Equitable intervening rights are created by the second sentence of the second paragraph of 35 U.S.C. § 252:
The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.
The equitable intervening rights provision gives a court the power to allow the continued manufacture, use, offer for sale, or sale of a “thing” in situations where a defendant has made substantial preparation to make, purchase, offer for sale, or use the “thing” or in the case of process “practice of the process” (35 U.S.C. § 252).
A court may apply the equitable intervening rights provision “to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue (Id.). The statute provides no further guidance on how to make this determination. Generally, the equitable intervening rights defense protects a third party who relied to its detriment on an aspect of the original claims that was changed by reexamination.
Patent reexamination can also have significant impact on equitable remedies. In Fexiteek Americas, Inc. v. Plasteak, Inc., the Southern District of Florida lifted a permanent injunction that was on appeal to the Federal Circuit, where the PTO had issue an Advisory Action in a concurrent ex parte reexamination of the patent-in-suit. The Advisory Action, which follows the patent owner’s response after a final rejection, stated that Flexiteek had failed to overcome all of the rejections of the patent-in-suit (Fexiteek Americas, Inc. v. Plasteak, Inc., Civ. Case No. 08-60996 (July 20, 2010 Order)).
After the Advisory Action issued, the defendant moved the district court to lift the permanent injunction, invoking language therein stating that “upon any decision by a court of the [PTO] that renders the ‘881 Patent invalid or unenforceable, [the defendants] may petition this Court to terminate this Permanent Injunction.” The plaintiffs argued that the Advisory Action was not a final PTO decision and that they had “additional challenges,” including a timely noted appeal to the BPAI (Id.). The Court sided with the defendants and terminated the permanent injunction: “the Court finds that the PTO’s Advisory Action is not only the most recent decision regarding the ‘881 Patent’s validity, it is a decision made after a thorough examination of the matter conducted by a body which holds particular expertise in such issues. The Court finds that the PTO’s determination should control and the Court will terminate the Permanent Injunction” (Id.). The plaintiff also pointed out its ability to amend its patent claims based on a reissue application of the same patent, and that even if the current claims were canceled defendants will infringe the reissued claims. The Court rejected that argument as speculative (Id.).
Some critics have argued that this decision is decided wrongly. The final Office action was on appeal to the BPAI and the claims of the patent had not been finally cancelled. The BPAI may reverse the CRU or the patent owner may seek additional appeals of the reexamination to the Federal Circuit. Simply put, these critics contend that the CRU’s determination is only the first step in determining patent validity in a reexamination. Indeed, it is not uncommon for the BPAI to reverse final CRU determinations. Statistics show that a sizeable number of appealed ex parte reexaminations result in reversal and issuance of reexamination certificates with one or more original claims confirmed. If this decision is widely adopted, and permanent injunctions can be routinely lifted based merely on a final Office action, tremendous uncertainty could result for patent owners. Critic’s views aside, the case underscores the significant impact that reexamination—even an ongoing one—can have on the remedies available in concurrent litigation. And, it highlights the need for parties to educate the court on the procedural nuances of reexamination so that well informed orders can be entered.