Terms and Concepts
Request for Reexamination
[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 PTO will consider an undated document 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 an 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)].
The request must also include an identification of every claim for which reexamination is requested, and a detailed explanation of the pertinence and manner of applying each of the cited prior art to every claim for which reexamination is requested [37 C.F.R. §§ 1.510(b)(2), 1.915(b)(3)]. Failure to address each submitted reference in the detailed request will result in a denial of a filing date.
It is not uncommon for reexamination requests, particularly inter partes reexamination requests, to have hundreds of pages. 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.
The filing date of the reexamination request starts the two-year period in which the PTO strives to issue a final office action or otherwise conclude the reexamination proceeding. The CRU and its staff are known to be hyper-technical in reviewing reexamination requests. Any procedural defects will cause the reexamination request to be rejected. We recommend close adherence to the guidelines outlined in the MPEP and to the rules in the C.F.R. We also recommend obtaining publicly available recent requests (i.e., after the latest amendments to 37 C.F.R. § 1.915 and § 1.510) that have been successful to use as a template.
Timing for Reexamination Requests – When to File?
Once a decision is made to proceed with a reexamination strategy, one of the most important considerations is deciding when to file. The timing of a reexamination request ultimately will be determined by the requester’s overall goals.
Early filing should be considered where the goal is to stay a more costly district court litigation until the validity of the asserted patent is adjudicated by the PTO. Most courts will not consider staying the litigation until at least a first Office action rejection is received. Statistics indicate that the issuance of the first Office action could be one year or more after the request is granted and a filing date is accorded in an ex parte reexamination request. In an inter partes reexamination, the rules state that “[t]he order for inter partes reexamination will usually be accompanied by the initial Office action on the merits of the reexamination” (37 C.F.R. § 1.935). In the authors’ experience, however, this is not always the case, particularly with the increased popularity of inter partes reexaminations in the past several years. But, based on anecdotal evidence, it appears the CRU is trending towards issuance of the initial Office action with the reexamination order.
Early filing is also highly recommended where the reexamination is launched as an insurance policy against an adverse district court decision. Overall, at least two years are typically necessary for a final decision from the CRU (The CRU has indicated an internal goal of 24 months from instituting the inter partes reexamination request to an Action Closing Prosecution (ACP)). Waiting too long to file a request could reduce the effectiveness of such a strategy. For such strategy, keeping tabs on the trial date is a must.
Sometimes, seeking a litigation stay is not feasible. Further, there is always a chance that an adverse decision by the CRU could have a negative impact on trial. In such cases, it may be desirable to delay reexamination filing to a point somewhat less than one year prior to trial. This mitigates the chance of an adverse CRU decision impacting trial, but may still be early enough for the reexamination to have a positive impact.
In some cases, parties have waited until after an adverse trial decision to file a reexamination request. Appeals to the Federal Circuit are notoriously uncertain, and a remand on an issue of claim construction or damages, for example, could result in a new trial on those issues. In this case, a reexamination may have time to run its course prior to a subsequent final decision or appeal.
Finally, reexaminations should also be considered as a settlement tool. Early preparation of a “pocket reexamination” to show to the patent owner could help drive negotiations in favor of an accused infringer. Even if the reexamination is not immediately filed, the efforts in preparing the pocket reexamination are directly applicable to an accused infringer’s invalidity case and would likely not be wasted.
Given the above timing considerations, the authors recommend considering the following factors:
1. What overall goals should a reexamination strategy accomplish?
2. When is the trial scheduled and how firm is the trial date?
3. How has the court reacted to reexaminations in the past?
4. How strong is the prior art and are there one or more SNQs to support one or more proposed grounds of rejection?
5. Are all of the asserted claims subject to a SNQ?
6. How complicated is the invalidity case and what are the realistic chances of success before a jury or judge?
7. Are there pertinent dates on the discovery docket that might counsel delay in filing—e.g., after close of discovery to ensure all discovered prior art is included or after inventor depositions?
One additional consideration was raised in a recent Federal Circuit decision where a party attempted to obtain relief from a final judgment under FRCP 60(b)(6) based on alleged disclaimers made during post-trial reexamination (Amado v. Microsoft Corp., 517 F.3d 1353 (Fed. Cir. 2008)). In this case, the accused infringer waited until the district court’s entry of judgment to file its reexamination request. The reexamination had progressed to a point where the patent owner had to respond to an Office action rejection. In that response, the patent owner allegedly made “representations to the [PTO]” the “limited the scope” of one of the accused claims (Id. at 1363). The district court denied the Rule 60(b)(6) motion stating that the accused infringer “waited until after judgment in this case to file its Petition for Reexamination, while simultaneously failing to appeal the jury’s finding of validity” (Id.). Because Rule 60 motions are reviewed under an abuse of discretion standard and typically require “extraordinary circumstances,” the Federal Circuit affirmed the decision.
Nonetheless, the authors can envision circumstances where a motion under Rule 60 might be granted. For instance, if the reexamination is timely filed and the patent owner voluntarily amends the asserted claims, or the asserted claims are finally declared invalid, after a final judgment is reached in the district court on the original claims, it seems relief from such a final judgment would be warranted. We are not aware of such a case, but relief under Rule 60 opens another potential window of time where a positive reexamination result could be useful.