PTAB Guidance on Using Reissue and Reexamination to Amend Claims in AIA Trial Proceedings

April 29, 2019

What Do We know?

1. The Patent Trial and Appeal Board (“PTAB”) has clarified that a reissue application or ex parte reexamination request may be filed at any time before issuance of a USPTO certificate cancelling all patent claims or a Federal Circuit mandate finding all claims invalid. https://www.govinfo.gov/content/pkg/FR-2019-04-22/pdf/2019-08022.pdf

• For example, filing for reissue or reexamination may occur within the 63-day notice of appeal period (35 U.S.C. § 142) after a Final Written Decision (“FWD”) in an Inter Partes Review or Post Grant Review.

2. The reissue “error” requirement (35 U.S.C. § 251) may be satisfied by a patent owner’s previous failure to present narrower claims (citing In re Tanaka, 640 F.3d 1246, 1251 (Fed. Cir. 2011)).

• By contrast, after a FWD, a Substantial New Question of patentability required for reexamination cannot be a question raised in a ground decided in a FWD because it is not “new” (MPEP 2242(I)).
• However, before a FWD, a Substantial New Question of patentability can be a question raised in an instituted ground later decided in a FWD.

3. The § 315(b) one-year statutory bar triggered by service of an infringement complaint may not apply to newly reissued claims (citing IPR2014-00358, Paper 21, 7-8 (PTAB July 14, 2015); Click-To-Call Techs. v. Ingenio, Inc., 899 F.3d 1321, 1336-37 (Fed. Cir. 2018)).

• By contrast, the § 315(b) statutory bar applies to reexamined claims issued in a reexamination certificate from the original patent. (citing Click-To-Call; IPR2013-00315, Paper 31, 3–5 (PTAB Nov. 13, 2013)).

4. Reissue applications may address all statutory patentability requirements (§§ 101, 102, 103, 112).

• By contrast, reexamination is generally limited to §§102 and 103 patentability questions based on patents and printed publications.

5. A patent owner may abandon a reissue application after a favorable FWD but before reissue.

• By contrast, a patent owner cannot abandon a reexamination application (citing 35 U.S.C. § 305).

6. Reissue applications are published in the Official Gazette and provide an opportunity for a third party to file a protest (citing MPEP 1441.01).

Observations and Practice Tips:

1. Patent owners should consider the value of filing a reissue application or reexamination request after the PTAB issues a FWD that explains PTAB’s rationale for cancelling originally issued claims based on a full evidentiary record.

• Additional considerations: potential application of a §315(b) statutory bar, whether statutory issues of patentability under §§ 101 or 112 need to be addressed, and the basis for a Substantial New Question of patentability in any reexamination request.
• Reissue or reexamination also should be weighed against a possible contingent Motion to Amend the claims during an Inter Partes Review or Post Grant Review proceeding, which includes preliminary guidance from the PTAB and ability to address §§101, 112 issues, under the new pilot program.

2. Patent owners might consider hedging their bets by filing a contingent motion to amend, knowing that if the motion is denied they can still file a post-FWD narrowing reissue application or reexamination request (subject to the Substantial New Question of patentability limits referenced above).

• Patent owners also may withdraw a motion to amend before a FWD, e.g. in favor of a post-FWD reissue application or reexamination request.
• Such a strategy might be useful in the context of settlement discussions or after oral hearing suggests the motion will be denied.

3. Another option for reexamination is to consider filing the request after a PTAB oral hearing but before a FWD, if the Substantial New Question of patentability is based on an instituted ground and patent owner wants the § 315(b) statutory bar to apply to petitioner.

4. According to MPEP 1449.01, if the USPTO issues a certificate cancelling all patent claims, a pending reissue application or reexamination request that contains narrower claims than the cancelled original claims may proceed under certain conditions.

• BUT, a patent owner and petitioner should consider whether collateral estoppel might apply to any amended claims that do not materially alter the unpatentable original claims.
• See, e.g., Fellowes, Inc. v. Acco Brands Corp., 2019 U.S. Dist. LEXIS 67431 (N.D. Ill. 2019) (issue preclusion bars plaintiff from asserting reexamined claims because “[t]he difference between [reexamined] ’796 Patent claims 19 and 20 and ’767 Patent claims 11 and 12 [invalidated in an IPR] is not material.”).