Owners roundly dislike the new inter partes reexamination proceedings – the presumption of validity does not apply, a duty of disclosure causes a new search for uncited prior art with disastrous consequences if something is missed, and the proceedings move forward at an accelerated pace with an opportunity to amendment but only in the narrowing direction.. The Requesters who might challenge the patent have their own cause for reluctance – the limited consideration of only prior art defenses may be inadequate in cutting edge technologies where the adequacy of the disclosure and claim clarity may be more the more important validity issues, an expansive estoppel in the statute precludes a host of valuable defenses if the case goes to litigation, a painfully short Comment period with only one permitted opportunity raise the risk factors that an important issue will not be addressed adequately. Both sides have something to dislike in inter partes reexamination.

Owners have, however, another procedural tool that can mitigate some drawbacks in inter partes reexamination. A broadening reissue application can be filed and merged with the inter partes reexamination to give Owners the right to pursue better and broader claims to protect the invention. Even though the MPEP does not yet speak to these merged proceedings, a recent Decision by the PTO clarifies the policies and procedures that will be used at the interface of inter partes reexamination and broadening reissue.

The PTO Has Issued an Explanatory Decision In inter partes reexamination #7 (SN 95/000,007), the Owner filed a broadening reissue a couple of weeks before the Response to the First Action was due. Owner also filed a petition to block a merger of the proceedings and presented a number of arguments that would elicit key policy decisions:

(1) A merger would deprive the Owner of the right to seek broader claims by reissue because inter partes reexamination does not permit broadening amendments.

(2) Merger would take away the right to ex parte consideration of the broader claims in reissue.

(3) The Owner is deprived of a right to interview the examiner as would be available under the reissue rules.

(4) The absence of published procedures and ad hoc rule making violates an Owner’s right to Due Process.

Some guidance on merger can be gleaned from the published rules. Rule 565 (37 C.F.R. 1.565) is directed to merger in ex parte reexam, and rules 991-995 (37 C.F.R. 1.991-1.995) describe concurrent proceedings that involve inter partes reexamination. The ex parte practice presumes a merger with housekeeping amendments to maintain the same claims in the reexam and the reissue files: ". . . a decision will normally be made to merge the two proceedings or suspend on of the two proceedings." (37 C.F.R. 1.565(d))

Rule 991 does not identify the presumptive result in an inter partes reexam: "If a reissue and an inter partes reexamination proceeding . . . are pending concurrently on a patent, a decision may be made to merge the two proceedings or suspend . . ." Rule 991 further provides that the reissue procedures will apply except that Requester can participate to the extent provided by the inter partes reexamination rules and housekeeping amendments will be required to maintain consistency between the files. Rule 995 extends the comment right to all Requesters when there are multiple Requesters.

The PTO considered each argument in Owner’s petition and ultimately decided in favor of a general policy for merger between the reissue and inter partes reexamination files:

  • Merger should be presumed unless one of the cases is so far advanced (e.g., on appeal) that efficiency warrants suspension. See, In re Onda, 229 USPQ 235 (Commr. 1985). 
  • The merged proceeding is dissolved only if the reissue is abandoned. A continuation of the reissue application might be stayed pending disposition of the inter partes reexamination. 
  • The merged proceeding will be conducted under the reissue rules for the Owner. (Rule 991) 
  • Requester’s Comments are limited to those issues permissible for comment within the inter partes reexamination rules, i.e., prior art only. (Rule 995) 
  • A "bare bones" housekeeping amendment will place the same claims in each file. 
  • Requester can comment on the prior art implications of the new, broader claims within the Comment period. The same is true for issues raised in any appeal. 
  • Each Office Action from the examiner in the merged proceeding will be a single document that will address issues raised in the reissue as well as the reexam. 
  • Owner and Requester must file two copies of their documents, one for each of the merged files. 
  • Any reissue patent serves as the reexam certificate. 
  • Interviews are only available by petition "in the rare circumstances that an interview is indispensable".

Merger Is The Owner’s Friend

Although there are some advantageous procedures lost to the Owner in merged inter partes reexamination and broadening reissue proceedings, merger also provides the Owner with a number of procedural and substantive advantages that are not available in either proceeding alone. The short Comment period, an absolute estoppel on issues that "could have been raised", and an inability to contest facts found during the inter partes reexamination (35 U.S.C. § 515(c)) combine to punish the Requester and force a desperate rush to find art for the broader claims, even if the focus of the new claims differs significantly from the issued patent claims. These procedural body blows to the Requester have no corollary in litigation.

The Owner may also want to use the merged proceedings to force the hand of a Requester at a rate much faster than in a litigation. Notably, all reexaminations require a very specific basis for alleging invalidity. Shotgun presentations of prior art and broad allegations of invalidity over uncertain combinations of the references will cause the PTO to choose the references and combination that it believes the Requester intended. (The PTO does not decline the reexam request if some combination of the references could raise a substantial new question of patentability.) The estoppel issues apply to the Requester whether the PTO guesses the right combination or not. In some cases, the Owner may want to convince (trick?) the Requester to file an inter partes reexamination to solidify the basis for invalidity within two years from the issue date (and then follow that inter partes reexamination request up with a broadening reissue request to address and resolve potential prior art issues).

The Recapture Rule Limits Reissue

Most cases will be able to find some way to pursue broader claims. The inter partes reexamination request will renew the Owner’s focus on the technology in the patent, and this enhanced scrutiny may reveal one or more aspects of the invention that could be protected. The Owner also has a potential infringer whose product line and competitive history may be investigated to determine how it might implement the patented technology so that blocking claims can be formulated. A second look at the scope of the patent claims may also reveal potential difficulties in claim construction that would allow cleaner, less problematic claims to be presented for examination that might reduce future litigation costs.

The right to broader claims is not unfettered. The Recapture Rule requires an analysis of the original prosecution proceedings and will bar later claims that seek to recapture claim scope that was originally presented but which was given up to obtain the patent. See, MPEP §1412.02. The key is to determine when the Recapture Rule applies.

A good example of the PTO’s practice and policy regarding the Recapture Rule can be found in the Board’s precedential opinion in Ex parte Eggert, 2003 Pat. App. LEXIS 27, 67 U.S.P.Q.2D (BNA) 1716 (BPAI 2003) also found on the USPTO website at http://www.uspto.gov/web/offices/dcom/bpai/prec/RC010790.pdf. The Eggert appeal involved only a rejection for improper recapture of subject matter and included an extensive illustration of how to analyze a prosecution history and the cited prior art for possible violation of the Recapture Rule. The Board adopted with only editorial modifications the Recapture Rule standards set forth by the Court of Appeals for the Federal Circuit in In re Clement, 131 F.3d 1464, 1469-70, 45 USPQ2d 1161, 1165 (Fed. Cir. 1997):

(1) if the reissue claim is as broad as or broader than the canceled or amended claim (the surrendered subject matter) in all aspects, the recapture rule bars the claim;

(2) if it is narrower than the surrendered subject matter in all aspects, the recapture rule does not apply, but other rejections are possible;

(3) if the reissue claim is broader than the surrendered subject matter in some aspects, but narrower than the surrendered subject matter in others, then:

(a) if the reissue claim is as broad as or broader in an aspect germane to a prior art rejection, but narrower in another aspect completely unrelated to the rejection, the recapture rule bars the claim;

(b) if the reissue claim is narrower in an aspect germane to a prior art rejection, and broader in an aspect unrelated to the rejection, the recapture rule does not bar the claim, but other rejections are possible.

In the Eggert case, an amendment after final rejection incorporated subject matter from a dependent claim into the independent claim. Such an expedient almost guaranteed entry of the amendment but, while adding features to make the claim patentable, the amendment did not address the specific point of novelty of the invention over the closest prior art. New claims were permitted in the broadening reissue to remove limitations that were not argued to be a basis for patentability as well as the subject matter incorporated from the dependent claim that had been added after the final rejection. Further amendments narrowed a claimed feature that was directly at the point of novelty. The question before the Board was whether an applicant could "undo" the effects of the unnecessarily restrictive amendment after final rejection.

The Board said the reissue was proper. After analyzing the applicable law and a detailed analysis of the prosecution history, the Board determined that the narrowing limitations at the point of novelty were "germane to a prior art rejection". The broadening amendments that removed other limitations were not at the point of novelty and would not be "germane" to the rejection. For those keeping score, this put the case into category 3(b) of the Clement principles (narrower in germane aspects, broader in unrelated aspects).

The "take home" lesson for Owners considering reissue generally, and specifically when faced with an inter partes reexamination request, is to take another look at the original prosecution history:

  • Was there an amendment after final that incorporated subject matter from a dependent claim? 
  • Was the incorporated subject matter aimed precisely at the point of novelty over the prior art? 
  • Were all other limitations removed that were not required for distinction at the point of novelty either in the original prosecution or in the art cited by the Requester? 
  • Is there any other aspect to the invention (e.g., functional claims, structural claims, combinations of functional and structural claims) that could provide protection but from a different angle?
  • Will you need to rely on any doctrine of equivalents arguments or "means" claims to establish infringement that could be addressed with better claims in the patent?

If so, a broadening reissue might be warranted, and an Eggert analysis should be performed.

Requesters and competitors may likely benefit from the broadening reissue. It does not take a great leap to appreciate that an Eggert analysis for the permissible scope of broadening amendments is similar in many regards to an analysis for prosecution history estoppel (note the dissenting opinion in Eggert). The analysis and prosecution will add clarity to the limits of the claim’s enforceable scope for infringement under the Doctrine of Equivalents. If the patent survives the merged proceeding, the Owner could acquire a broader claim scope for literal infringement (good for the Owner) while the Requester might have greater clarity in the enforceable limits of the patent (good for the Requester by clarifying claim scope).

Conclusion

In the right case, Owners may want to pursue a broadening reissue as a countering strategy to mitigate the limitations on claim amendments that are built into inter partes reexamination proceedings. The combination of a short Comment period and the estoppel associated with a failure to raise and fully address all potential issues represents a distinct procedural disadvantage for the Requester. 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.