Reexaminations Reborn:

Strategies for Ex Parte

Reexaminations
 Panelists

Jason Harrier Scott McKeown Ellyar Barazesh

Senior Manager, Senior Counsel, Partner, Senior Patent Counsel,
IP and Technology, Ropes and Gray Unified Patents
Capital One
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 Introduction

• Post-Grant Proceedings

• Ex Parte Reexamination

• Strategic Considerations

• Data

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 Post-Grant Proceedings

• Inter Partes Review (IPR)

• Post-Grant Review (PGR) PTAB
• Covered Business Method (CBM)

• Ex Parte Reexamination
USPTO
• Supplemental Examination
Examining Unit
• Reissue

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 Ex Parte Reexamination

• An ex parte process of challenging patent validity

– Reexamination request filed
– If granted, reexamination proceeds between patent owner and
the USPTO
• Other than a potential reply, requester is not involved after
request

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 Ex Parte Reexamination

• Who?
– Anyone
• Third Party
– Unless estopped by IPR or PGR
– Requester can be anonymous (35 U.S.C. § 301(e))
• Patent Owner
• USPTO Director

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 Ex Parte Reexamination

• When?
– “at any time” (35 U.S.C. § 302)
– “during the period of enforceability of a patent”
(Rule 510 (a))
• Can be six years after patent’s expiration
• Final court judgement of invalidity or unenforceability
forecloses reexamination

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 Ex Parte Reexamination

• What?
– Request for Reexamination
• Initial document in any reexamination
proceeding
• Very likely the only document submitted by a
third-party requester
• Must ”set forth the pertinency and manner of
applying cited prior art to every claim for which
reexamination is requested.”
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 Ex Parte Reexamination - Request

• Must be based on printed publication prior art

– Patents, Patent Application Publications, Non-Patent Literature
• Must raise a question of patentability under:
– 35 U.S.C. § 102
– 35 U.S.C. § 103
– Double patenting
• SNQ – Substantial New Question of Patentability must be raised
– Substantial = Important to a reasonable examiner
– New = New to the USPTO
• A question may be new even if previously considered in court
• A new question is typically based on new prior art
• “Old” prior art can raise a SNQ of patentability if viewed in a new light
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 Ex Parte Reexamination - Request

• MPEP 2242(I):
– “…a substantial new question of patentability [may be]
present, unless the same question of patentability has already
been decided by
• (A) a final holding of invalidity, after all appeals, or
• (B) by the Office in a previous examination or pending
reexamination of the patent.”

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 Ex Parte Reexamination - Request

Judgment Judgment
Final NOT Final

Invalid or No PTO Makes Own

Unenforceable Reexamination Decision

Not Invalid and PTO May Defer to

PTO Makes Own
Not Unenforce- Factual Findings
Decision
able re Validity

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 Ex Parte Reexamination - Request

• “Previous examination”
– Original examination of the application that resulted in the
patent
– Examination of a reissue application that resulted in a reissue
of the patent
– Examination of the patent in an earlier concluded
reexamination

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 Ex Parte Reexamination - Request

• New prior art = not previously considered by the

USPTO
– Printed publication
– Raises an SNQ of patentability
– Is not cumulative of the old art in its technological teachings
– “New, non-cumulative technological teaching”

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 Ex Parte Reexamination - Request

• Old prior art = previously considered by the USPTO

– Can be successful in following situations:
• When considered or presented in a new light compared to its
earlier use before the USPTO
• When there is a material new argument related to the art
• When there is a material new interpretation of the art
• When old art is applied against different claimed subject matter
compared to what previously applied against
• When old art is combined in a new manner
• When different statutory section provides basis for using old art
• When a reissue is abandoned, the same outstanding rejection
can raise an SNQ
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 Ex Parte Reexamination - Request

• Requirements
– Copy of patent and all subsequent history
– Copy of prior art printed publication(s) relied upon
– Identification of each claim to be reexamined
– Identification of each SNQ
– Detailed explanation of pertinency and manner of applying the
prior art
– Certification filing is not prohibited by AIA’s estoppel
provisions
– Fee
– Certificate of service on patent owner
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 Ex Parte Reexamination - Request

• Optional Items
– Claim charts
– Declarations to authenticate prior art and/or publication dates
– Declarations to explain content of prior art
– Patent Owner admissions
– Patent Owner requester may include proposed amendments
– Patent Owner requester may include patentability arguments
– Old prior art
– Parent patent application(s)
– Court papers

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 Ex Parte Reexamination

• Timeline
~ 92%

Reexam Requester
Request PO statement
Ordered Reply

Notice of Intent to
Appeal to Fed.
Appeal to PTAB Issue Reexam Examination
Circuit Certificate

Appeal to
Supreme Court

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 Ex Parte Reexamination

• Amendments
– A Patent Owner may amend claims during ex parte
reexamination
– New claims may be added
– No enlargement of claim scope
– No new matter
– Not available for expired patents

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 Ex Parte Reexamination

• USPTO
– Central Reexamination Unit (CRU)
• Three groups
– Chemical/Biological
– Electrical
– Mechanical
• Experienced patent examiners who specialize in reexamination
– Three Examiners are involved in each substantive Office Action:
» Assigned examiner
» Conferee examiner in same technology area
» CRU supervisor
• No production/count system

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 Strategic Considerations
Reexamination PTAB Proceedings Litigation

Threshold/Burden of SNQ of Patentability/ IPR: Reasonable Likelihood Clear and Convincing

Proof Preponderance of That Petitioner Would Evidence
Evidence Prevail/
Preponderance of Evidence

PGR: More Likely Than

Not/Preponderance of
Evidence
Presumption of Validity No No Yes
Claim Scope Broadest Reasonable Narrow Construction Narrow Construction
Interpretation (Suitco) (Phillips) (Phillips)
Nature of Invalidity Printed Publications/ Printed Publications Any Available Basis
Ground Double Patenting
Decision Maker Highly Experienced CRU PTAB Judge Average Juror
Examiner

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 Strategic Considerations - Fees

• Ex Parte Reexamination
– Streamlined: $6,300, $3,150, or $1,575
– Non-streamlined: $12,600, $6,300, or $3,150
– Additional fees for independent claims in excess of 3 and/or total claims in
excess of 20
– For requester, majority of attorney fees will be associated with request
• PTAB Proceedings
– $41,500 - $47,500 (including pre- and post-institution fees and depending on
whether IPR or PGR)
– Additional fees for independent claims in excess of 3 and/or total claims in
excess of 20
– For petitioner, significant attorney fees incurred pre- and post-institution

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 Strategic Considerations - Estoppel

• 37 CFR 1.510 Request for ex parte reexamination.

– (a) Any person may, at any time during the period of
enforceability of a patent, file a request for an ex
parte reexamination by the Office of any claim of the patent
on the basis of prior art patents or printed publications cited
under § 1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35
U.S.C. 325(e)(1). The request must be accompanied by the fee
for requesting reexamination set in § 1.20(c)(1).

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 Strategic Considerations – Stays (Other Office Proceedings)

• 84 Fed. Reg. 16,654, 16,657 (April 22, 2019) (Notice consolidating case holdings)
– Whether the claims challenged in the AIA proceeding are the same as or depend directly
or indirectly from claims at issue in the concurrent parallel Office proceeding;
– Whether the same grounds of unpatentability or the same prior art are at issue in both
proceedings;
– Whether the concurrent parallel Office proceeding will duplicate efforts within the Office;
– Whether the concurrent parallel Office proceeding could result in inconsistent results
between proceedings (e.g., whether substantially similar issues are presented in the
concurrent parallel Office proceeding);
– Whether amending the claim scope in one proceeding would affect the claim scope in
another proceeding;
– The respective timeline and stage of each proceeding;
– The statutory deadlines of the respective proceedings;
– Whether a decision in one proceeding would likely simplify issues in the concurrent
parallel Office proceeding or render it moot.

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 Strategic Considerations – Stays (District Court Litigation)

• Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988)
– “Courts have inherent power to manage their dockets and stay
proceedings,… including the authority to order a stay pending conclusion of a
PTO reexamination.”
– But no PTO authority to stay reexamination pending outcome of district court
litigation.
• Pro-Troll, Inc. v. Shortbus Flashers, LLC, 16-cv-04062-VC (N.D. Cal. 2016)
– “Other cases in this district have considered, in deciding whether to stay a
case pending patent reexamination or review,
• ‘(1) whether discovery is complete and whether a trial date has been set;
• (2) whether a stay will simplify the issues in question and trial of the case;
and
• (3) whether a stay would unduly prejudice or present a clear tactical
disadvantage to the nonmoving party.’”
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 Strategic Considerations

• Discretionary Denials at the PTAB (Fintiv)

1. Whether the court granted a stay or evidence exists that one may be granted
if a proceeding is instituted;
2. Proximity of the court’s trial date to the Board’s projected statutory deadline
for a final written decision;
3. Investment in the parallel proceeding by the court and the parties;
4. Overlap between issues raised in the petition and in the parallel proceeding;
5. Whether the petitioner and the defendant in the parallel proceeding are the
same party; and
6. Other circumstances that impact the Board’s exercise of discretion, including
the merits.
• Reexamination as an alternative?

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 Data
Institution Decisions

*Not Instituted – Procedural is projected to equal 201 in 2020 26

 Data
Procedural Denials

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 Data
314(a) Denials By Type

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 Data

Volume of Ex Parte Reexamination Requests

900

800

700

600

500

400

300

200

100

0
2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018 2019 2020

*2020 projected based on Q1 data 29

 Data
Ex Parte Reexamination Results PTAB FWD Results
(3rd Party Requester)

Some All Claims

All Claims Claims Confirmed
Confirmed Canceled 20%
21% 18%

Some
Claim All Claims
Changes Canceled
65% 14%
All Claims
Canceled
62%

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 THANK YOU
Please Contact Questions?
Ellyar Barazesh
ellyar@unifiedpatents.com