Contributors: Akin Gump
PTAB: Reexamination Does Not Reset the One-Year Deadline For Filing a Petition for Inter Partes Review
by Matthew George Hartman & Rubén H. Muñoz
Patent Trial and Appeal Board, 35 U.S.C. § 315(b), Inter Partes Review
The Patent Trial and Appeal Board has denied a Petitioner’s request for institution of inter partes review (IPR) of claims that were added during ex parte reexamination because it found the IPR petitions were time-barred under § 315(b).
On October 2, 2014, Patent Owner filed a lawsuit in district court accusing Petitioner of infringing several claims of U.S. Patent No. 7,039,033 (the “’033 Patent”). In response, Petitioner filed an IPR (the “original IPR”) challenging the validity of the claims that Patent Owner had asserted against it in district court. The Board instituted the original IPR and ultimately held that all of the challenged claims were unpatentable. The Federal Circuit upheld the Board’s determination and thereafter the Board issued a certification cancelling all claims of the ’033 Patent challenged in the original IPR. Notably, while the Federal Circuit appeal was pending, Patent Owner sought ex parte reexamination of the ’033 Patent. The Patent Office granted the reexamination request and issued a reexamination certificate adding 68 new claims to the ’033 Patent. On November 18, 2018, within one year of the reexamination certificate being granted, Petitioner filed six IPRs (the “present IPRs”) challenging the validity of the new claims that were added to the ’033 Patent during reexamination.
The Board, however, declined institution of these IPRs because it found they were filed more than one year after the Petitioner was served with the district court complaint on October 2, 2014. These petitions were, therefore, time-barred under § 315(b). In reaching its decision, the Board rejected Petitioner’s argument that § 315(b)’s one-year time bar did not apply because Patent Owner’s ex parte reexamination certificate adding new claims created a new, materially different patent. The Board found that the Federal Circuit in Click-to-Call Technologies, LP v. Ingenio Inc. considered and rejected Petitioner’s argument, explaining that “reexamination does not result in the issuance of a new patent for purposes of § 315(b), regardless of claim scope.” Interestingly, the Board acknowledged that while its decision potentially forecloses the use of IPR for challenging reexamined claims, “Congress could have included in . . . [§] 315(b) language regarding the effect of reexamination on the deadline to file an IPR[,]” but chose not to do so.
The Board also denied Petitioner’s attempt to circumvent the § 315(b) time bar by joining the present IPRs to the original IPR. The Board first noted that the present IPRs were filed more than 34 months after the original IPR was instituted. Accordingly, Petitioner’s motion requesting joinder was filed several years after the one-month (post-institution) deadline set by the joinder rule and was therefore untimely. The Board further noted that even if the rules provide for joinder within one month of the issuance of a reexamination certificate, which they do not expressly do, Petitioner’s request was still several months late. Notwithstanding the joinder deadline, the Board also found that the original IPR was no longer pending before the Board and, therefore, it “cannot serve as a base proceeding to which [the present IPRs] may be joined.” Thus, the Board held that joinder was inappropriate for the independent reason that there was nothing for the present IPRs to join.
Practice Tip: Based on the Board’s current practice, a patent owner whose claims are found to be unpatentable in an IPR proceeding should consider—during the pendency of the proceeding, including an appeal of the Board’s determination—whether it could get new claims through ex parte reexamination. Any new claims that issue through reexamination may be immune from an IPR if the patent owner previously asserted the patent against the petitioner. Such consideration should also take into account any potential ramifications of intervening rights.
Apple Inc., v. IXI IP, LLC, IPR2019-00124, -00125, -00139, -00140, -00141, -00181 (PTAB June 3, 2019) (Tierney)
Nearly Identical Petitions Fail Under Both Post-Grant Review and Inter Partes Review Standards
by Rehan M. Safiullah, Matthew George Hartman & Rubén H. Muñoz
Patent Trial and Appeal Board, Inter Partes Review
The Patent Trial and Appeal Board (PTAB) has denied a petitioner’s request for inter partes review (IPR) finding that petitioner failed to demonstrate a reasonable likelihood of prevailing with respect to at least one challenged claim.
The PTAB’s decision came after a nearly identical request for post-grant review (PGR) previously filed by petitioner on the same patent had been denied by the PTAB. According to the PTAB, petitioner acknowledged purposely filing a nearly identical petition “knowing that one of the two types of proceedings must fail under the law.” The PTAB further noted that petitioner had hoped for institution of both proceedings so that the PTAB could later determine which proceeding type was proper.
In declining to institute either petition, the PTAB explained that although the challenged patent was PGR-eligible, petitioner had failed to demonstrate that at least one of the challenged claims was unpatentable in view of the asserted prior art. Because petitioner’s analysis in the IPR petition was “substantially similar” to the analysis in its PGR petition, the PTAB also denied institution of the IPR. The PTAB denied the IPR petition despite the different standards for PGR and IPR institution. Specifically, a PGR may only be instituted if the petitioner demonstrates “that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” In contrast, to institute an IPR, the petitioner must demonstrate “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”
Even though the standards for instituting a PGR and IPR are different, the PTAB denied the IPR because the substantially similar arguments that had been made—and were previously rejected by the PTAB in the PGR—were also insufficient to satisfy the IPR institution threshold.
Practice Tip: Although the standard for instituting a PGR is different from that for instituting an IPR, the PTAB’s application of such standards may not be sufficiently different—in some instances—to expect different outcomes regarding the merits of petitioner’s substantive arguments.
Align Tech., Inc. v. 3Shape A/S, IPR2019-00117, Paper No. 8 (PTAB May 14, 2019)
PTAB Finds Good Cause for Staying Ex Parte Reexamination in Light of Parallel IPR
by Matthew George Hartman & Rubén H. Muñoz
Patent Trial and Appeal Board, Inter Partes Review, Reexamination Proceedings
A panel at the Patent Trial and Appeal Board (PTAB) recently considered whether to stay an ex parte reexamination proceeding where the patent was also the subject of a parallel inter partes review (IPR).
On September 11 2018, Petitioner filed a petition for IPR of U.S. Patent No. 6,651,864, which is directed to devices and methods for bonding electrical connections. Independent claim 28 was the only claim challenged in the petition. The Board instituted the IPR on March 14, 2019.
Approximately one month later, on April 16 2019, a third party requested ex parte reexamination of claims 1, 2, 4, 7 and 28 of the ’864 Patent. After the Board granted the reexamination request, Patent Owner filed a motion to stay the reexamination proceeding pending resolution of the IPR.
In addressing the motion, the Board explained that a party seeking a stay of a reexamination must show there is “good cause” to warrant the stay. In deciding whether “good cause” exists, the Patent Office has recently identified several factors that the Board may consider, including:
- whether the claims challenged in the IPR are the same as or depend directly or indirectly from claims at issue in the reexamination;
- whether the same grounds of unpatentability or the same prior art are at issue in both the IPR and the reexamination;
- whether simultaneous conduct of the reexamination and IPR will duplicate efforts within the Office;
- whether the reexamination could result in inconsistent results with the IPR;
- whether amending the claim scope in one proceeding would affect claim scope in the other;
- the respective timelines and stages of each proceeding;
- the statutory deadlines of the reexamination and IPR; and,
- whether a decision in the IPR would likely simplify issues presented in the reexamination or render it moot.
See Notice, 84 Fed. Reg. at 16,657 (April 22, 2019).
The Board weighed these factors and granted the motion to stay the reexamination despite there being only one claim (claim 28) in common between the IPR and reexamination proceedings. The Board found that substantial overlap in prior art between the two proceedings favored the stay and expressed concern that moving forward with both proceedings could lead to “wasteful duplication of effort” by the Office, with potentially “inconsistent factual determinations and legal conclusions.” Finally, the Board noted that the reexamination was still at an early stage, and the Patent Office had not issued a first Office Action, whereas the Patent Owner had already submitted its Preliminary Response in the IPR proceeding. Considering the factors in total, the Board concluded there was “good cause” to stay the reexamination until completion of the IPR.
Practice Tip: A party seeking the stay of an ex parte reexamination, where the same patent is being challenged in an IPR, should be prepared to show good cause by addressing the factors enunciated by the Office as meriting consideration in determining such a request.
Toshiba Memory Corp. v. Anza Tech., Inc., IPR2018-01598, Paper 35 (PTAB July 10, 2019)