Merger and Suspension of ConcurrentMerger and Suspension of ConcurrentInterInter PartesPartes Reexamination andReexamination and

Reissue ProceedingsReissue Proceedings

Presented by:

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Presented by:

Kevin B. LaurenceStoel Rives LLP

on August 17, 2010to the

Committee on Patent Office Inter Partes Proceedingsof the

Intellectual Property Owner (IPO)

GeneralGeneral

• Office of Patent Legal Administration (OPLA) decideswhether to merge, suspend or permit concurrentprosecution on a case-by-case basis

• Merger or suspension may result from a sua sponte

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decision by OPLA or from a petition, which allows issuesto be presented from the petitioner’s perspective.

• Normally, the proceedings will be merged or one will besuspended. The general policy is not to permit concurrentprosecution to avoid inconsistent positions. However,concurrent prosecution avoids delays in mergedproceedings.

ConsiderationsConsiderations

• While OPLA is authorized by 35 U.S.C. 314(c) to suspendan inter partes reexam proceeding when there is “goodcause,” the “special dispatch” requirement of 35 U.S.C.314(c) for inter partes reexam is a paramountconsideration.

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consideration.

• While claims can be broadened via reissue, broadening isnot permitted in inter partes reexam.

• Interviews are permitted in reissue but not in inter partesreexam.

• Expunging the unauthorized submissions in mergedproceedings introduces delay.

FactorsFactors

• Threshold

– The reexam must be ordered.

– The reissue must be announced in the Official Gazette

• Stage of each proceeding

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• Stage of each proceeding

• Will merger expedite proceedings?

• Issues in reissue that are not proper for considerationin reexam such as § 112 requirements, recapture rule,acceptability of reissue declaration, etc.

Procedures for mergedProcedures for mergedproceedingsproceedings

• Merged proceedings are conducted in accordance with §§1.171-1.179 (the reissue rules).

• Keep same claims in each proceeding.

• 3rd Party Requester may participate as provided by reexam

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• 3 Party Requester may participate as provided by reexamrules but is limited to issues within scope of the reexam.

• Examiner’s actions apply to both proceedings.

• Any inter partes reexam proceeding that is merged with areissue will be concluded by the grant of the reissuedpatent.

InterInter PartesPartes ReexamReexam (‘007) + Reissue = initially(‘007) + Reissue = initiallymergeredmergered then . . .then . . .

InterInter PartesPartes ReexamReexam (‘007) + Reissue =(‘007) + Reissue =Severance plus Suspension of ReissueSeverance plus Suspension of Reissue

InterInter PartesPartes ReexamReexam (‘007) + broadening reissue:(‘007) + broadening reissue:In re AllanIn re Allan, 71 U.S.P.Q. 2d (BNA) 1751, (U.S. Patent, 71 U.S.P.Q. 2d (BNA) 1751, (U.S. Patentand Trademark Office Apr. 26, 2004).and Trademark Office Apr. 26, 2004).

• 3rd Party Requester, Audiovox, filed inter partes reexam11 months before Johnson Controls filed broadeningreissue application.

• Owner opposed merger

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• Owner opposed merger

• No related litigation

• OPLA’s decision: merger then severance plussuspension of reissue

• RC cancelling all claims – 7.5 years after filing request.

• Reissue is still suspended after 6 years

OPLA’s analysis in In re AllenOPLA’s analysis in In re Allen

• Most important concerns related to 3rd party requestercommenting on broadened claims or other issues thatare unique to reissue. (resolved in other cases)

• “Special dispatch” – inter partes requested first

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• “Special dispatch” – inter partes requested first

• Putting comments just in reissue so that 3rd Partycannot comment on them (resolved in other cases)

InterInter PartesPartes ReexamReexam (‘270) + Reissue =(‘270) + Reissue =Merged ProceedingsMerged Proceedings

InterInter PartesPartes ReexamReexam (‘270) +(‘270) +Reissue = Merged ProceedingsReissue = Merged Proceedings

• 3rd Party Requester, Minka, filed inter partesreexam 4 months after Johnson Controls filedbroadening reissue application; litigation pending

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• OPLA’s sua sponte decision: merger

• All claims rejected in final rejection – reissueabandoned

OPLA’s Analysis re Merger ofOPLA’s Analysis re Merger of InterInterPartesPartes ReexamReexam (‘270) + Reissue(‘270) + Reissue

• Noted that In re Allan is nonprecedential butdistinguished the framework developed for themerged proceedings.– Sequence opposite

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– Sequence opposite

– Patent owner had not expressed a willingness to suspendreissue.

– Merger decision fashioned more specifically than first Allandecision

OPLA’s Merged Procedures inOPLA’s Merged Procedures in‘270 + Reissue‘270 + Reissue

• Housekeeping amendment; single response

• Merged proceeding conducted based on reissue rules.

– However, no interviews (not statutory right); try petitioning.

– RCE’s must be accompanied by petition.

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– RCE’s must be accompanied by petition.

– CRU has jurisdiction

• 3rd party requester limited to issues within scope of interpartes reexamination.

• Improper papers will be returned to requester orexpunged.

– frequent problem in merged proceedings; delays

‘408 + Reissue = Concurrent Prosecution‘408 + Reissue = Concurrent Prosecution

Guitar Hero’s owner owns patentGuitar Hero’s owner owns patentfor interactive drum setfor interactive drum set

• Guitar Hero’s owner, Activision, filed broadeningreissue application.

• 3rd Party Requester, 745 LLC, filed IPR filed 2

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• 3 Party Requester, 745 LLC, filed IPR filed 2years later

• No related litigation

• OPLA’s decision: concurrent prosecution

• No activity in reissue app despite longer pendency.

• clip

OPLA’s Analysis and PendencyOPLA’s Analysis and Pendency

• Returning or expunging of inadvertentunauthorized participation and the objection tosuch participation would result in sufficient

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delay to outweigh any benefit from merger.

• While reissue was not suspended, there hasbeen no activity for 3.5 years.

InterInter partespartes (‘1042) + Broadening(‘1042) + BroadeningReissue = Concurrent ProsecutionReissue = Concurrent Prosecution

Martin v. AppleMartin v. AppleControl No. 95/001,042Control No. 95/001,042

• Owner sued Apple 7 months after filingreissue– Litigation stayed pending outcome of reexam and reissue

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• OPLA’s decision: concurrent prosecution

• OPLA’s analysis was the same as in theGuitar Hero case:– Even though IPR was filed only 9 months after reissue

versus 22 months.

– However, patent owner asked not to have reissuesuspended based on litigation.

Procedure for Concurrent ProsecutionProcedure for Concurrent Prosecutionof Reissue Applicationof Reissue Application

• Technology Center has jurisdiction

• All non-broadened claims held as withdrawn fromconsideration in reissue application.

• Prosecution of reissue will be limited to claims broader than

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• Prosecution of reissue will be limited to claims broader thanthose of the original patent.

• If reissue application is in condition for allowance beforetermination of the reexam then patent owner must eitherrequest suspension of reissue application (recommended) orcancel the claims held in abeyance and possibly file acontinuation reissue application (if additional error).

Procedure for Concurrent ProsecutionProcedure for Concurrent Prosecutionofof InterInter PartesPartes ReexamReexam

• CRU has jurisdiction

• All non-broadened claims will be prosecuted in the interpartes reexamination

• If reexamination proceeding is terminated prior to the

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• If reexamination proceeding is terminated prior to theconclusion of the reissue prosecution then reexamcertificate will issue and the reissue application will beconformed to the results of the RC by amending theclaims as needed in the reissue application.

ConclusionsConclusions

• Early cases suspended the reissue application andprosecuted the inter partes reexamination and thentrended toward merger with suspension of the reissueapplication.

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• Two recent cases with reissue applications filed beforethe IPR permitted concurrent prosecution partly due to thedelays caused by expunging the record due tounauthorized submissions in merged proceedings.

• Whether the reissue or IPR is filed first is an importantfactor for determining OPLA’s choice of merger,suspension or permitting concurrent prosecution.

Further discussion is welcome at thefollowing LinkedIn group:

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Patent Reexamination Practice

http://www.linkedin.com/groups?mostPopular=&gid=2785699

For more information contact:

Kevin B. LaurencePartnerSalt Lake City, UT

2323

Salt Lake City, UT

(801) 578-6932 Direct(801) 578-6999 Fax201 S. Main Street, Ste 1100Salt Lake City, UT 84111kblaurence@stoel.com