Post – Issuance Practice:Reissue And Reexamination

James F. McKeown†

Crowell & Moring LLPWashington, D.C.

† The views expressed in this paper are solely those of the author, not those of Crowell &Moring LLP and its clients.

I. IntroductionWe made too many wrong mistakes.

-- Lawrence Peter Berraa/k/a/ “Yogi”

U. S. patent law recognizes that we all make too many wrong mistakes, sometimes eventoo many right mistakes. For that reason, statutory mechanisms have long been in place tocorrect at least the right mistakes, both big and small. Corrective measures have also longbeen part of U.S. case law as well although we do not think of them in that manner. Evenwhere, for example, a mistake per se has not occurred, courts have come to the aid of patentowners through the equitable doctrine of equivalents. Furthermore, claim construction engagedin by district courts and the U.S. Court of Appeals for the Federal Circuit also allows for a certainamount of broadening or narrowing within a framework of somewhat ambiguous claimconstruction rules. In addition to conforming Letters Patents to what was intended orinadvertently overlooked by patent owners, but for the commission of certain types of errors,these remedial measures are intended to restore, at least in theory, the balance between, onone hand, inventors for disclosure of their inventions to benefit the public and, on the otherhand, the public which permits the existence of exclusive rights sometimes pejoratively calledthe “patent monopoly.”

Reissue and, more recently, reexamination have also be viewed, not simply as a way ofcorrecting a patent for correction’s sake but, as another arrow in the litigator’s quiver. Reissue,a long existing post-amendment practice, is the option of the patent owner alone. Seekingreissue is thus generally considered an undertaking which is part of a patent owner’s offensivestrategy. Ex parte reexamination, and its newer sibling optional inter partes reexamination, arein theory available for both offensive and defensive strategies. In truth, however, reexaminationup until now has also been considered primarily as an arrow for the patent owner (PO),1 not forinterested third parties such as potential and actual infringers.

Within the last five years or so, statutory and case law developments may have alsodiminished the value of reissue, at least for one type of patent amendment, and enhanced thevalue of optional inter partes reexamination to third parties. The purpose of this paper is toexplore what impact these developments may have had on two major regimes for patentcorrection, namely reissue and reexamination as found in Chapters 25, 30 and 31 of Title 35 ofthe U. S. Code. Reexamination, the much younger patent amendment regime, involves not onlythe approximately 23-year old ex parte reexamination (EPR) procedure as found in Chapter 302

but its four-year old sibling inter partes reexamination (IPR) procedure with which there is littleexperience.

The statutory schemes for reissue and reexamination are relatively straightforward,particularly in the case of reissue practice which is set forth in only two sections. For purposes

1 Throughout EPR has been used to refer to ex parte reexamination, IPR to refer to inter partes

reexamination, PO or POs to refer to the patent owner(s), TPR (or TPRs) to refer to the third-party requester(s), and PTO to refer to the Patent and Trademark Office.

2 Pub. L. 96-517, § 1, 94 Stat. 3015, as amended, Nov. 8, 1984, Pub. L. 98-622, § 204, 98 Stat.3388; December 8, 1994, Pub. L. 103-465, § 533, 108 Stat. 4988; Nov. 29, 1999, Pub. L. 106-113, § 4732, 113 Stat. 1501A-581; Nov. 2, 2002, Pub. L. 107-273, 116 Stat. 1900-1901.

disclosure rules,8 using state-of-the-art docketing procedures and by aggressive prosecution upto and including effective appeal of examiners’ decisions to the Board of Patent Appeals andInterferences. Almost assuredly, those efforts will avoid all of the wrong mistakes and most ofthe right mistakes.

Those whose primary, if not sole, occupation is the procurement of patent property willalso find that development of reissue and reexamination strategies is likely to bring them inclose contact with litigators who often require consideration of administrative patentamendments or administrative review of prior art to enhance their chances of success oninfringement and/or validity issues. Reissue and reexamination procedures rarely take place ina vacuum. A working knowledge of what is taking place either in district court litigation orpriority contests is also an essential tool for effectively prosecuting patents in a post-issuancephase.

II. Reissue

A. General

None of the three procedures under consideration in this paper are widely used. Thisshould come as no surprise given the underlying fact that most issued patents are “paper”patents having no commercial significance. Thus, their flaws are usually harmless in the realworld and do not justify the time and expense to correct them. Of those that are of commercialimportance, however, most probably have no error or mistakes so serious as to warrant a newPTO procedure, or at least errors or mistakes that could not otherwise be excused under caselaw in the course of infringement litigation. In addition, reexamination, particularly optional IPR,is a much newer procedure, if you accept for argument’s sake that reexamination is a correctiveprocedure at all. Thus, over the course of a normal working life, a patent practitioner does nothave or has not yet had the opportunity to deal regularly with one or more of these procedures.

Of the three procedures discussed herein, reissue is the most widely used. Table 6 ofthe PTO’s Annual Report 2000,9 reproduced herein below, shows that, with the exception offiscal year 2000, the number of issued reissue patents has ranged up and down within a band ofslightly more than 240 and slightly under 400 over a 20-year period while, during the sameperiod, the number of utility patents almost doubled.

8 37 C.F.R. §§ 1.97 and 1.98.

9 Available on the PTO web site at http://www.uspto.gov/web/offices/com/annual/2000/.

Table 6.Patents Issued: 1981-2002

(As of September 30 of each fiscal year)

Year Utility* Design Plant Reissue Total1981 66,617 3,882 168 343 71,0101982 59,449 5,299 120 284 66,1521983 54,744 4,401 219 351 59,7151984 66,753 4,935 174 287 72,1491985 69,667 5,058 277 300 75,3021986 71,301 5,202 227 263 76,9931987 82,141 6,158 240 254 88,7931988 77,317 5,740 283 244 83,5841989 95,831 5,844 728 309 102,7121990 88,974 7,176 295 282 96,7271991 91,822 9.386 318 334 101,8601992 99,405 9,612 336 375 109,7281993 96,676 9,946 408 302 107,3321994 101,270 11,138 513 347 113,2681995 101,895 11,662 390 294 114,2411996 104,900 11,346 338 291 116,8751997 111,979 10,331 400 267 122,9771998 139,298 14,420 577 284 154,5791999 142,856 15,480 437 393 159,1662000 164,490 16,719 453 561 182,223

* Includes chemical, electrical, and mechanical applications.

These statistics, which show a relative decline in the number of reissue patents, couldsuggest a number of conclusions, among which is the greatly improved quality in thepreparation and prosecution phases. Alternatively, we may be seeing a lot more paper patentsused primarily for creating “patent thickets.” Whatever the cause, however, no more than one-half of one percent of a patent prosecutor’s docket is likely to be devoted to the pursuit ofreissue patents.

B. History

Without belaboring its long history, reissue’s origins can be traced to an 1832 SupremeCourt decision10 followed by codification in the Acts of 1832, 1836 and 1970. Reissue wasrecognized as an inherent power of the patent-issuing agency (then under the Secretary ofState) for the same invention and the remainder of the original term. The defense of interveningrights was the equitable creation of courts until it was codified in the Patent Act of 1952.

10 Grant v. Raymond, 331 U.S. (6 Pet. 218) (1832).

The defect in the 1832 Grant case was alleged to be a defect in the specification. TheSupreme Court made clear that reissues relate to “the original transaction,” i.e., the date of theoriginal patent. The concept of intervening rights was acknowledged as a potential defense butwas not decided because that defense had not been raised by the defendant.

Section 3 of the 1832 Act specifically acknowledged the right to reissue where there was“inadvertence, accident, or mistake . . . without any fraudulent or deceptive intention.” Inaddition, the concepts of “same invention” and “invalid or inoperative” were first expressed inthat statute. Four years later, the reissue portion of the Patent Act, i.e., Section 13, was furthermodified to state that the invalidity or inoperativeness could be “a defective or insufficientdescription or specification or by reason of the patentee claiming in his specification as his owninvention more than he had or shall have a right to claim as new.” Note that nothing so farprovided for the ability to broaden the claims of a patent, i.e., less “than he had or shall have aright to claim as new.”

The broadening development again took place judicially and again before the SupremeCourt in 1854.11 Reissue now was unable to “restrict or enlarge” a claim. Two later SupremeCourt cases were uncomfortable with this expansion feature,12 but the principle was laterreestablished in Morey v. Lockwood.13

What has proven to be a somewhat thorny issue in more recent times was first putsquarely in Seymor v. Osborne14 with the Supreme Court. The thorny issue is the “sameinvention” criterion which becomes particularly acute when the patentee enlarges the scope ofthe claims. Without using the words “no new matter,” the Court made clear that under the 1836Act, only subject matter which was “suggested or substantially” indicated in the originaldisclosure could be the basis for re-description and re-claiming. This did not include “materialadditions.” This result should not have been surprising to the litigants since Congress hadenacted the 1870 Patent Act with a “new matter” prohibition in Section 53.15

With respect to broadening, the two-year limit emerged as a rule-of-thumb in EdwardMiller & Co. v. Bridgeport Brass Co.16 There the broadened reissue filed after 13 years andinduced by knowledge of a competitor’s product was refused. The prohibition against“recapture” was also applied, likely for the first time, in the Bridgeport Brass case. As ProfessorChisum points out in his treatise, the entire period from 1870 until 1894 saw the Supreme Courtdecide a large number of cases involving broadened reissue patents in which few patents

11 Batten v. Taggert, 58 U.S. (17 How.) 74 (1854).

12 Burr v. Duryee, 68 U.S. (1 Wall.) 531 (1864); Case v. Brown, 69 U.S. (2 Wall.) 320 (1865).

13 75 U.S. (8 Wall.) 230 (1869).

14 78 U.S. (11 Wall. 516) (1871).

15 Act of July 8, 1870, ch. 230, § 53, 16 Stat. 198.

16 104 U.S. 350 (1882). It was here that the Court also created ground for confusion in making adistinction between “mistake” and an “error of judgment”.

survived.17 Parker & Whipple Co. v. Yale Clock Co.18 introduced the troublesome “intent” toclaim or cover requirement that had created problems for broadened reissue applicants well intothe twentieth century.

C. The Current Statutory And Regulatory Reissue Scheme

The basic reissue provision of concern here is Section 251 of the 1952 Patent Act19 andhas remained essentially unchanged since its enactment in 1952:

Whenever any patent is, through error without any deceptiveintention, deemed wholly or partly inoperative or invalid, by reasonof a defective specification or drawing, or by reason of thepatentee claiming more or less than he had a right to claim in thepatent, the Director shall, on the surrender of such patent and thepayment of the fee required by law, reissue the patent for theinvention disclosed in the original patent, and in accordance with anew and amended application, for the unexpired part of the termof the original patent. No new matter shall be introduced into theapplication for reissue.

The Director may issue several reissued patents for distinct andseparate parts of the thing patented, upon demand of theapplicant, and upon payment of the required fee for a reissue foreach of such reissued patents.

The provisions of this title relating to applications for patent shallbe applicable to applications for reissue of a patent, except thatapplication for reissue may be made and sworn to by the assigneeof the entire interest if the application does not seek to enlarge thescope of the claims of the original patent.

No reissued patent shall be granted enlarging the scope of theclaims of the original patent unless applied for within two yearsfrom the grant of the original patent. (emphasis added).

By its very nature, reissue presupposes the existence of error, claiming more or lessthan the PO had a right to claim, no matter how tenuous the mistake. Unlike the predicate forobtaining reexamination (i.e., “a substantial new question of patentability” to be discussedbelow), the filing of a reissue application thus begins with an admission under oath of at leastone defect in the Letters Patent. The mere filing of such a statement should be contemplatedas an invitation for discovery in concurrent or further litigation. The relatively recentsimplification of 37 C.F.R. § 1.175 relating to the requirements for the declaration or oath

17 4 Chisum on Patents, § 15.02[5] at 15-12 et seq.

18 123 U.S. 87 (1887).

19 July 19, 1952, ch. 950, § 1, 66 Stat. 808. The term “Director” was substituted for “Commissioner”in Pub. L. 106-113, § 1000(a)(9), 113 Stat. 1501A-582 on Nov. 29, 1999.

containing the admission of error that accompanies a reissue application may merely obscurewhat will happen during discovery in the event of litigation.20

1. Intervening Rights

Section 252, also reproduced below, completes the statutory reissue picture:

The surrender of the original patent shall take effect upon theissue of the reissued patent, and every reissued patent shall havethe same effect and operation in law, on the trial of actions forcauses thereafter arising, as if the same had been originallygranted in such amended form, but in so far as the claims of theoriginal and reissued patents are substantially identical, suchsurrender shall not affect any action then pending nor abate anycause of action then existing, and the reissued patent, to theextent that its claims are substantially identical with the originalpatent, shall constitute a continuation thereof and have effectcontinuously from the date of the original patent.

A reissued patent shall not abridge or affect the right of anyperson or that person’s successors in business who, prior to thegrant of a reissue, made, purchased, offered to sell, or used withinthe United States, or imported into the United States, anythingpatented by the reissued patent, to continue the use of, to offer tosell, or to sell to others to be used, offered for sale, or sold, thespecific thing so made, purchased, offered for sale, used, orimported unless the making, using, offering for sale, or selling ofsuch thing infringes a valid claim of the reissued patent which wasin the original patent. The court before which such matter is inquestion may provide for the continued manufacture, use, offer forsale, or sale of the thing made, purchased, offered for sale, used,or imported as specified, or for the manufacture, use, offer forsale, or sale in the United States of which substantial preparationwas made before the grant of the reissue, and the court may alsoprovide for the continued practice of any process patented by thereissue that is practiced, or for the practice of which substantialpreparation was made, before the grant of the reissue, to theextent and under such terms as the court deems equitable for theprotection of investments made or business commenced beforethe grant of the reissue. (emphasis added).

Completeness aside, Section 252 requires some consideration by the patent prosecutoreven though its operation and implementation in connection with the monetary and injunctive

20 For a discussion of revised 37 C.F.R. § 1.175, see Shockley v. Arcan Inc., 58 USPQ 2d 1692

(Fed. Cir. 2001). The PTO rules governing reissue are found in 37 C.F.R. §§ 1.171-1.179.MPEP Chapter 1400 provides the “nuts and bolts” guidelines and policies administered by thePTO.

relief provided to POs and the intervening rights accorded to infringers are the province of thecourts, not the PTO, where the infringement is based upon other than a valid “substantiallyidentical” claim found in the original patent.21 Intervening rights, at least of the equitable kind,are not assured.22 What is of concern to the patent practitioner tasked with the responsibility forobtaining a reissue patent with minimal adverse consequences to the PO, however, is thatintervening rights can develop even after filing of the reissue application right up to granting ofthe reissue patent subject, of course, to a district court’s equitable determination.23

The filing of a reissue application, which can be initiated only by the PO, is firstannounced to the world by publication in the PTO’s Official Gazette, and the prosecution of thereissue patent application is thereafter available to the public.24 Even though reissueapplications are, by rule, supposed to be taken up for examination ahead of other applications 25

they can, in fact, take as long or even longer to be reached for initial examination and thereafterto wind their way through the PTO, particularly where continuation applications need to be fileddue to the PTO’s streamlined prosecution procedures and appeal is necessary. It is not at allunusual for a reissue application or continuing application to pend for at least three years.During this pendency period, substantial intervening rights may be accruing against the PO infavor of the public.

Section 252 defines two different types of intervening rights, namely absolute andequitable. Absolute and equitable intervening rights are separate and distinct affirmativedefenses.26 Such rights only attach if the infringer is found to infringe at least one claim in thereissue that is “substantially identical” to a valid claim in the original patent.

Absolute intervening rights cut off the PO’s right to injunctive relief with regard to a“specific thing” made, purchased, offered for sale, sold or imported prior to the grant of thereissue. Equitable intervening rights could have a similar effect with regard to specific thingsmade, purchased, offered for sale, etc., of which substantial preparation was made before thereissue patent grant date. That is, a PO may be forced to provide a compulsory license. Here,

21 Kaufman Company Inc. v. Lantech Inc., 1 USPQ 2d 1202 (Fed. Cir. 1986).

22 For example, the infringer is not assured that intervening rights will attach in the absence, forexample, of good faith or reliance on the patent’s infirmity or willfulness of the infringement. See,Allied Tube and Conduit Corp. v. John Maneely Co., 57 USPQ 2d 1329 (D.C. Ariz. 2000); QuadEnvironmental Technologies v. Union Sanitary District, 17 USPQ 2d 1667 (N.D. Cal. 1990);Rohm and Haas Co. v. Mobil Oil Corp., 3 USPQ 2d 1619 (D. Del. 1987).

23 The contours and difficulties in the making of that determination are discussed at length in the oft-cited opinion of circuit Judge Davis in Seattle Box Company, Inc. v. Industrial Crating andPacking, Inc. 225 USPQ 357 (Fed. Cir. 1985).

24 As of March 1, 1977, reissue files were opened to the public for inspection as set forth in 37C.F.R. § 1.11(b). The public can even attend oral hearings in connection with reissueapplications and reexamination before the Board of Patent Appeals and Interferences.

25 37 CFR § 1.176(a).

26 Windsurfing Int’l Inc. v. Fred Ostermann GmbH, 2 USPQ 2d 1318 (S.D.N.Y. 1987); UnderwaterDevices Inc. v. Morrison-Knudsen co., 219 USPQ 569 (Fed. Cir. 1983).

however, it is up to the court to determine what is fair for the protection of investments made orbusiness commenced before the reissue patent grant.

Thus, a PO who seeks to reissue and its representative have to proceed with interveningrights looming as a potentially large problem. Reissue claims that are broadened will almostcertainly allow some form of intervening rights to attach, absent infringement of a reissue claim“substantially identical” to an original claim or some other factor such as bad faith. The resultmay well be the above-mentioned compulsory license to the infringer rather than the prospect ofinjunctive relief. The relative paucity of instructive intervening rights case law and an open-ended statutory provision in the form of Section 252 do not aid an analysis of the adverse risksby the PO who considers reissue (or, for that matter, reexamination). Even with regard tonarrowed claims, Section 252’s language may not preclude the attachment of intervening rightsin certain circumstances. The cases do not clearly speak to this issue. It may be, for example,the substantiality of the narrowing amendments that will be determinative. At the moment, wehave no “bright line” rule on narrowing reissues. There is some risk in reaching the conclusion,at the outset of a narrowing reissue process, that some form of intervening rights will not attach.

Thus, the discussion of reissue and consideration of whether it should be invoked tocorrect an error begins on a negative note. If the time which elapsed between filing and reissuepatent issuance were de minimus, all other things being equal, consideration of interveningrights should not constitute a major input in the decision to file a reissue where infringement hadnot already occurred. The very act of opening the files to public inspection is, however,intended to give interested members of the public an opportunity to submit to the examinerinformation pertinent to patentability of the reissue application.27 This can take the form of priorart citations and rare protest proceedings.28 The PO has no control over these events.

The well-timed filing of a substantial list of prior art, through a strawman rather than thereal party in interest, could thus serve, at least in some cases, to slow down the prosecutionprocess considerably. Less theoretical is the delay caused by examination backlogs in “hot”technology areas and the extra level of review given to reissue applications. This occurs at thebeginning and end of the examination process, there being an initial examiner review 29 andultimately monitoring and review by the Office of Technology Centers Special ProgramExaminer.30 In addition, the entire case, including all of its claims, is subjected to reexaminationon any grounds.31

2. Written Description As An Impediment To Broadening

Reissue is to be preferred by the PO over reexamination to the extent that the scope ofthe claims are to be broadened or enlarged in any way, including the claiming of a new category

27 MPEP § 1470.

28 37 C.F.R. § § 1.291-92.

29 MPEP § 1443.

30 MPEP § 1456.

31 Henkl Corp. v. Coral Inc., 21 USPQ 2d 1081 (N.D. Ill. 1990).

of invention such as a method. The reissue route has been regularly employed by POs tobroaden claims to read on design-around competitive products where the particular embodimenthas not been disclosed. That is, more generic claims have been submitted to eliminateunnecessary limitations based upon the principle, particularly in mechanical and electricalcases, that only a single embodiment is needed to adequately support the broadened claims.

To the extent that the PO seeks broadened claims by way of reissue, it must filebroadened claims, i.e., claims of enlarged scope, with the two-year statutory period. It is notenough that a reissue application was on file in that period, say for correcting the effective date,and then after the period the PO recognizes that the patented claims are too narrow. Theenlarged claims must be presented for the first time within that period.32

Of course, claims in a reissue application that are not identical to the original patentclaims are not necessarily broader (or enlarged) in scope.33 This claim construction issue israised in two contexts, the first being the two-year rule and the second being the recapture rule.Claims that are broader in some respects and narrower in other respects may avoid theoperation of both rules if they do not seek to reclaim what was earlier surrendered or enlargethe scope of the original claims.34 In either case, the patent prosecutor seeking to avoidbroadening and/or recapture prohibitions must be prepared to demonstrate that, under standardclaim construction principles, the claim presented in reissue seeks neither to broaden (when firstpresented outside the two-year period) nor to recapture. Unless there is a different strategy inmind, this issue should be thoughtfully considered during prosecution and not left for resolutionlater in a courtroom.

Although the broadening procedure to capture very different types of products ormethods has generally met with success in the past, two 1998 Federal Circuit decisions haveraised serious questions regarding the validity of such broadened claims where the disclosuredoes not appear to support those claims.35 Neither case involved a reissue, but the writtendescription require principles announced in those cases would appear to be equally applicableto broadened reissue claims.36 A more complete discussion of the problems raised by TheGentry Gallery and Tronzo cases is more properly left to the crafting and prosecution of theoriginal patent application, a stage at which future problems can best be minimized. Theimportant point here is that a court is not likely to allow claims to be broadened based upontenuous disclosure arguments when the objective evidence is that the PO did not contemplateand adequately describe the broadened subject matter now claimed to be part of its invention.

32 In re Fotland, 228 USPQ 193 (Fed. Cir. 1985).

33 See, e.g., Tillotson Ltd. v. Walbro Corp., 4 USPQ 1450 (Fed. Cir. 1987).

34 Mentor Corp. v. Coloplast Inc., 27 USPQ 2d 1521 (Fed. Cir. 1993).

35 Tronzo v. Biomet, Inc., 47 USPQ 2d 1829 (Fed. Cir. 1998); The Gentry Gallery Inc. v. TheBerkline Corp., 45 USPQ 2d 1498 (Fed. Cir. 1998).

36 To meet the “written description” requirement of 35 U.S.C. § 112, ¶ 1, the application disclosuremust reasonably convey to one skilled in the art that the inventor possessed the later-claimedsubject matter at the time the parent application was filed in order to be entitled to the benefits ofU.S.C. § 120. Vas-Cath, Inc. v. Mahurkar, 19 USPQ 2d 1111, 1116 (Fed. Cir. 1991).

In deciding whether to seek a broadening reissuance, assuming that the PO is within thetwo-year statutory period, a judgment first must be made that the broader invention is describedin the patent specification in a manner that clearly allows persons of ordinary skill to recognizethat what the PO says was invented is that which is now claimed. That is, the availability ofbroadening may, in fact, be limited as much by the narrowness of the disclosure as it is by thetwo-year period.

3. Recapture As An Impediment To Broadening

Recapture of subject matter previously and deliberately surrendered is not possible withreissue (or, for that matter, is it likely through reexamination). On one hand, the reissue statutepermits broadening within the two-year period following issuance of the original patent. On theother hand, however, claims that were narrowed to overcome the prior art cannot repudiate byway of reissue the limitations introduced into the original patent claims.

Although articulation of the recapture doctrine is easy, the application of that doctrine ismuch more difficult. Determining enlargement of the scope of a claim is not a precise science.The task becomes all the more difficult when one element of a claim is broadened and anotherelement is narrowed, thereby possibly leaving the claim with the same scope. The complexity isfurther increased by the fact that arguments alone can result in surrender.

Circuit Judge Mayer’s opinion in In re Clement37 attempted to set out a three-step test forapplying the recapture doctrine. The first step is to determine whether and in what aspect thereissue claims are broader than the patent claims. The second step is to determine whether thebroader aspects of the reissue claims relate to surrendered subject matter. The third step is tothen determine if surrendered subject matter has “crept into” the reissue claims.38 Even withthis approach, however, the drafter of reissue claims may not have sufficiently clearly definedboundaries when submitting either amended or totally new reissue claims. A claim thought tobe narrowed could conceivably be deemed to recapture surrendered material when the claimscope, as a whole and given its broadest reasonable construction, is examined.39

Rejection based upon the recapture doctrine is common. In fact, given the simplificationof reissue practice through recent rule changes as they relate to oaths or declarations,recapture seems to have become one of the favored grounds for challenging reissue claims.Very often the basis for the rejection arises from the Examiner’s Reasons for Allowance in theoriginal patent made at the end of prosecution. At the examination level, the approach seems tobe that such reasons define what the PO has surrendered. The Board of Patent Appeals and

37 45 USPQ 2d 1161 (Fed. Cir. 1997).

38 Id. At 1164.

39 Although the recapture doctrine does not appear to have been specifically applied toreexamination to the knowledge of the author, it may be that recapture will be used there as wellwhere a claim element is broadened but the overall claim scope is not enlarged and perhapseven narrowed with regard to other elements. See, for example, Quantum Corp. v. Rodime, PLC,36 USPQ 2d 1162 (Fed Cir. 1995).

Interferences has largely rejected this approach,40 but it or a variant is one that patentpractitioners will likely continue to encounter at the PTO.

4. The Continuing Duty To Disclose

The filing of a reissue application also reimposes upon the PO the duty to disclose allinformation material to the patentability of the claims, not merely those admitted to bedefective.41 To the extent that the original patent is already involved in litigation wherediscovery has occurred or a deeper investigation has occurred in contemplation of litigation, thePO must have a heightened sensitivity to the disclosure of material information relating to anydefense that might invalidate one or more claims in the reissue application.

On one hand, this sensitivity must include non-patent prior art such as public use or on-sale bars. The presence of such information and, more importantly, the use to which it may beput by the examiner based upon a paper record, should give the PO some hesitation in seekingreissue when it is already aware of the existence of that type of prior art which an examinerdoes not normally consider and may not be trained to evaluate critically. Moreover, the group ofindividuals having that duty is likely to include many of those involved in parallel litigation. It isthe patent prosecutor who must keep the duty of disclosure in the forefront when faced with arecord developed in litigation.

On the other hand, the PO and its counsel must be mindful of obeying protective ordersobtained in litigation to maintain confidentiality of sensitive information. Although it is veryunlikely that an accused infringer in district court litigation would object to the production ofmaterial information that could adversely impact the patent, or that it would be successful inpreventing such disclosure, nevertheless, the patent prosecutor must be alert to the need toobtain the relevant information and to the limits of the protection afforded a third party’s materialby the court order. Likewise, the patent prosecutor must not undertake any filings that mightinadvertently waive attorney-client or work-product privileges, or that might even create theissue.

The most compelling cases for reissue would appear to be for broadening andadministrative but substantive error such as failure to claim the benefit of earlier effective filingdates. In terms of broadening, the most compelling case would be the inclusion of a differentstatutory category of invention clearly described but not claimed in the original patent.42

Broadening claims in the same class of subject matter to cover embodiments arguably notadequately disclosed or suggested runs the Gentry Gallery risk that will be discussed more fullylater in the seminar.

Given the complexities of patent prosecution today and the ever-continuing changes to“internationalize” the American patent system, an eye should also be kept on reissue as a wayof correcting administrative errors that have substantive impact. For example, many patentprosecutors were or even now are aware that, with respect to patent applications having a U.S. 40 Ex parte Yamaguchi, 61 USPQ 2d 1043 (Bd. Pat. App. & Int. 2001).

41 37 CFR § 1.56.

42 For example, claiming a biotechnology process as provided for in 35 U.S.C. § 103(b).

filing date before June 8, 1995 (these applications having a patent term the longer of either 17years from issuance or 20 years from filing), POs gave up that option by filing what was knownas Rule 53(d) continued prosecution application instead of a File Wrapper Continuationapplication (which is no longer available), a Rule 53(b) application or a regularly filedcontinuation application. Depending upon the pendency of the original application, virtually theentire remaining 20-year term could have been inadvertently dedicated. Is this a situationcorrectable by reissue? This is just one example of an instance where reissue could beconsidered as a remedial tool.

III. Ex Parte Reexamination (EPR)

Unlike reissue, EPR is equally available to POs and TRPs who can establish a“substantial new question of patentability” based upon patents and printed publications.43

Because reexamination is permissive, however an accused infringer cannot be compelled by acourt to institute a reexamination proceeding.44 It is, however, reasonable to expect that a courtwill stay the proceedings in favor or reexamination on grounds that the PTO has particularexpertise, the reexamination avoids discovery problems and, if litigation is still necessary afterthe reexamination, it will be considerably streamlined and costs reduced.45 Of course, anotherfactor will be when the request for a stay is made in the litigation. The earlier it is made, themore likely it is to be granted. The PTO does not have a stay option because its statutory taskis to proceed with reexamination using “special dispatch.” In the absence of a district court stay,the patent prosecutor may see directions coming from the court with respect to conduct of thereexamination.

The statutory threshold for establishing “a substantial new question of patentability,” forboth EPR and IPR, is the existence of patents and patent publications in determining if there issuch a question. Of course, the citation of such prior art does not preclude the use of other non-patent and non-publication evidence in determining if there is such a question. For example, aPO’s admission against interest in the patent file or in a court record can be used in combinationwith the required patent or printed publication prior art.46 In light of last November’s legislation,including the overruling of In re Portola Packaging, Inc.,47 that prior art now includes patents andprinted publications previously considered by the PTO.

43 The PTO Director may also do so on his own initiative under 35 U.S.C. § 303 as was done with

the infamous “Method of Swinging On A Swing”, U.S. Patent No. 6,368,227 on May 21, 2002.

44 In re Continental General Tire, 38 USPQ 1365 (Fed. Cir. 1996).

45 Softview Computer Prod. Corp. v. Haworth Inc., 56 USPQ 2d 1633 (S.D.N.Y. 2000).

46 Total Containment, Inc. v. Environ Prod. Inc., 921 F. Supp. 1355, 1370-71. (E.D. Pa 1995), aff’d,106 F. 3d 427 (Fed. Cir. 1997) (non-precedential).

47 42 USPQ 2d 1295 (Fed. Cir. 1997), reh’g denied, 44 USPQ 2d 1060 (Fed. Cir. 1997).

Once the reexamination has been initiated after making the initial determination, theexaminer can, however, also utilize other evidence such as a PO’s admission against interest incombination with Section 301 prior art.48

Section 305 of the Patent Act governs the conduct of reexamination proceedings oncethere has been a determination by the Director under Section 304 that a substantial newquestion of patentability has been raised. In this and the following stages of EPR, a TPR has noparticipation whatsoever. The PO is free to amend the claims in reexamination and to pursueclaims that are of equivalent scope to those in the Letters Patent or sufficiently narrow to defineover the prior art while still covering known accused products or process. During examination,the issue of double patenting can be raised.49 The PO has the opportunity to discuss the casewith the examiner. The only appeal right denied to the PO under Section 141 is a Section 145appeal to the U.S. District Court for the District of Columbia. A TPR has no appeal rightswhatsoever although appeal proceedings, including those before the Board of Patent Appealsand Interferences, are open to the public.

EPR is widely considered a weapon of the PO rather than a shield for the TPR. SomePTO statistics may bear out the disfavored nature of this proceeding from a TPR’s point of view.For example, Table 13 of the PTO’s Annual Report 2000 shows the following:

Reexamination 1996-2000

(As of September 30 of each fiscal year)

Activity 1996 1997 1998 1999 2000Requests filed, total 418 376 350 385 318 By patent owner 194 157 168 173 137 By third party 223 215 178 181 172 Commissioner ordered 1 4 4 31 9Determinations on requests, total 414 391 348 367 338 Requests granted: By examiner 386 357 315 327 320 By petition 8 4 2 1 2 Requests denied 20 30 31 39 16Requests known to have related litigation 89 65 66 62 80Filings by discipline, total 418 376 350 385 318 Chemical 127 123 120 138 96 Electrical 127 100 94 107 103 Mechanical 164 153 136 140 119

There has been an almost linear decline in the number of requests filed even by POs.Only the PTO Director seems to be encouraged by the process. No particular technicaldiscipline seems to disproportionately use, or avoid the use of, reexamination, although the

48 Total Containment, Inc. v. Environ Prod., Inc., supra note 46.

49 In re Lonardo, 43 USPQ 2d 1262, 1266 (Fed. Cir. 1997).

mechanical arts are slightly ahead each year. Perhaps the ambivalence by both POs and TPRsarises from the absence of a real ultimate benefit to either. As noted by Chief Judge Markey inLindemann Maschinenfabrik GmbH v. American Hoest & Derrick Co.,50 courts give only “duerespect” to the examiner’s evaluation of prior art without being bound thereby. Thus, its lowercosts may not, on balance, outweigh its perceived infirmities.

Older PTO reports, e.g., the 1994 annual report, suggest that very few reexaminedpatents were completely rejected with no claims remaining after reexamination.51 Thus, inaddition to the filing and granting of an EPR request not being probative of invalidity in law,52 it isnot likely, in fact, to result in the invalidation of questionable patents.

Unlike reissues, a reexamination proceeding can take place after expiration of thepatent. It is sufficient that the expired patent be within the period of enforceability for purposesof obtaining a damage award. That period is six years following patent expiration. Once thepatent has expired, however, it is no longer possible to narrow the scope of any claim beingreexamined.53 Consequently, the value of seeking reexamination, even within three or fouryears from the end of a patent’s life, may be greatly diminished.

Unlike normal examination of a regular, non-provisional utility application, the PO in anEPR, or a TPR in an EPR or IPR, could find itself in a position where both the reexaminationproceeding and court litigation will be proceeding along parallel tracks simultaneously. This willlie exclusively within the province of the district court to determine whether a stay of the civillitigation is appropriate. The PTO has no authority to stay reexamination proceedings which, bystatute, must be conducted with “special dispatch.”54 Of course, once a reexamination isinitiated there is a reasonably good reason to believe that civil litigation which has notproceeded near or to trial will be stayed. Nevertheless, the pendency of litigation, particularly amature case, raises the risk that parallel proceedings may take place.

As in reissue, the PO in an EPR – as well as in IPR – is not relieved of the duty ofdisclosure. In reexamination, however, that duty is limited to Section 301 prior art, i.e., patentsand printed publications. Nevertheless, the patent prosecutor must be sure to include any suchprior art that may be discovered during the course of parallel litigation. In addition, discharge ofthat duty may require inquiry of other categories of individuals who are outside the normalchannels involved in preparation and prosecution of the original patent.

50 221 USPQ 481,487, n.5 (Fed. Cir. 1984).

51 Hoechst Celanese Corp. v. BP Chem. Ltd., 78 F. 3d 1575, 1584, n.2, 38 USPQ 2d 1126, 1133,n.2 (Fed. Cir. 1996). 89% of the reexamination requests were granted in fiscal year 1994 withless than 6% being completely rejected.

52 Id.

53 Ex parte Papst-Motoren, 1 USPQ 2d 1655 (Bd. Pat. App. & Int. 1986). With regard to expiredpatent claims, however, the PTO uses a narrow construction rule to preserve as much aspossible the validity of those claims.

54 Ethicon Inc. v. Quigg, 7 USPQ2d 1152 (Fed. Cir. 1988).

There is also, of course, a theoretical possibility that the PTO and a district court couldreach opposite conclusions on the issue of validity of one or more claims. In fact, given thedifferent standards and presumptions used in each forum, such an outcome is more thantheoretical. For example, a district court might first find a claim not to be invalid, with asubsequent PTO decision being the opposite based upon the same patent or printed publicationprior art. That is, the PTO is not bound by the district court’s finding. The opposite, i.e., wherethe district court finds the patent to be invalid, is not true. In that case, the PTO can discontinueits reexamination based upon collateral estoppel principles assuming that the patentee had afull and fair opportunity to litigate the patent’s validity.55

55 Blonder-Tongue Lab., Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971).

IV. Inter Partes Reexamination (IPR)

When we walk to the edge of all the light we haveand take the step into the darkness of the unknown,we must believe that one of two things will happen.There will be something solid for us to stand on orwe will be taught to fly.

-- Frank Outlaw

Although an effort has been made to point out a few important ramifications of reissueand reexamination, the effort is both easier and harder for IPR. It is easier in the sense that theMPEP does not specifically address IPR issues. The statute is relatively new, and theamendments thereto made in 2002 and implementing regulations are newer still. Less than adozen IPR proceedings have been initiated to date. No case law exists. The effort is alsoharder because anything we say about its efficacy and potential problems is pure speculation.

The American Inventors Protection Act of 1999 authorized the extension ofreexamination to IPR. The final rules, final that is until last November, became effective a littleover two years ago. It should come as no surprise, therefore, that so few IPRs have beeninitiated.56

IPR has all of the features of EPR with the following additional safeguards. A TPR isentitled to participate throughout the entire proceeding, up to and including appeal to theFederal Circuit and subject to the limitations prescribed in PTO rules. A TPR can initiate anappeal, not merely participate, in response to the PO’s appeal. Neither party can obtain aninterview with the examiner responsible for the proceeding, the examiner now being differentfrom the one who handled the original examination. In addition, the 2002 legislation, whichexpanded a TPR’s appeal rights to include an appeal to the Federal Circuit, allows the TPR torely on Section 301 prior art that was earlier cited or considered by the examiner but perhapsnot fully appreciated. The downside for the TPR is that the collateral estoppel effect of areexamination determine provided for in 35 U.S.C. § 315(c) is likely to be enhanced by theability to include the additional prior art and to have additional review by an Article III court. The“raised or could have been raised” language of Section 315(c) many prove to be a powerfuldisincentive where litigation cost is not a substantial concern.

The author is unaware of any administrative or judicial decision addressing Section 311et seq. issues. It remains to be seen, particularly in light of expanded appeal rights, if IPR willserve as a substantial alternative to district court litigation as a way of challenging validity atlower cost or continue to be seen as the poor relative to a true opposition proceeding.

Under the circumstances, the remainder of this section briefly addresses potentialweaknesses of IPR and what further revisions might be necessary to improve the procedure.One thing is certain about IPR. It should not be considered as a “correction” tool whose

56 The PTO has published proposed rules to implement changes, among other things, to IPR

pursuant to the amendments made in the 21st Century Department of Justice appropriationsAuthorization Act enacted November 2, 2002. The proposed regulations are found in 68 Fed.Reg. 22343 (April 28, 2003). The written comment period will close on June 27, 2003.

purposes are to be liberally effected as with reissue. The process is not initiated by the PO.IPR can be invoked only by a TPR who has identified itself as the real party in interest and thathas reason, and therefore standing, to challenge the scope of patent claims.

Unlike reissue, the goal of IPR, like that of EPR, is to improve the quality of issued U.S.patents at low cost. That is, reissue in theory is designed to come to the aid of the patentowners, even allowing broadening within the statutory two-year period. IPR, on the other hand,acts to assure that the issued patent, or some narrowed version of it, is a valid exercise ofexclusive rights by increasing a TPR’s level of participation in the process.

IPR represents a compromise between, on the one hand, giving third party requestorsan opportunity to participate in IPR while, on the other hand, minimizing the costs and othereffects of these proceedings on patentees, particularly small businesses and individuals. To besure, Congress took a further step towards greater third party participation when it enacted the21st Century Department of Justice Appropriations Authorization Act (Public Law 107-273) onNovember 2, 2002, by expanding third-party appeal rights and by giving third parties, in bothEPR and IPR proceedings the opportunity to have the PTO consider prior art that had beenpreviously considered. Nevertheless, the general conduct of the IPR proceeding in accordancewith routine ex parte examination procedures has left some to wonder if it really levels theplaying field any more than EPR did twenty years ago.

Where are the major flaws in IPR? One weakness would appear to be the inability toinitiate such a proceeding where, such as in the case of emerging technologies, seriousquestions concerning enabling disclosure, rather than prior art, are present, as was the case inthe early phases of biotechnology development. EPR and IPR provide no effective way tochallenge patents whose disclosure to the public is minimal at best and purely speculative atworst. Yet another flaw may be the inability to broaden patent claims as an alternative toseeking refuge in the doctrine of equivalents or a Markman determination in a district courtlitigation. In other words, can a case be made that the reissue and reexamination processesshould be combined into an expanded “no defect” reexamination process with TPRparticipation, as a way of encouraging POs and TPRs alike to employ the administrativeprocess instead of district court litigation.

Is the current understanding of “prior art” sufficiently broad in order to address otherinformation such as disclosure available on a web site freely available to people of ordinary skillin the art? Even with the “special dispatch” provision in reexamination, should POs haverecourse to an appellate tribunal after a certain amount of time, say a year, in order to removethe cloud over the patent? Does the proposed rule which would prevent a PO in an EPRproceeding from filing an appeal only after final rejection aid in “special dispatch” where two ormore non-final rejections have been made?57

Should not a TPR be assured that an IPR, or even an EPR, will take place without aninitial determination that the request raises a substantial new question of patentability at leastwhen the request is filed within, say, a year or two of the patent’s issuance? Otherwise, in closecases, TPRs may not want to undertake the risk of have the PTO determine that the prior artdoes not raise a substantial new question of patentability in the face of better prior art, the worstof all possible worlds for a TPR.

57 Proposed 37 C.F.R. § 1.191.

Isn’t the IPR proceeding sufficiently infused with public interest to warrant handling at theoutset by an administrative patent judge better trained to weigh competing and conflictingarguments? Both the PO and TPR should have some assurance of technical and legalcompetence given the higher stakes, including the collateral estoppel effect of the process.Shouldn’t the PO be entitled to the presumption of validity of the patent at least where the patenthas been issued for, say, at least two years? Would this not encourage earlier filing of IPRs aswell as EPRs by TPRs?

IV. Conclusion

The law isn’t justice. It’s a very imperfectmechanism. If you press exactly the right buttonsand are also lucky, justice may show up in theanswer. A mechanism is all the law was everintended to be.

-- Raymond Chandler

Reissue and reexamination are clearly imperfect mechanisms that require POs andTPRs to press exactly the right buttons. They may or may not produce justice. Recentdevelopments in post-issuance amendment practice relate largely to the contours of statutoryand regulatory enactments involving reexamination in an effort to make it a viable alternative tolitigation. More particularly, these enactments involve inter partes reexamination and theexpanded rights given to third parties to level the playing field at the administrative level. Littlehas changed in the venerable reissue area except a much more streamlined administrativeprocess which leaves the resolution of possibly major issues concerning “error without anydeceptive intention” to future litigation.

Aside from trivial errors in Letters Patents, questions involving claim scope couldconceivable await resolution in a district court litigation in one of two ways, namely during theprocess of claim construction and in asserting the applicability of the doctrine of equivalents.Unfortunately, the unsettled state of the doctrine of equivalents law in the wake of Festo doesnot make this an easy call. Likewise, even a liberal claim construction at the district court levelis subject to de novo review at the Federal Circuit, which has shown a marked proclivity toreverse district court claim constructions. Other factors such as willful copying may also benecessary to make reliance on equivalents an attractive alternative. The point to remember is,however, that returning a Letters Patent to PTO jurisdiction is not necessarily always the mostprudent course of action, particularly as a patent nears life’s end.

Reexamination, particularly IPR, ought to do more than generally assure the quality ofU.S. patents at lower costs using a subset of prior art and no other substantive grounds forchallenge. Its goal ought to be to more closely balance the rights of POs against the public’sright to practice inventions that are not patentable within the administrative expertise of thePTO. It does not seem unreasonable to argue that, even now with expanded appeal rights, theappropriate balance has still not been struck.

As evidence of the foregoing, some tweaking of the reexamination statute has alreadytaken place after just a few years of the statute’s creation in an effort to alter the balance in thepublic’s favor. More such changes may be forthcoming as experience with IPR grows. Perhapsan “error-free” reexamination procedure is one answer. That is, a return to the “no-defect”reissue days in the context of an inter partes reexamination regime. Although this approach has

a number of things in its favor, it may also blur the remedial purpose of the reissue statute builton 150 years of case law with the policing function of reexamination. Others believe thatreexamination ought to be able to challenge “patent thickets” on grounds other than patents andprinted publications. For example, patents issued in emerging technologies may well have fataldisclosure issues that are more properly challenged by industry than by examiners who do not,in fact, have the requisite skill level. It remains to be seen if reexamination will develop in thatdirection.

Both practices serve very different purposes, and these purposes should be kept clearlyin mind when pursuing one or the other or both. Although each may be available and maybecome especially inviting when infringement issues begin to appear after issuance of theoriginal Letters Patent, reissue and reexamination should be approached with a certainwariness commensurate with the necessary precision. It may be useful to look at them as thelast recourse rather than seeking immediate recourse through them to correct defects or changethe scope of patent claims. There is no substitute for doing the job as precisely as possible inthe first place and then letting courts interpret Letters Patent using the claim constructionjurisprudence developed over two hundred years.