Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, Paper 38 (PTAB March 13, 2019) PrecedentialRead more
April 29, 2019
What Do We know?
1. The Patent Trial and Appeal Board (“PTAB”) has clarified that a reissue application or ex parte reexamination request may be filed at any time before issuance of a USPTO certificate cancelling all patent claims or a Federal Circuit mandate finding all claims invalid. https://www.govinfo.gov/content/pkg/FR-2019-04-22/pdf/2019-08022.pdf
2. The reissue “error” requirement (35 U.S.C. § 251) may be satisfied by a patent owner’s previous failure to present narrower claims (citing In re Tanaka, 640 F.3d 1246, 1251 (Fed. Cir. 2011)).
3. The § 315(b) one-year statutory bar triggered by service of an infringement complaint may not apply to newly reissued claims (citing IPR2014-00358, Paper 21, 7-8 (PTAB July 14, 2015); Click-To-Call Techs. v. Ingenio, Inc., 899 F.3d 1321, 1336-37 (Fed. Cir. 2018)).
4. Reissue applications may address all statutory patentability requirements (§§ 101, 102, 103, 112).
5. A patent owner may abandon a reissue application after a favorable FWD but before reissue.
6. Reissue applications are published in the Official Gazette and provide an opportunity for a third party to file a protest (citing MPEP 1441.01).
Observations and Practice Tips:
1. Patent owners should consider the value of filing a reissue application or reexamination request after the PTAB issues a FWD that explains PTAB’s rationale for cancelling originally issued claims based on a full evidentiary record.
2. Patent owners might consider hedging their bets by filing a contingent motion to amend, knowing that if the motion is denied they can still file a post-FWD narrowing reissue application or reexamination request (subject to the Substantial New Question of patentability limits referenced above).
3. Another option for reexamination is to consider filing the request after a PTAB oral hearing but before a FWD, if the Substantial New Question of patentability is based on an instituted ground and patent owner wants the § 315(b) statutory bar to apply to petitioner.
4. According to MPEP 1449.01, if the USPTO issues a certificate cancelling all patent claims, a pending reissue application or reexamination request that contains narrower claims than the cancelled original claims may proceed under certain conditions.