Greg H. Gardella Ex Parte and Inter Partes Reexamination Tactics AIPLA 2010 Winter Institute

2 Overview of Tactical Decisions Choosing Between Ex Parte and Inter Partes Content of the Request for Reexamination Patent Owner’s Statements (Ex Parte) Responses to Office Actions Interviews Information Disclosure Statements Appeal

3 Choosing Between Ex Parte and Inter Partes Inter Partes generally preferred –“No interview” rule, participation rights, appeal rights – Estoppel applies only after Fed.Cir. appeal, only to certain types of validity defenses – Impact on decision to stay litigation Ex parte may be preferable in some instances –Anonymity –Joint defense groups –Prior art search still underway

4 Overview of Tactical Decisions Choosing Between Ex Parte and Inter Partes Content of the Request for Reexamination Patent Owner’s Statements (Ex Parte) Responses to Office Actions Interviews Information Disclosure Statements Appeal

5 Content of the Request for Reexamination Anticipation v. Obviousness Number of Proposed Rejections Specific identification and explanation of “combined system” Expert declaration explaining rational for, operation of combined system, lack of nexus

6 Content of the Request for Reexamination MPEP, BPAI holdings and related authority are generally more persuasive –2010 KSR Guidelines Update Patent Owner statements/admissions –If in litigation, can be the basis for a Substantial New Question of patentability or a rejection

7 Overview of Tactical Decisions Choosing Between Ex Parte and Inter Partes Content of the Request for Reexamination Patent Owner’s Statements (Ex Parte) Responses to Office Actions Interviews Information Disclosure Statements Appeal

8 Patent Owner’s Statements Ex parte only, occurs after Determination Waiver of Patent Owner’s Statements PO Statements generally not desirable –Opportunity for Requester to respond, including with declaration evidence – Query whether same position cannot be effectively raised in response to Office Action PO Statements might be helpful to address status as prior art and in other limited circumstances

9 Overview of Tactical Decisions Choosing Between Ex Parte and Inter Partes Content of the Request for Reexamination Patent Owner’s Statements (Ex Parte) Responses to Office Actions Interviews Information Disclosure Statements Appeal

10 Responses to Office Actions Retain your expert immediately Consider the rejections carefully –Inherency, prima facie case issues –Manner in which references were combined –Functionality of hypothetical combined system –Predictability of combination –Secondary indicia

11 Responses to Office Actions Ex parte: Interview examiners as soon as arguments are vetted –Prepare well for examiner interview Submit all claim amendments in response to first action Third Party Comments in Inter Partes –Expert declarations –Alternative manners of, reasons for combining –Rule 948 issues

12 Overview of Tactical Decisions Choosing Between Ex Parte and Inter Partes Content of the Request for Reexamination Patent Owner’s Statements (Ex Parte) Responses to Office Actions Interviews Information Disclosure Statements Appeal

13 Interviews Expert insight v. attorney argument Consider bringing both an expert and an inventor Prepare as you would for an oral argument Bring evidence –E.g., prior art documents that demonstrate legal or factual premise Listen, then recalibrate Ask questions

14 Overview of Tactical Decisions Choosing Between Ex Parte and Inter Partes Content of the Request for Reexamination Patent Owner’s Statements (Ex Parte) Responses to Office Actions Interviews Information Disclosure Statements Appeal

15 Information Disclosure Statements Anything that could be considered inconsistent with an argument for patentability –Examiner’s findings (both US and foreign) –Third party argument (in litigation or otherwise) Unexplained submissions will generally not prevent later reexaminations based on references listed in an IDS –Consider providing summary of key aspects of prior art in order to preclude later reexaminations

16 Overview of Tactical Decisions Choosing Between Ex Parte and Inter Partes Content of the Request for Reexamination Patent Owner’s Statements (Ex Parte) Responses to Office Actions Interviews Information Disclosure Statements Appeal

17 Appeal Achilles’ Heel –Claims for which no prima facie case was made –May cause Office to re-open prosecution Secondary indicia now a factor –Ex Parte Technofirst S.A., 2010 WL (BPAI 2010) Broadest reasonable construction –In re Suitco Surface, Inc. (Fed. Cir. Case No )

Greg H. Gardella Ex Parte and Inter Partes Reexamination Tactics AIPLA 2010 Winter Institute