1. Go Back, Jack, Do it Again: Reissue and Reexam Patent Law 4.28.08

2. Ad law aspects of patent law Two primary features: (1) structure of administrative agency itself; and (2) court- agency review We will focus on the latter...

3. Hot issue today Constitutionality of PTO administrative judges’ composition

4. Zurko Fed Cir traditionally applied the “clearly erroneous” standard of review to PTO findings of fact Challenged in this case

5. Standards of review Clearly erroneous is stricter standard, allows more reversals by court, compared to “substantial evidence” standard Traditionally applied by CCPA, and then Fed Cir

6. At 1056 But the difference is a subtle one—so fine that (apart from the present case) we have failed to uncover a single instance in which a reviewing court conceded that use of one standard rather than the other would in fact have produced a different outcome.

7. APA Section 706 Section 706, originally enacted in 1946, sets forth standards that govern the “Scope” of court “review” of, e.g., agency factfinding (what we shall call court/agency review). It says that a“reviewing court shall—... “(2) hold unlawful and set aside agency... findings... found to be— “(A) arbitrary, capricious, [or] an abuse of discretion, or...... “(E) unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute;...

8. Arti Rai

9. Pre-Zurko (“clearly erroneous” standard) Post-Gartside (“substantial evidence” standard) Affirmances5768 Reversals/remands2613 Percentage affirmance 68.7%83.9% From Arti Rai, Duke Law School

10. Reissues Mentor v. Coloplast

11. 251. Reissue of Defective Patents. Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Commissioner shall, on the surrender of such patent…, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

12. Key Provision “through error without any deceptive intention” – Error: mistake, inadvertence – Without deceptive intention No plan to broaden or recapture... Not the result of a strategic decision during prosecution

13. The Commissioner may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents. The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.

14. 251. Reissue of Defective Patents, cont’d No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.

15. Broadening Reissues No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent. “2 Year Rule”

16. A reissued patent shall not abridge or affect the right of any person who …, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, … unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. Intervening rights – section 252

17. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.

18. Reissue Requirements (1) “Error in the patent” and (2) “Error in Conduct”

19. Error in the Patent – Claiming too much (after- discovered prior art) – Not claiming enough (after- discovered competitor product)

20. Some Defects are too Big! Complete anticipation Insufficient disclosure

21. Rules cont’d Error in conduct – Reissue cures only some types of conduct Cannot cure Inequitable conduct, e.g.

22. The two-year period is not based on the priority date but on the issue date. 35 U.S.C. § 251; M.P.E.P. ¶ 1412.03. Accordingly, a broadening reissue may be filed on a continuation or divisional application more than two years after the issue date of the parent patent so long at it is filed within two years of the issue date of the continuation patent.

23. Mentor v. Coloplast Why did Mentor seek a reissue? How did this relate to its litigation strategy?

27. “An attorney’s failure to appreciate the full scope of the invention” is not an uncommon defect in claiming an invention. In re Wilder, 736 F.2d 1516, 222 U.S.P.Q. 369 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985).

28. Mentor v. Coloplast Recapture rule – Only applies to broadened reissue claims Cannot recapture subject matter surrendered in original prosecution Nuanced application: claims broader in some ways than original, narrower than in original

29. Mentor’s initial claims, which did not require the transfer of the adhesive from the outer to the inner catheter surface, were rejected by the examiner. Mentor then added the adhesive transfer limitation and argued that the amended claims should be allowed because “none of the references relied upon actually showed the transfer of adhesive from the outer surface to the inner surface as the sheath is rolled up and then unrolled.” The amended claims were allowed. Mentor then sought and obtained the reissue patent containing claims 6-9.

30. p. 1080 Reissue claim 6, which does not include the adhesive transfer limitation, impermissibly recaptures what Mentor deliberately surrendered in the original prosecution. Specifically, the reissue claims do not contain the limitation that, during rolling and unrolling, the adhesive be transferred from the outer to the inner surface of the catheter.

31. Medrad, Inc. v. Tyco Healthcare Group LP, 466 F.3d 1047 (Fed. Cir. 2006) Failure to submit proper declaration and oath with original reissue was correctable in a second reissue request

32. Reissue vs. Reexam Reissue: available to fix patent for any cause that makes it “inoperative or invalid”; can be broadening (2 yr rule) Only the patentee may request reissue Can be withdrawn by patentee at any time

33. Reexam Can be requested by anyone The types of prior art which may be considered in a reexamination proceeding are limited to patents and printed publications. 35 U.S.C. § 301; 37 C.F.R. § 1.552

34. Traditional (Ex Parte) Reexams Third party participation in a traditional reexamination is limited. If a third party requests reexamination, the patent owner is notified and provided an opportunity to submit a statement in opposition to an order for reexamination. 35 U.S.C. § 302; 37 C.F.R. §§ 1.510(b)(5), 1.530(b).

35. If the patent owner submits a statement, the requestor is given an opportunity to reply. 37 C.F.R. § 1.535. Otherwise, a non-patentee requestor's participation ends with the request for reexamination. However, the patentee is required to serve on the requestor a copy of all papers filed with the Patent Office. 37 C.F.R. § 1.550(e).

36. 35 U.S.C. 301 Citation of prior art. Any person at any time may cite to the Office in writing prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent. If the person explains in writing the pertinency and manner of applying such prior art to at least one claim of the patent, the citation of such prior art and the explanation thereof will become a part of the official file of the patent.

37. Section 302.Request for Reexamination Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of Section 301 of this title. The request must be in writing and must be accompa­nied by payment of a reexamination fee established by the Commissioner of Patents pursuant to the provisions of Section 41 of this title. The request must set forth the pertinency and manner applying cited prior art to every claim for which reexamination is requested. Unless the requesting person is the owner of the patent, the Commissioner promptly will send a copy of the request to the owner of record of the patent.

38. What is required? 303 (a): Within three months following the filing of a request for reexamination under the provisions of section 302 of this title, the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications

39. Quantum v. Rodime

43. Page 1095 Rodime requested reexamination and, during the ensuing proceedings, amended the track density limitation from “at least 600” to “at least approximately 600” tpi

44. 35 U.S.C. § 305 states, in relevant part, that “[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding.”...

45. The term “at least approximately 600 tpi” therefore defines an open-ended range starting slightly below 600. Since the amended limitation includes subject matter not covered by the original claims, i.e. track densities below 600 tpi, we conclude that Rodime expanded the scope of their claims during reexamination in violation of 35 U.S.C. § 305.

46. Inter partes reexam Rationale Complaints Reform?

47. Patent Quality Control ex parte inexpensive inter partes Administrative Patent Revocation? expensive inter partes moderately inexpensive low quality high quality good quality

48. Complaints, reform Under Section 315(c) of the Patent Act, a third party that requests inter partes reexamination is estopped from later raising the same issues in a court proceeding. The proposed Patent Act of 2008 would change the estoppel provision and would allow inter partes reexams to apply to all patents (rather than only those filed since 1999).

49. On the increase? Year Ending: Number of Filings June 30 2002: 4 June 30 2003: 18 June 30 2004: 26 June 30 2005: 52