…may be to not amend in a post-grant proceeding. We have previously written about the difficulties, and low success rates, of amending patents in a post-grant proceeding, and suggested reissue as an alternative pathway to amendments. American Express v. Signature Systems, LLC, CBM2015-00153 (paper 17) demonstrates that a patent owner could also use supplemental examination to make claim amendments—even if a petition challenging the patent is filed. 

In American Express, the patent owner, apparently fearing that its infringement suit would draw a CBM challenge to its patent, filed for “supplemental examination” to have the Patent Office weigh-in on a key issue in that suit. By the time the PTAB issued a decision on the accused infringer’s later-filed CBM petition, the patent owner was able to amend its claims via supplemental examination. As a result, the PTAB did not institute CBM review; the challenged claims no longer existed, leaving the patent (with amended claims) in force.

Supplemental examination is rarely used, only about 40 times a year. It was created so that a patent owner can get a quick read from the Patent Office on the validity of an issued patent, with a decision within 3 months on whether new information would have made a difference to patentability. If so, there is a quick transition to a reexamination, where the patent owner can amend the claims.

The speed of the proceeding worked to the patent owner’s benefit in American Express. The patent owner filed suit in January 2015. The patent owner then asked the Patent Office for supplemental examination in March, providing as “new information” the Supreme Court’s decision in Alice relating to unpatentability of abstract ideas. By April, the Patent Office had already determined that Alice raised new questions of patentability for this patent, and by May had ordered reexamination of the patent. Shortly after the accused infringer filed its petition for CBM review in June, the patent owner presented claim amendments in the reexamination. In November, a certificate was issued in the reexamination, indicating the amended claims were patentable. When the PTAB prepared its decision in December, the claims it had been asked to review no longer existed and it declined to issue an advisory opinion on them, instead denying institution.

Takeaways – Patent owners faced with a post-grant challenge to their patents should consider all options if claim amendments are necessary, even rarely used procedures like supplemental examination. Timing can be critical. In this case, the patent owner requested supplemental examination so early that, by the time it came for the PTAB made its first substantive decision in the CBM, the amendments were a done deal. Otherwise, the PTAB might have exercised its discretion to stay or merge the supplemental examination with the CBM. However, making amendments should be approached cautiously, as they significantly affect a patent owner’s overall strategy. Whether the amendments successfully preserved validity of the patent while retaining the patent owner’s infringement case will be key to whether the patent owner can reactivate its enforcement efforts.