As the Board continues to develop its jurisprudence related to the amendment of patent claims in inter partes review, the Board has repeatedly suggested that patent owners that want to make substantial amendments to the claims should consider filing a petition for ex parte reexamination of their own patents. See, e.g., Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (Jun. 11, 2013) (“If a patent owner desires a complete remodeling of its claim structure according to a different strategy, it may do so in another type of proceeding before the Office. For instance, a patent owner may file a request for ex parte reexamination, relying on the Board’s conclusion of a petitioner’s having shown reasonable likelihood of success on certain alleged grounds of unpatentability as raising a substantial new question . . . .”); Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00066, Paper 24 (Jul. 18, 2013) (“To the extent that [patent owner] perceives the limit for motions to amend to be unfair, [patent owner] is not without remedy. [patent owner] may possibly pursue such additional claims by filing a request for ex parte reexamination or by filing a reissue application.”).

The Board recently provided an additional incentive for a patent owner to attempt this approach when its patent is placed in inter partes review. Under a recent decision, amended or new claims inserted into a patent as part of a reexamination proceeding do not result in a “new patent.” Thus, the one-year bar erected by 35 U.S.C. § 315(b) continues to run from the date of an original suit against an accused infringer. Specifically, in Biodelivery Sciences Int’l, Inc. v. Monosol Rx, LLC, IPR2013-00315, Paper 31 (Nov. 13, 2013), the Petitioner was served with a complaint asserting the patent at issue on September 27, 2011. An ex parte reexamination the patent was requested on January 20, 2012, and a reexamination certificate issued on July 3, 2012. The certificate included an amendment of each of the original claims was amended (either expressly or by virtue of claim dependency) and new claims were added. The petition for inter partes review was filed on June 15, 2013 (after the one-year period provided under section 315(b)). The Board denied “the petition because it was not filed within the one-year period set forth in 35 U.s.C. § 315(b).” “We must decide whether 35 U.S.C. § 315(b) bars a petition filed more than one year after a complaint alleging infringement was served on the petition, even when the petition challenges claims amended by a reexamination certificate issued after service of the complaint. We determine that it does.”

The Petitioner argued that “issuance of the reexamination certificate effectively created a new patent . . . in which none of the claims is substantially identical to the claims of the original . . . patent.” The Petitioner further argued that this new “patent did not exist before July 3, 2012, and has no retroactive effect, due to substantial changes to all claims.” The Board rejected the Petitioner’s “argument that reexamination results in the issuance of a new patent. It does not. A reexamination certificate merely ‘incorporat[es] in the patent any proposed amended or new claim determined to be patentable.’ 35 U.S.C. § 307(a) (emphasis added). The reexamination certificate itself states: ‘The patent is hereby amended as indicated below.’ . . . Accord Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1341-42 (Fed. Cir. 2012) (‘Unlike reissue, reexamination does not result in the surrender of the original patent and the issuance of a new patent.’). The identical reference in §315(b), to . . . ‘the date on which the petitioner . . . is served with a complaint alleging infringement of the patent’ (emphasis added), indicates that the timeliness analysis is to be made with reference to ‘the patent.’”

The Board further rejected the argument that the petitioner did not have a year to evaluate the claims as amended by the reexamination certificate. “This argument is not persuasive, because [Petitioner] had its year to evaluate the claims, as discussed above. That year ended September 27, 2012. [Petitioner] itself manufactured any supposed reduction in its evaluation time by requesting ex parte reexamination.” See also Biodelivery Sciences Int’l, Inc. v. Monosol Rx, LLC, IPR2013-00316, Paper 28 (Nov. 13, 2013).

Thus, based on this decision, it would appear that a request for ex parte reexamination filed by the patent owner while the inter partes review is pending might give a patent owner more than just an ability to amend its claims more freely; it might provide a patent owner with a way to insulate amended or new claims emerging from ex parte reexamination from inter partes review as to parties that it had filed suit against. Whether this strategy might prove successful is yet to be determined. For example, it is unclear whether the petitioner might have had different arguments that it could have made to avoid the effects of section 315(b). It is also unclear whether this same result would have been reached if a third party or the patent owner had filed the request for ex parte reexamination. Finally, it is unclear whether the Patent Office can continue to exercise jurisdiction over a patent that has all of its claims cancelled by inter partes review if the later-filed ex parte reexamination is stayed pending the outcome of the inter partes review. Nonetheless, these recent decisions by the Board regarding section 315(b) might give patent owners some strategic decisions to make when their patents are placed in inter partes review by accused infringers.