Unsuccessful Post Grant Challenge Precludes Only New Requests For Patent Reexamination

As discussed yesterday, the final rule package for Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act (AIA) revised the rules for ex parte patent reexamination. The revisions were made to account for the new “office estoppel” provisions of Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP).

The office estoppel of the new proceedings mandate that an unsuccessful petitioner, real party in interest, or privy may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that prior post grant proceeding. 315(e)(1); 325(e)(1). Yesterdays discussion detailed how the USPTO will determine the applicability of office estoppel to anonymous reexamination filers.

Another issue presented in the proposed rules, was the meaning of “request or maintain” as used in the statutes. Initially, the USPTO proposed that an unsuccessful post grant filer could not request a new reexamination, and existing reexaminations of the same petitioner/privy would be vacated, or not “maintained.” Proposed Rule 1.510 However, comments submitted to the USPTO in response to the rule proposal pointed out that it s the Office and not the requester of the ex parte reexamination (EXP) that “maintains” the proceeding. In response to these comments, the USPTO dropped this aspect of the proposed rule, perhaps highlighting another technical defect in the AIA.

It is true that a third party requester does not maintain an EXP proceeding that is conducted between a Patentee and the USPTO. Technically speaking, the same could even be said for inter partes patent reexamination (IPX). There will likely be some IPX proceedings that will be ongoing after the first post grant proceedings conclude. Under the statute it would seem that an unsuccessful petitioner would have to cease active participation, however the Office would continue to conduct the proceeding in an ex parte fashion. (as is the case now when requesters discontinue participation)

By adding the words “or maintaining” to the statute, Congress was clearly trying to capture more than just new request filings. So, it would seem that the statute would need to be tweaked to capture the intent of Congress. In the meantime, this loophole may be exploited as a tool for gamesmanship.

For example, one strategy to exploit the loophole would be to file “piggyback” ex parte reexamination filings with every post grant trial petition. In other words, at roughly the time of the patentees preliminary statement, an ex parte filing would be submitted that would include additional art left out of the filing made two months earlier. (perhaps as a result of page limits). The decision on the post grant filing and EXP filing would be due in roughly the same 3 month time frame. In this way, neither filing would theoretically preempt the other (i.e., cumulative) as they would be decided in the same time frame; one by the Patent Trial & Appeal Board, the other by the Central Reexamination Unit. Once granted, if permitted to proceed, the EXP filing would proceed on a slower track, thus ensuring that a “Plan B” would be “maintained” should the faster post grant filing prove unsuccessful.

Of course, AIA statutes 315(d) and 325(d) provide that the Director may determine the manner in which the [post grant trial proceeding] or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding. Thus, to avoid gamesmanship, the USPTO could liberally exercise the power to transfer/consolidate parallel requests of the same petitioner, and to terminate any filings submitted by the same petitioner after the post grant trial is ordered. Yet, this solution would essentially combine issues accepted under the old SNQ standard in EXP together with those reviewed under the heightened reasonable likelihood of prevailing (RLP) or More Likely Than Not (MLTN) post grant standard. Likewise, it woud be a clear end around the page limits for post grant trial proceedings.

Tough call until such filings are discouraged by estoppel.