Prior to the AIA, some patentees would preemptively challenge their own patents in an ex parte reexamination proceeding in the hopes of staving off an imminent inter partes reexamination challenge. The thinking was that since the challenge was inevitable, it made more sense to choose the ex parte proceeding as statistically more favorable to patentees. In essence the patent owner would rush in with art identified by an opponent so that a later presentation of the same art by the opponent in an inter partes reexamination filing would be deemed cumulative— and in some cases it worked.
For patentees facing the imminent threat of a new AIA filing (IPR, PGR, or CBM) is this tactic still effective?
Preliminary indications are that the PTAB is nowhere near as strict on the concept of cumulativeness as the Central Reexamination Unit (CRU), and has stayed earlier filed ex parte proceedings in favor of later filed PTAB proceedings. Yet, there some fact patterns would that still warrant a first filed ex parte filing.
One such example would be where an opponent informs a patentee of certain art that may also be used as an inequitable conduct defense. In such a scenario, if the art could not be avoided under the USPTO’s more liberal standards absent amendment (i.e., a “but for” showing of materiality), prudent patentees will quickly avail themselves of a largely unused aspect of the AIA, supplemental examination (SE).
SE is one of the new post grant mechanisms of the AIA that you don’t hear much about. SE was envisioned by Congress some years back as a way to effectively cure inequitable conduct via a USPTO proceeding (which was never before possible). In the years prior to Therasense, when inequitable conduct was alleged and entertained in almost every patent assertion, SE would have been a wildly popular option. Post-Therasense, courts require a near impossible intent showing as well as “but for” materiaility, and at a much higher transaction cost. For these reasons, absent egregious circumstances, patentees are foolish to even consider a SE in all but the most extreme of circumstances. As no surprise, the demand for SE has been tepid and will remain so.
Still, for those few patentees faced with the rare scenario outlined above, a quick SE filing prior to an opponent’s inter partes challenege (IPR, PGR, CBM) will provide a significant benefit. That is, even if the PTAB stay of the earlier filed SE is inevitable, they are unlikley to do so prior to issuance of the SE certificate (statutorily mandated). Once issued, the patentee will have the freedom to amend their claims in the later filed IPR/PGR without fear of the demonstrated “but for” materiality of the alleged art (assuming certain exception do not apply, See 35 U.S.C. § 257 (c)). This is the value of the SE certificate that is issued within 90 days of filing.
While this sceanrio may seem far fetched, there is at least one example already on the books. 96/000,007; (IPR2013-0122, Invue Security Products Inc. v. Merchandising Technologies Inc.)