Amendments Through Reissue or Reexamination During a Pending AIA Proceeding
By: Margaux A. Savee
My previous posts discussed the Board’s new Motion to Amend pilot program for AIA proceedings and the Board’s precedential opinion Lectrosonics Inc. v. Zaxcom Inc., Cases IPR2018-01129, -1130, Paper 15 at 4 (PTAB Feb. 25, 2019) (designated precedential: Mar. 7, 2019) which provides guidance on Motion to Amend practice. But there are other ways a patent owner can amend their claims and preserve their patent outside of an AIA proceeding.
Let’s consider the current amendment practice in reissues and reexaminations, and the interplay with a pending AIA proceeding on the same patent. This blog post summarizes the key takeaway points from the USPTO’s Notice on current amendment practice in reissue and reexamination, pending an AIA proceeding on the same patent.
First, consider your timing when filing a reissue application or a request for reexamination
The Office will consider a reissue application or a request for reexamination any time before, but not after:
(1) the Office issues a certificate canceling the claims (e.g., trial certificate in an AIA proceeding); or
(2) the Federal Circuit issues a mandate that the claims are invalid or unpatentable.
This means that a reissue application or reexamination request can be filed before, during, or even after the AIA proceeding up until either of the above events occur.
The trial certificate mentioned above will issue after either the deadline for filing a notice of appeal has passed (under 35 U.S.C. § 142, 63 days after the date of a Final Written Decision or 63 days after the date of a Decision on a Request for Rehearing of a Final Written Decision), or all decisions or determinations relating to the Federal Circuit appeal are finally resolved.
Notwithstanding the above, the Office will still decide whether to act on the reissue application or the request for reexamination based on the relevant facts and issues.
Next, consider these important points on filing a reissue application or reexamination request pending an AIA proceeding on the same patent
Takeaway points on reissues:
A patent owner may seek to amend its claims through a reissue application. Although 35 U.S.C. § 251 requires an “error” to reissue the patent, that error requirement is satisfied by the applicant’s request for narrower claims. Thus, if you are seeking narrower claims, you are not making any admissions as to patentability of the original claims. See In re Tanaka, 640 F.3d 1246, 1251 (Fed. Cir. 2011).
If the AIA proceeding or Federal Circuit appeal on the same patent ends with results in your favor, you can abandon the reissue application and your original patent remains in effect. See 37 C.F.R. § 1.178(a).
The Office may stay a reissue application pending a Final Written Decision in an AIA proceeding on the same patent.
The one-year bar under 35 U.S.C. § 315(b) does not apply to the reissued patent.
Takeaway points on reexaminations:
A patent owner may also seek to amend its claims through a reexamination proceeding. Prior to issuance of a Final Written Decision, an SNQ may still be established based on the same ground in a pending AIA proceeding on the same patent. However, after issuance of a Final Written Decision, the SNQ presented in the request for reexamination must differ from any question raised in a ground addressed in a Final Written Decision.
Once an SNQ is established on the original claims, an SNQ is not required for examination of amended or new claims.
Unlike reissues, reexamination does not result in surrender of the original patent. Therefore, the one-year bar under 35 U.S.C. § 315(b) still applies on the patent, even if the reexamination results in amended claims. Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1336-37 (Fed. Cir. 2018) (quoting Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1341-42 (Fed. Cir. 2012)).
The Office may stay a reexamination proceeding pending a Final Written Decision in an AIA proceeding on the same patent.
Keep in mind that the reissue or reexamination proceeding may be stayed/suspended pending an AIA proceeding on the same patent
The Board has authority to stay, transfer, consolidate, or terminate a parallel Office proceeding involving the same patent during pendency of the AIA proceeding. 37 C.F.R. §§ 42.3(a), 42.122(a), 42.222(a). The Board will stay a parallel Office proceeding where good cause exists, for example where the parallel Office proceeding is addressing the same or overlapping claims. Stays are evaluated based on the facts and circumstances of the case (factors noted below).
The Patents Organization (the offices under the Commissioner) also may decide to suspend a parallel reissue proceeding sua sponte or by request by petition. 37 C.F.R. § 1.103. The same factors the Board evaluates in deciding to stay an Office proceeding will be considered (factors noted below). However, the parallel proceeding may not be suspended if the AIA proceeding is terminated, there are no significant overlapping issues with the AIA proceeding, or the applicant desires that the application be examined at that time.
The Board considers several factors when determining whether to stay an Office proceeding, including:
Whether the claims challenged in the AIA proceeding are the same as or depend directly or indirectly from claims at issue in the concurrent parallel Office proceeding;
Whether the same grounds of unpatentability or the same prior art are at issue in both proceedings;
Whether the concurrent parallel Office proceeding will duplicate efforts within the Office;
Whether the concurrent parallel Office proceeding could result in inconsistent results between proceedings (e.g., whether substantially similar issues are presented in the concurrent parallel Office proceeding);
Whether amending the claim scope in one proceeding would affect the claim scope in another proceeding;
The respective timeline and stage of each proceeding;
The statutory deadlines of the respective proceedings;
Whether a decision in one proceeding would likely simplify issues in the concurrent parallel Office proceeding or render it moot.
Parties to the AIA proceeding may request authorization to file a Motion to Stay or Motion to Lift a Stay at any time during pendency of the AIA proceeding.
A Motion to Stay will be considered typically after institution of the AIA proceeding and before the filing of a notice of appeal or the time to file an appeal to the Federal Circuit has expired.
The Board may deny institution of the AIA proceeding of the same patent if the parallel Office proceeding is in a more advanced stage and involves overlapping issues.
Lifting a stay or suspension of parallel Office proceedings
The Board considers the following factors for lifting a stay/suspension of a parallel Office proceeding:
Whether factors considered when ordering the stay (i.e., factors indicating good cause) have changed from when the stay was ordered;
Whether the patent owner has requested adverse judgment or canceled all claims at issue in the AIA trial proceeding;
Whether the patent owner is requesting rehearing or appealing the Final Written Decision in the AIA trial proceeding to the Federal Circuit;
Whether the patent owner agrees to abide by the estoppel provisions set forth in 37 C.F.R. § 42.73(d)(3) (i.e., not obtain a claim patentably indistinct from a claim cancelled or found unpatentable during an AIA trial proceeding); and
Whether lifting the stay would be in the interests of the efficient administration of the Office and integrity of the patent system.
The stay of a parallel Office proceeding will remain in place until the time to file an appeal to the Federal Circuit has expired.
The Patent Owner can move to lift the stay after the Board issues a Final Written Decision (and after any Requests for Rehearing are resolved), or if the patent owner proposes amendments in the parallel proceeding in a meaningful way not previously considered by the Office, such as narrowing the scope of the claims considered in the AIA proceeding or attempting to resolve issues identified in the Final Written Decision. The Patents Organization may also lift a suspension for the same reasons; that is, if the patent owner attempts to resolve issues with the original or proposed substitute claims identified in the Final Written Decision, or to correct an unrelated issue with the patent.
If the Federal Circuit appeal of a Final Written Decision remains ongoing when allowable subject matter is identified in the reissue application, the Office typically will not pass that application to allowance until the Federal Circuit appeal concludes. After conclusion of the Federal Circuit appeal, the patent owner may confer with the examiner to decide how to proceed with the reissue application (e.g., proceed with issuance, file an RCE, or abandon the application).
The Office may issue a NIRC even if the Federal Circuit appeal is still pending, unless the patent owner files an appeal of the reexamination proceeding. To ensure that the NIRC does not cancel an original claim that is pending before the Federal Circuit, the patent owner should file an appeal of the reexamination proceeding to keep it pending.
 See, e.g., CBS Interactive Inc. v. Helferich Patent Licensing, LLC., Case IPR2013-00033, Paper 15 (PTAB Nov. 6, 2012) (order to stay a concurrent reexamination); Stride Rite Children's Group, LLC v. Shoes By Firebug LLC, Case IPR2017-01810, Paper 23 (PTAB Jul. 12, 2018) (order to stay a concurrent reissue). See also, e.g., Arctic Cat, Inc. v. Polaris Indus., Inc., Case IPR2015-01781, Paper 78 (PTAB Sept. 25, 2018) (denying stay because of meaningful distinctions between issues raised in a reexamination and an IPR); Acrux DDS Pty, Ltd. v. Kaken Pharma. Co. Ltd., Case IPR2017-00190, Paper 11 (PTAB Mar. 1, 2017) (denying stay requested prior to trial institution); Mastercard Int’l. Inc. v. D'Agostino, Case IPR2014-00543, Paper 14 (PTAB October 2, 2014) (denying stay because a Notice of Intent to Issue a Reexamination Certification already had been entered in the co-pending reexamination); cf. Ultratec, Inc. v. Sorenson Comm’ns, Inc., No. 13-cv-346-bbc, 2013 WL 6044407, at *2-3 (W.D. Wisc. Nov. 14, 2013) (assessing some of the same factors in determining whether to stay district court litigation in light of pending inter partes review petitions).
 See, e.g., Sienna Biopharmaceuticals, Inc. v. William Marsh Rice Univ., Case IPR2017-00045, Paper 54 (PTAB Jun. 4, 2018) (lifting a stay of an ex parte reexamination); see also, e.g., Unified Patents Inc. v. Heslop, Case IPR2016-01464, Paper 14 (PTAB Feb. 23, 2017) (denying request to lift stay where similar, if not identical, issues in the inter partes review would needlessly duplicate efforts within the Office); CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case IPR2013-00033, Paper 19 (PTAB Dec. 20, 2012) (denying request to lift stay due to overlapping issues and the conduct of parallel proceedings would burden the Office and the parties).