Parallel Litigation And Inter Partes Review: Don't Forget About Reissue

Inter partes review ("IPR") was introduced by the America Invents Act ("AIA") to provide a trial-like proceeding for challenging the patentability of patent claims based on patents and printed publications. An IPR trial is often conducted in parallel with United States district court litigation involving the same patent, with an accused infringing party in the litigation filing a petition before the United States Patent and Trademark Office's ("USPTO") Patent Trial and Appeal Board ("the Board") seeking a partial patentability review of the patent.1 For the IPR trial to be instituted, the petitioner must establish a reasonable likelihood that it will prevail in showing unpatentability of at least one challenged claim. After institution, the AIA provides the patent owner with the opportunity to file a motion to amend the patent by cancelling any challenged claim and proposing a reasonable number of substitute claims. 35 U.S.C. § 316(d)(1).

Amending claims in IPR proceedings, however, has proven to be exceedingly difficult.2 Amendments in IPR proceedings are proposed by motion, and amendments are not entered as a matter of right. Rather, the patent owner bears the burden of proof to establish that it is entitled to the relief requested in the motion to amend, and if the motion is granted, the proposed substitute claims are added to the involved patent without examination. Accordingly, the Board has required that the patent owner show patentability over all prior art known to the patent owner, and not just over the references applied by the petitioner against the original patent claims. Patent owners have struggled in meeting this requirement and others (e.g., requirements relating to form and showing written description support for the amendment, etc.), and thus far, only a single motion to amend has been granted by the Board. To further add to the difficulty of amending in an IPR proceeding, a patent owner is permitted to file only a single motion to amend, and the petitioner may file papers opposing the motion.

In light of these difficulties, patent owners have increasingly been turning to reissue applications to pursue claim amendments. A reissue application is filed to correct an error in a patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. Reissue applications can be used to correct errors such as a failure to perfect priority claims, defects in the specification or drawings, and claiming more or less than the patent owner had a right to claim in the patent. 35 U.S.C. § 251. Further, the Court of Appeals for the Federal Circuit has held that "adding dependent claims as a hedge against possible invalidity of original claims is a proper reason for asking that a reissue be granted." In re Tanaka, 640 F.3d 1246, 1249 (Fed. Cir. 2011). Reissue applications thus offer patent owners the possibility of obtaining completely remodeled claim sets having claims that are broader or narrower than the claims of the original patent.3

Reissue requires surrender of the original patent but only on the date of issuance of the reissue patent. Thus, an IPR trial challenging a patent may proceed concurrently with a reissue application involving the same patent, and patent owners have been leveraging the use of such concurrent proceedings in a number of strategic ways, as described below. The use of reissue proceedings for pursuing claim amendments may reflect some patent owners' belief that it is easier to amend in reissue proceedings versus IPR proceedings. This Commentary details strategies used by patent owners in filing reissue applications for patents challenged in IPR trials and provides additional considerations for patent owners filing such applications. The Commentary further details actions that an IPR petitioner may take when faced with co-pending IPR and reissue proceedings.

Strategic Use of Reissue Applications by Patent Owners

Patent owners' increasing use of reissue applications in conjunction with IPR proceedings may have roots in an oft-cited Board decision. In a decision on a motion to amend the claims in the Idle Free Systems, Inc. v. Bergstrom, Inc. IPR trial, the Board detailed requirements that a patent owner must meet to have a motion to amend entered in an IPR trial. Case No. IPR2012-00027, Paper 26 at 3-10. The Board further explained some of the limitations on amendments imposed in IPR proceedings and suggested the use of reissue proceedings as an alternative avenue for pursuing claim amendments:

[A] challenged claim can be replaced by only one claim, and a motion to amend should, for each proposed substitute claim, specifically identify the challenged claim which it is intended to replace.... A patent owner may not seek to broaden a challenged claim in any respect, in the name of responding to an alleged ground of unpatentability. A proper substitute claim under 37 C.F.R. § 42.121(a)(2)(i) must only narrow the scope of the challenged claim it replaces.

. . .

A desire to obtain a new set of claims having a hierarchy of different scope typically would not constitute a sufficient special circumstance. An inter partes review is more adjudicatory than examinational, in nature. 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 unpatenatability as raising a substantial new question of unpatentability. In appropriate circumstance, it may also seek to file a reissue application.

Id. at 5-6. Following the Board's guidance in Idle Free, patent owners have filed reissue applications to pursue claim amendments. Some of the particular strategies employed by patent owners thus far are described below.

Concede Unpatentability of Claims in IPR and File Reissue Application with Narrower Claims. In a number of IPR trials, a patent owner has conceded that the challenged claims are unpatentable and filed a reissue application with claims that are narrower than the challenged claims. For example, patent owner ContentGuard Holdings, Inc. employed this strategy in Case No. IPR2013-00136. On February 12, 2013, petitioner ZTE Corporation filed a petition for inter partes review of U.S. Patent No. 7,359,884, assigned to ContentGuard Holdings, Inc. An inter partes review trial was instituted on July 16, 2013, and on October 23, 2013, ContentGuard filed a motion to amend...