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2686    Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon [R-11.2013]

37 C.F.R. 1.985   Notification of prior or concurrent proceedings in inter partes reexamination.

  • (a) In any inter partes reexamination proceeding, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings.
  • (b) Notwithstanding any provision of the rules, any person at any time may file a paper in an inter partes reexamination proceeding notifying the Office of a prior or concurrent proceeding in which the same patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings. Such paper must be limited to merely providing notice of the other proceeding without discussion of issues of the current inter partes reexamination proceeding.

It is important for the Office to be aware of any prior or concurrent proceedings in which a patent undergoing inter partes reexamination is or was involved, such as interferences, reissues, reexaminations or litigations, and any results of such proceedings. In accordance with 37 CFR 1.985, the patent owner is required to provide the Office with information regarding the existence of any such proceedings, and the results thereof, if known. Ordinarily, while an inter partes reexamination proceeding is pending, third party submissions filed after the date of the order are not entered into the reexamination file or the patent file, unless the third party is a third party reexamination requester. However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. Such decisions include final court decisions (even if the decision is still appealable), decisions to vacate, decisions to remand, and decisions as to the merits of the patent claims. Non-merit decisions on motions such as for a new venue, a new trial/discovery date, or sanctions will not be entered into the patent file, and will be expunged from the patent file by closing the appropriate paper if they were entered before discovery of their nature. Further, papers filed in the court from litigations or other proceedings involving the patent will not be entered into the record (and will be expunged if already entered) if they provide a party’s arguments, such as a memorandum in support of summary judgment. If the argument has an entry right in the reexamination proceeding, it must be submitted via the vehicle (provision(s) of the rules) that provides for that entry right. It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status. Any submission that is not permitted entry will be returned, expunged, or discarded, at the sole discretion of the Office.

It is to be noted that if the Office, in its sole discretion, deems the volume of the papers filed from litigations or other proceedings to be too extensive/lengthy, the Office may return, expunge or discard, at its sole discretion, all or part of the submission. In such an instance, a party may limit the submission in accordance with what is deemed relevant, and resubmit the papers. Persons making such submissions must limit the submissions to the notification, and must not include further arguments or information. Where a submission is not limited to bare notice of the prior or concurrent proceedings (in which a patent undergoing reexamination is or was involved), the submission will be returned, expunged or discarded by the Office. It is to be understood that highlighting of certain text by underlining, fluorescent marker, etc., goes beyond bare notice of the prior or concurrent proceedings. Any proper submission pursuant to 37 CFR 1.985 will be promptly entered into the record of the reexamination file, and will be considered by the examiner as to its content, when the proceeding comes up for action on the merits. Thus, for example, if the patent owner properly files in a reexamination proceeding, pursuant to 37 CFR 1.985, an enterable paper from the discovery stage of litigation of the patent being reexamined, the paper would be entered into the reexamination file and considered by the examiner, the next time the proceeding comes up for action on the merits. See MPEP § 2686.04 for Office investigation for prior or concurrent litigation.

2686.01   Multiple Copending Reexamination Proceedings [R-11.2013]

37 C.F.R. 1.989   Merger of concurrent reexamination proceedings.

  • (a) If any reexamination is ordered while a prior inter partes reexamination proceeding is pending for the same patent and prosecution in the prior inter partes reexamination proceeding has not been terminated, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger is ordered, the merged examination will normally result in the issuance and publication of a single reexamination certificate under § 1.997.
  • (b) An inter partes reexamination proceeding filed under § 1.913 which is merged with an ex parte reexamination proceeding filed under § 1.510 will result in the merged proceeding being governed by §§ 1.902 through 1.997, except that the rights of any third party requester of the ex parte reexamination shall be governed by §§ 1.510 through 1.560.

This section discusses multiple copending reexamination requests which are filed on the same patent, where at least one of the multiple copending reexamination requests is an inter partes request. If all of the multiple copending reexamination requests are ex parte requests, see MPEP § 2283.

I.   WHEN PROCEEDINGS ARE MERGED

Where a second request for reexamination is filed and reexamination is ordered, and a first reexamination proceeding is pending, the proceedings will be merged where the Office (in its discretion) deems it appropriate to do so, to facilitate the orderly handling of the proceedings. However, a decision not to merge is within the sole discretion of the Office to facilitate/carry out the statutory mandate of 35 U.S.C. 314(c) to conduct reexamination proceedings with “special dispatch.”

Where a second request for reexamination is filed while a first reexamination proceeding is pending, the second request is decided based on the claims in effect at the time of the determination, and if reexamination is ordered (and the statement-reply period expires for any ex parte reexamination proceeding), the question of merger will then be considered. If the proceedings are merged, the prosecution will be conducted at the most advanced point possible for the first proceeding. Thus, if a final rejection (a Right of Appeal Notice) has been issued in the first proceeding, prosecution will ordinarily be reopened to consider the question of patentability presented in the second request unless the examiner concludes that no new rejection or change of position is warranted. Also, the patent owner will be provided with an opportunity to respond to any new rejection in a merged reexamination proceeding prior to an Action Closing Prosecution (ACP) being issued. See MPEP § 2671.02.

Where the reexamination proceedings are merged, a single certificate will be issued and published based upon the merged proceedings, 37 CFR 1.989(a).

II.   WHEN PROCEEDING IS SUSPENDED

It may also be desirable in certain situations to suspend one of the proceedings for a specified period of time. For example, a suspension of a first reexamination proceeding may be issued to allow time for the decision on the second request. Further, after the second proceeding has been ordered, it may be desirable to suspend the second proceeding prior to merging, where the first proceeding is presently on appeal before a Federal court to await the court’s decision prior to merging. A suspension will only be granted in exceptional (extraordinary) instances because of the statutory requirements that examination proceed with “special dispatch”, and the express written approval by the OPLA must be obtained. Suspension will not be granted when there is an outstanding Office action.

III.   MERGER OF REEXAMINATIONS

The following guidelines should be observed when two requests for reexamination directed to a single patent have been filed:

The second request (i.e., Request 2) should be processed as quickly as possible, and assigned to the same examiner to whom the first request (i.e., Request 1) is assigned. If Request 2 is denied, prosecution of Request 1 should continue. If Request 2 is granted, a first Office action on the merits will not be sent with the order granting reexamination in the second proceeding. Instead, the order will indicate that an Office action will follow in due course. MPEP § 2660. The order granting the second proceeding will be prepared, reviewed by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) and mailed. The order will be mailed specially, and the two proceedings will be forwarded to the OPLA for preparation of a decision whether to merge the two proceedings.

A decision to merge the reexamination proceedings will require that responses/comments by the patent owner and the third party requester(s) must consist of a single response/comment paper, addressed to both files, filed in duplicate each bearing a signature, for entry in both files. The same applies to any other paper filed in the merged proceeding. The merger decision also will point out that both files will be maintained as separate complete files.

The merger decision should include a requirement that the patent owner maintain identical claims in both files. If the claims are not the same in both files at the time the merger decision is drafted, an Office action will be issued concurrently with the merger decision; the Office action will contain a rejection of the claims under 35 U.S.C. 112(b) as being indefinite as to the content of the claims, and thus failing to particularly point out the invention, and the Office action will require a patent owner amendment placing the claims in identical form. Patent owner must respond to the Office action in accordance with the procedures in 37 CFR 1.111. For patent owner’s response to the Office action to be considered to be a complete response, patent owner must include (in the proceeding(s) for which any new or amended claims are being added) the remarks that set forth the basis for having presented any new or amended claims in the proceedings. The third party requester (in the proceedings in which the amendment is made) will then have an opportunity to comment on patent owner’s response with respect to the amendments made in the proceeding(s) in accordance with the procedures in 37 CFR 1.947. Where the claims are already the same in both reexamination files, the decision on merger will indicate at its conclusion that an Office action will be mailed in due course, and that the patent owner need not take any action at present.

After the decision of merger is prepared and signed, the decision will be hand-carried directly to the CRU, where the decision will be mailed specially.

Where the merger decision indicates that an Office action will follow, the merged proceeding is immediately returned to the examiner, to issue an Office action, after the CRU mailing and processing of the decision. Where the merger decision indicates that the patent owner is given one month to provide an amendment to make the claims the same in each file (identical amendments to be placed in all files), the CRU will retain jurisdiction over the merged reexamination proceeding to await submission of the amendment or the expiration of the time to submit the amendment. After the amendment is received and processed by the CRU, or the time for submitting the amendment expires, the merged proceeding will be returned to the examiner, to issue an Office action.

Once the merged proceeding is returned to the examiner for issuance of an Office action, the examiner should prepare the action at the most advanced point possible for the first proceeding. Thus, if the first proceeding is ready for an Action Closing Prosecution (ACP) and the second proceeding does not provide any new information which would call for a new ground of rejection, the examiner should issue an ACP for the merged proceeding using the guidance for the prosecution stage set forth below.

If the decision on the reexamination request has not yet been made in Request 1 and Request 1 is grantable, it should be processed to the point where an order granting reexamination is mailed. An Office action should not be mailed with the order. Then, Request 1 is normally held until Request 2 is ready for the prosecution stage following an order granting reexamination, or until Request 2 is denied. Request 2 should be determined on its own merits without reference in the decision to Request 1. As before, an Office action should not be mailed with the order in Request 2.

A.   The Prosecution Stage, After Merger

Where merger is ordered, the patent owner is required to maintain identical amendments in the merged reexamination files for purposes of the merged proceeding. The maintenance of identical amendments in the files is required as long as the reexamination proceedings remain merged. Where identical amendments are not present in the reexamination files at the time merger is ordered, the patent owner will have been required in an Office action to submit an appropriate amendment placing the same amendments in the proceedings. This may be accomplished by patent owner amending one or more of the proceedings, as appropriate. As pointed out above, patent owner must include (in the proceeding(s) for which any new or amended claims are being added) the remarks that set forth the basis for having presented any new or amended claims in the proceedings. Any third party requester will then have an opportunity to comment on patent owner’s response in accordance with the procedures in 37 CFR 1.947.

When prosecution is appropriate in merged proceedings, a single combined examiner’s action will be prepared. Each action will contain the control number of the two proceedings on every page. A single action cover form (having both control numbers penned in at the top) will be provided by the examiner to the clerical staff. The clerical staff will copy the action cover form, and then use the PALM printer to print the appropriate data on the original for the first request, and on the copy for the second request. Each requester will receive a copy of the action and both action cover forms, with the transmission form PTOL-2070 placed on top of the package. The patent owner will get a copy of both action cover forms and the action itself.

When a “Notice of Intent To Issue Inter Partes Reexamination Certificate” (NIRC) is appropriate, a notice will be printed for the merged proceeding and scanned into the files of the merged proceeding. Both reexamination files will then be processed. The CRU should prepare the file of the concurrent proceedings in the manner specified in MPEP § 2687, before release to Office of Data Management (via the CRU).

The above guidance should be extended to situations where more than two requests for reexamination are filed for a single patent. The guidance should also be extended to situations where one of the requests is a request for ex parte reexamination. However, where an ex parte reexamination is to be included in the merger, allowance must be made for the statement and reply periods provided for in an ex parte reexamination after the order granting reexamination is issued. If all the reexamination proceedings to be merged are ex parte reexaminations, the present section does not apply, but rather see MPEP § 2283.

IV.   PROCEEDINGS NOT MERGED

Pursuant to 35 U.S.C. 314(c), “[u]nless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section…shall be conducted with special dispatch within the Office.” This statutory provision is grounded on the need for certainty and finality as to the question of patentability raised by the request for reexamination. Thus, if a second request for reexamination will unduly delay the first reexamination proceeding, the two proceedings generally will not be merged. If the Office were to merge the two proceedings, the first reexamination proceeding would need to be withdrawn from its place in the process, thus delaying, instead of advancing, prosecution. This would run contrary to the statutory “special dispatch” requirement of 35 U.S.C. 314 and its intent. On the other hand, if the Office does not merge, the first reexamination proceeding can be concluded, and any question of patentability raised by the second reexamination request can be resolved in the second proceeding, with no delay resulting. The second request is then considered based on the claims in the patent as indicated in the issued reexamination certificate, rather than the original claims of the patent. However, the Office always retains the authority to merge because in some instances, it may be more efficient to merge the two proceedings, which would foster “special dispatch.” The instances where the Office may, or may not, merge an ongoing reexamination proceeding with a subsequent reexamination proceeding, are addressed on a case-by-case basis.

For processing of the second reexamination proceeding, see MPEP § 2295 and § 2695.

V.   FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claims fee, extension of time fee, petition fee, appeal fee, brief fee, oral hearing fee), only a single fee need be paid. For example, only one fee need be paid for the patent owner’s appellant brief (or that of the third party requester), even though the brief relates to merged multiple proceedings and copies must be filed for each file in the merged proceeding.

VI.   PETITION TO MERGE MULTIPLE COPENDING REEXAMINATION PROCEEDINGS

No petition to merge multiple reexamination proceedings is necessary since the Office will generally, sua sponte, make a decision as to whether or not it is appropriate to merge the multiple reexamination proceedings. If any petition to merge the proceedings is filed prior to the order to reexamine the second request, it will not be considered but will be returned to the party submitting the same by the OPLA. The decision returning such a premature petition will be made of record in both reexamination files, but no copy of the petition will be retained by the Office. See MPEP § 2667.

The patent owner can file a petition to merge the proceedings at any time after the order to reexamine the second request. Note that the acceptance of a petition to merge the multiple proceedings at any time after the order to reexamine the second request is contrary to 37 CFR 1.939 since such acceptance can be prior to the issuance of the first Office action. Accordingly, the requirement of 37 CFR 1.939 is hereby waived to the extent that a petition for merger of a reexamination proceeding with a reexamination proceeding or with a reissue (see MPEP § 2686.03) can be submitted after the order to reexamine has been issued in all the reexamination proceedings to be merged. This waiver is made to assure merger at the earliest possible stage. The third party requester of a reexamination proceeding (reexamination # 1) does not have a right to file a petition under 37 CFR 1.182 to merge that reexamination proceeding with another reexamination proceeding (reexamination # 2), where the reexamination third party requester does not have any standing to request relief with respect to the other reexamination proceeding (reexamination # 2). No such standing is provided for anywhere in the statute. Instead of filing a petition under 37 CFR 1.182 to merge the reexamination proceedings, that third party requester may file a notification of concurrent proceedings pursuant to 37 CFR 1.985(b). After being notified of the existence of the concurrent reexamination proceedings and after consideration of the merger and suspension options becomes ripe, the Office would sua sponte consider any action to be taken. The requester does have the right to file a petition under 37 CFR 1.182 to stay the reexamination proceeding that it requested.

All decisions on the merits of petitions to merge multiple reexamination proceedings, where at least one of the proceedings is an inter partes reexamination, will be made by the OPLA.

Decisions on the merits of petitions to merge multiple reexamination proceedings, where none of the proceedings is an inter partes reexamination, will be made by the CRU Director (or by the CRU SPRS, if the CRU Director delegates such to the CRU SPRS); see MPEP § 2283.

2686.02   Copending Reexamination and Interference Proceedings [R-11.2013]

37 C.F.R. 1.993   Suspension of concurrent interference and inter partes reexamination proceeding.

If a patent in the process of inter partes reexamination is or becomes involved in an interference or trial before the Patent Trial and Appeal Board, the Director may suspend the inter partes reexamination, interference, or trial. The Director will not consider a request to suspend an interference or trial unless a motion under § 41.121(a)(3) of this title to suspend the interference or trial has been presented to, and denied by, an administrative patent judge and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set.

37 C.F.R. 41.8   Mandatory notices.

  • (a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the initiation of a contested case (§ 41.101), and within 20 days of any change during the proceeding, a party must identify:
    • (1) Its real party-in-interest, and
    • (2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding.
  • (b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the complaint or the notice of appeal. The notice to the Board must include a copy of the complaint or notice of appeal. See also §§ 1.301 to 1.304 of this title.

37 C.F.R. 41.102   Completion of examination.

Before a contested case is initiated, except as the Board may otherwise authorize, for each involved application and patent:

  • (a) Examination or reexamination must be completed, and
  • (b) There must be at least one claim that:
    • (1) Is patentable but for a judgment in the contested case, and
    • (2) Would be involved in the contested case.

37 C.F.R. 41.103   Jurisdiction over involved files.

The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except as the Board may order.

A patent being reexamined in an inter partes reexamination proceeding may be involved in an interference proceeding with at least one application, where the patent and the application are claiming the same patentable invention, and at least one of the application’s claims to that invention are patentable to the applicant. See MPEP Chapter 2300.

The general policy of the Office is that a reexamination proceeding will not be delayed, or stayed, because of an interference or the possibility of an interference. The reason for this policy is the requirement of 35 U.S.C. 314(c) that all reexamination proceedings be conducted with “special dispatch” within the Office.

In general, the Office will follow the practice of making the required and necessary decisions in the inter partes reexamination proceeding and, at the same time, going forward with the interference to the extent desirable. (See Shaked v. Taniguchi, 21 USPQ2d 1289 (Bd. Pat. App. & Inter. 1991), where it was pointed out that neither the reexamination nor the interference will ordinarily be stayed where both proceedings are before the Office.) It is to be noted that 37 CFR 41.103 provides the Board with the flexibility to tailor a specific solution to occurrences where reexamination and interference proceedings for the same patent are copending, as such occurrences may arise. Decisions in the interference will take into consideration the status of the reexamination proceeding and what is occurring therein. The decision as to what actions are taken in the interference will, in general, be taken in accordance with normal interference practice.

Although a patent being reexamined via a reexamination proceeding may become involved in an interference proceeding, the reexamination proceeding itself can never be involved in an interference proceeding. See 35 U.S.C. 135(a) which states that “[w]henever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared” (emphasis added). The reexamination proceeding is neither an application nor a patent.

I.   ATTEMPTING TO PROVOKE AN INTERFERENCE WITH A PATENT INVOLVED IN A REEXAMINATION PROCEEDING

See MPEP § 2284 for a discussion of the situation where an amendment seeking to provoke an interference with a patent involved in a reexamination proceeding is filed in a pending application. The practice and procedure in this area as to inter partes reexamination proceedings parallels that of ex parte reexamination proceedings.

II.   MOTION TO SUSPEND INTERFERENCE UNDER 37 CFR 41.121(a)(3) PENDING THE OUTCOME OF A REEXAMINATION PROCEEDING

A miscellaneous motion under 37 CFR 41.121(a)(3) to suspend an interference pending the outcome of a reexamination proceeding may be made at any time during the interference by any party thereto. See 37 CFR 41.123(b) for the proper procedure. The motion must be presented to the Administrative Patent Judge (APJ) who will decide the motion based on the particular fact situation. However, suspension is not favored. Normally, no consideration will be given such a motion unless and until a reexamination order is issued, nor will suspension of the interference normally be permitted until after any motions have been disposed of in the interference proceeding. If the motion under 37 CFR 41.121(a)(3) is denied by the APJ, a request to stay the interference may be made to the Director of the USPTO under 37 CFR 1.993. A request to stay an interference under 37 CFR 1.993 will be decided by the Chief Administrative Patent Judge of the Board.

III.    REQUEST FOR REEXAMINATION FILED DURING INTERFERENCE

In view of the provisions of 37 CFR 1.913, “[a]ny person may, at any time during the period of enforceability of a patent” file a request for inter partes reexamination. Under 37 CFR 41.8(a), the patent owner must notify the Board that a request for reexamination was filed within twenty days of receiving notice of the request having been filed. Such requests for reexamination will be processed in the normal manner. No delay, or stay, of the reexamination will occur where the third party requester is not a party to the interference, or where the requester is a party to the interference but does not timely petition for a stay or delay. If the examiner orders reexamination pursuant to 37 CFR 1.931 and subsequently, in the reexamination proceeding, rejects a patent claim corresponding to a count in the interference, the attention of the Board shall be called to the rejection.

IV.    PETITION TO STAY REEXAMINATION PROCEEDING BECAUSE OF INTERFERENCE

Any petition to stay an inter partes reexamination proceeding, because of an interference, which is filed prior to the first Office action in the reexamination proceeding will not be considered, but will be returned to the party submitting the petition. See 37 CFR 1.939 and MPEP § 2625. The decision returning such a premature petition will be made of record in the reexamination file, but no copy of the petition will be retained by the Office. A petition to stay the reexamination proceeding because of the interference may be filed by the patent owner after the first Office action in the reexamination proceeding. If a party to the interference, other than the patent owner, is also a requester of the reexamination, that party may also petition to stay the reexamination proceeding after the first Office action. If the party to the interference other than patent owner is not the reexamination requester, any petition by that party is improper under 37 CFR 1.905 and will not be considered. Any such improper petitions will be returned to the party submitting the same. Premature petitions to stay the reexamination proceedings, i.e., those filed prior to the first Office action in the reexamination proceeding, will be returned by a Legal Advisor of the Office of Patent Legal Administration (OPLA) as premature. Petitions to stay filed subsequent to the date of the first Office action in the reexamination proceeding will be referred to the OPLA for decision by a Senior Legal Advisor of that Office. All decisions on the merits of petitions to stay a reexamination proceeding because of an interference will be made in the OPLA.

V.    ACTION IN INTERFERENCE FOLLOWING REEXAMINATION

If one or more claims of a patent which is involved in an interference are canceled or amended by the issuance and publication of a reexamination certificate, the Board must be promptly notified.

Upon issuance and publication of the reexamination certificate, the patent owner must notify the Board of such issuance.

2686.03   Copending Reexamination and Reissue Proceedings [R-11.2013]

37 C.F.R. 1.991   Merger of concurrent reissue application and inter partes reexamination proceeding.

If a reissue application and an inter partes reexamination proceeding on which an order pursuant to § 1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an inter partes reexamination proceeding is ordered, the merged proceeding will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the inter partes reexamination proceeding during the pendency of the merged proceeding. In a merged proceeding the third party requester may participate to the extent provided under §§ 1.902 through 1.997 and 41.60 through 41.81, except that such participation shall be limited to issues within the scope of inter partes reexamination. The examiner’s actions and any responses by the patent owner or third party requester in a merged proceeding will apply to both the reissue application and the inter partes reexamination proceeding and be physically entered into both files. Any inter partes reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent.

37 C.F.R. 1.937   Conduct of inter partes reexamination.

  • (a) All inter partes reexamination proceedings, including any appeals to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office, unless the Director makes a determination that there is good cause for suspending the reexamination proceeding.

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37 C.F.R. 1.995   Third party requester’s participation rights preserved in merged proceeding.

When a third party requester is involved in one or more proceedings, including an inter partes reexamination proceeding, the merger of such proceedings will be accomplished so as to preserve the third party requester’s right to participate to the extent specifically provided for in these regulations. In merged proceedings involving different requesters, any paper filed by one party in the merged proceeding shall be served on all other parties of the merged proceeding.

37 C.F.R. 1.997   Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.

  • (a) To conclude an inter partes reexamination proceeding, the Director will issue and publish an inter partes reexamination certificate in accordance with 35 U.S.C. 316 setting forth the results of the inter partes reexamination proceeding and the content of the patent following the inter partes reexamination proceeding.

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  • (d) If a certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
  • (e) If the inter partes reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.991, the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 316.

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37 C.F.R. 1.176   Examination of reissue.

  • (a) A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications. Applications for reissue will be acted on by the examiner in advance of other applications.

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The general policy of the Office is that the examination of a reissue application and an inter partes reexamination proceeding will not be conducted separately at the same time as to a particular patent. The reason for this policy is to permit timely resolution of both the reissue and the reexamination to the extent possible and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two files on behalf of the patent owner. If both a reissue application and a reexamination proceeding are pending concurrently on a patent, a decision will normally be made to merge the reissue application examination and the reexamination or to stay one of the two. See In re Onda, 229 USPQ 235 (Comm’r Pat. 1985). The decision as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed, is made in the OPLA.

Where a reissue application and a reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. 37 CFR 1.178(b), 1.565(a), and 1.985. The patent owner should file in the reissue application, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.178(b) in order to notify the Office in the reissue application of the existence of the reexamination proceeding on the same patent. See MPEP § 1418. In addition, the patent owner should file in the reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.565(a) or 1.985 (depending on whether the reexamination proceeding is an ex parte reexamination proceeding or an inter partes reexamination proceeding) to notify the Office in the reexamination proceeding of the existence of the two concurrent proceedings.

I.   TIME FOR MAKING DECISION ON MERGING OR STAYING THE PROCEEDINGS

A decision whether or not to merge the examination of a reissue application and an inter partes reexamination proceeding, or to stay one of the two, will not be made prior to the mailing of the order to reexamine the patent pursuant to 37 CFR 1.931. Until such time as the reexamination is ordered, the examination of the reissue application will proceed. A determination on the request for reexamination should not be delayed despite the existence of a copending reissue application, since 35 U.S.C. 312(a) requires a determination within 3 months following the filing date of the request. See MPEP § 2641. If the decision on the request denies reexamination (MPEP § 2647 ), the examination of the reissue application should be continued. If reexamination is to be ordered (MPEP § 2646), the signed order should be (after review by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) promptly forwarded to the CRU support staff for mailing; no first Office action will accompany the decision ordering reexamination. At the same time that the signed order is forwarded to the OPLA, (A) the OPLA should be notified that the proceedings are ready for consideration of merger, and (B) if any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to the OPLA.

If a reissue application is filed during the pendency of a reexamination proceeding, the OPLA should be notified, as promptly as possible after the reissue application reaches the Technology Center (TC), that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to the OPLA at the time of the notification to the OPLA.

The decision on whether or not to merge the reissue application examination and the reexamination proceeding or which (if any) is to be stayed (suspended), will generally be made as promptly as possible after receipt of the notification to the OPLA, and delivery of all the paper files to the OPLA.

Until a decision is mailed merging the reissue application examination and the reexamination proceeding, or staying one of them, prosecution in the reissue application and the reexamination proceeding will continue and be conducted simultaneously, but separately.

The Office may in certain situations issue a certificate at the termination of the prosecution of a reexamination proceeding, even if a copending reissue application or another reexamination request has already been filed.

II.   CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE REISSUE AND REEXAMINATION OR WHETHER TO STAY ONE OF THEM

The decision on whether to merge the reissue application examination and reexamination proceeding, or stay one of them, will be made on a case-by-case basis. The decision to merge, or not to merge, is within the sole discretion of the Office to facilitate/carry out the orderly operation of the Office in addressing the proceedings. The status of the reissue application and the reexamination proceeding will be taken into account in the decision as to whether merger will be ordered, or one of the two proceedings stayed. Where there is “good cause” to stay the reexamination proceeding, the Director may do so pursuant to 35 U.S.C. 314(c)

A.   Reissue About To Issue, Reexamination Requested

If the reissue patent will issue before the determination on the reexamination request must be made, the determination on the request should normally be made after the granting of the reissue patent; and then the determination should be made on the basis of the claims in the reissue patent. The reexamination, if ordered, would then be based on the reissue patent claims rather than the original patent claims. Since the reissue application would no longer be pending, the reexamination would be processed in a normal manner.

Where a reissue patent has been issued, the determination on the request for reexamination should specifically point out that the determination has been made on the claims of the reissue patent and not on the claims of the original patent. Any amendment made in the reexamination proceeding should treat the changes made by the reissue as the text of the patent, and all bracketing and underlining made with respect to the patent as changed by the reissue. Note that the reissue claims used as the starting point in the reexamination proceeding must be presented in the reexamination proceeding as a “clean copy.” Thus, words bracketed in the reissue patent claim(s) would not appear at all in the reexamination clean copy of the claim(s). Also, words that were added via the reissue patent will appear in italics in the reissue patent, but must appear in plain format in the reexamination clean copy of the claim(s).

If a reissue patent issues on the patent under reexamination after reexamination is ordered, the next action from the examiner in the reexamination should point out that further proceedings in the reexamination will be based on the claims of the reissue patent and not on the patent surrendered. Form paragraph 22.05 may be used in the Office action.

¶ 22.05    Reexamination (Ex Parte or Inter Partes) Based on Reissue Claims

In view of the surrender of original Patent No. [1] and the granting of Reissue Patent No. [2] which issued on [3], all subsequent proceedings in this reexamination will be based on the reissue patent claims.

Where the reissue patent has issued prior to the filing of a request for reexamination of the original patent, see MPEP § 2640.

B.   Reissue Pending, Reexamination Request Filed

Where a reissue patent will not be granted prior to the expiration of the 3-month period for making the determination on the reexamination request, a decision will be made after an order to reexamine is issued as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed. In this situation, no first Office action will have accompanied the order for reexamination.

In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination and/or not be proper for comment by the reexamination third party requester. If such issues are raised, merger would ordinarily not be ordered, and one of the two proceedings stayed. Consideration will also be given to the status of the reissue application examination at the time the order to reexamine the patent pursuant to 37 CFR 1.931 is mailed. For example, if the reissue application is on appeal to the Board or to the courts, that fact would be considered in making a decision whether to merge the reissue application examination and the reexamination proceeding or stay one of them. See In re Scragg, 215 USPQ 715 (Comm’r Pat. 1982), In re Stoddard, 213 USPQ 386 (Comm’r Pat. 1982).

If merger of the reissue application examination and the reexamination proceeding is ordered, the order merging them will also require that the patent owner place the same claims in the reissue application and in the reexamination proceeding for purposes of the merger. The decision to merge may require an amendment to be filed by the patent owner to provide identical sets of claims, within a specified time set in the decision to merge.

If merger would be appropriate, but the examination of the reissue application has progressed to a point where a merger is not desirable at that time, then the reexamination proceeding will generally be stayed until the reissue application examination is complete on the issues then pending. After completion of the examination on the issues then pending in the reissue application examination, the stay of the reexamination proceeding will be removed. The proceedings would be merged if the reissue application is pending, or the reexamination proceeding will be conducted separately if the reissue application has become abandoned. The reissue application examination would be reopened, if necessary, for merger of the reexamination proceeding therewith. If a stay of a reexamination proceeding has been removed following a reissue application examination, the first Office action will set a shortened statutory period for response of one month or thirty days (whichever is longer) unless a longer period for response clearly is warranted by the nature of the examiner’s action. The second Office action will normally be final and will also set a one month or thirty days period for response. These shortened periods are considered necessary to prevent undue delay in concluding the proceedings and also to proceed with “special dispatch” in view of the earlier stay.

If the reissue application examination and reexamination proceedings are merged, the issuance of the reissue patent will also serve as the inter partes reexamination certificate under 37 CFR 1.997, and the reissue patent will so indicate.

C.   Reexamination Proceedings Underway, Reissue Application Filed

When a reissue application is filed after an inter partes reexamination request has been filed, the OPLA should be notified, as promptly as possible after the reissue application reaches the TC. A determination will be made as to whether reexamination should be ordered. If reexamination is ordered, no first Office action will accompany the decision ordering reexamination. The order and any of the files that are paper files should then be hand delivered to the OPLA.

Where reexamination has already been ordered prior to the filing of a reissue application, the OPLA should be notified, as promptly as possible after the reissue application reaches the TC, that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to the OPLA at the time of the e-mail notification to OPLA.

In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination and/or not be proper for comment by the reexamination third party requester. If such issues are raised, merger would ordinarily not be ordered, and one of the two proceedings stayed. In addition, consideration will also be given to the status of the reexamination proceeding. For example, if the reexamination proceeding is on appeal to the Board or to the Court of Appeals for the Federal Circuit, or a Notice of Intent to Issue a Reexamination Certificate was issued for the reexamination proceeding, that fact would be considered in making a decision whether to merge the reissue application examination and the reexamination proceeding or stay one of them.

D.   Examiner Assignment

With respect to the appropriate examiner assignment of the merged reexamination proceeding and the reissue application examination, see MPEP § 2636.

III.   CONDUCT OF MERGED REISSUE AND REEXAMINATION PROCEEDING

The decision ordering merger will set forth the practice and procedure to be followed in the examination and prosecution of the merged reissue and inter partes reexamination proceeding. Any questions as to the practice and procedure set forth should be referred to the OPLA Reexamination Legal Advisor (RLA) assigned to the inter partes reexamination proceeding that is merged with the reissue application. In addition, the examiner will consult with the RLA assigned to the inter partes reexamination prior to issuing any Office action in the merged proceeding, in the same manner as he or she would consult with the RLA in an inter partes reexamination proceeding that has not been merged.

Where merger is ordered, the patent owner is required to maintain identical amendments in the reissue application and the reexamination file for purposes of the merged proceeding. The maintenance of identical amendments in both files is required as long as the reissue and reexamination proceedings remain merged. Where identical amendments are not present in both files at the time merger is ordered, the patent owner will be required to submit an appropriate amendment placing the same amendments in both proceedings. This may be accomplished by amending either of the two proceedings (the reissue application or the reexamination) or both of them, as appropriate. The patent owner must not address any issue of patentability in the amendment. Amendments in a merged reexamination/reissue proceeding are submitted under 37 CFR 1.173, in accordance with reissue practice. In the event that an amendment to make the claims the same in each file is required by the merger decision (identical amendments to be placed in all files) but is not timely submitted, any claim that does not contain identical text in all of the merged proceedings should be rejected under 35 U.S.C. 112, paragraph 2, as being indefinite as to the content of the claim, and thus failing to particularly point out the invention.

IV.   INTER PARTES REEXAMINATION, EX PARTE REEXAMINATION, AND REISSUE APPLICATION FOR THE SAME PATENT

It will sometimes happen that an inter partes reexamination, an ex parte reexamination and a reissue application will all be copending. In these situations, the OPLA should be notified by, as promptly as possible after the reissue application reaches the TC, that the proceedings are ready for consideration of merger. If any of the reexamination files, the reissue application, and the patent file are paper files, they should be hand delivered to the OPLA at the time of the notification to OPLA. The three most common examples of this are as follows:

  • (A) A reissue application was previously merged with an ex parte reexamination, and then an inter partes reexamination is filed. An order to reexamine is prepared, and the signed order and any paper files should be promptly hand delivered to the CRU for mailing of the order, and then consideration by the OPLA as to whether or not to merge the proceedings. The OPLA should be notified of the hand delivery, and the potential merger consideration.
  • (B) A reissue application was previously merged with an inter partes reexamination, and then a request for ex parte reexamination is filed. After an order to reexamine has been issued, the TC Quality Assurance Specialist (QAS) will retain jurisdiction over the merged reexamination proceeding until the patent owner’s statement and any reply by the ex parte third party requester have been received for the ex parte reexamination request, or until the time for filing the same expires. The OPLA should then be notified that the proceedings are ready for consideration of merger. If any of the reexamination files, the reissue application, and the patent file are paper files, they should be hand delivered to the OPLA at the time of the notification to OPLA.
  • (C) An inter partes reexamination was merged with an ex parte reexamination, and then a reissue application is filed. Once the reissue application is received, the OPLA should be promptly notified that the proceedings are ready for consideration of merger. If any of the reexamination files, the reissue application, and the patent file are paper files, they should be hand delivered to the OPLA at the time of the notification to OPLA.

The decision to merge the three proceedings by the OPLA will provide the guidance for conducting the merged proceeding. It is to be noted that the merger will not be carried out pursuant to MPEP Chapter 2200. Prosecution prior to the point of merger will remain as-is, in the files.

In the event the inter partes reexamination prosecution is terminated and only the ex parte reexamination and the reissue application remain, the prosecution will no longer be governed by the present section. Any further prosecution will be governed by MPEP Chapter 2200; specifically see MPEP § 2285.

V.   PETITION TO MERGE REISSUE APPLICATION AND INTER PARTES REEXAMINATION PROCEEDING OR TO STAY EITHER OF THE TWO BECAUSE OF THE EXISTENCE OF THE OTHER

No petition to merge the reexamination proceeding and the reissue application examination, or stay one of them, is necessary, since the Office will generally, sua sponte, make a decision to merge the reexamination proceeding and the reissue application examination or to stay one of them. If any petition to merge the reexamination proceeding and the reissue application examination, or to stay one of them because of the other, is filed prior to the determination (37 CFR 1.923) and the order to reexamine (37 CFR 1.931), it will not be considered, but will be returned to the party submitting the same by the CRU, regardless of whether the petition is filed in the reexamination proceeding, the reissue application, or both. This is necessary in order to prevent premature papers relating to the reexamination proceeding from being filed. The decision returning such a premature petition will be made of record in both the reexamination file and the reissue application file, but no copy of the petition will be retained by the Office. See MPEP § 2667.

The patent owner may file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, or stay one of them because of the other, after the order to reexamine (37 CFR 1.931), in the event the Office has not acted prior to that date to merge or stay. The third party requester does not have a right to file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, since the reexamination third party requester does not have any standing to request relief with respect to a reissue application, to which requester cannot be a party. No such standing is provided for anywhere in the statute. Instead of filing a petition under 37 CFR 1.182 to merge a reexamination proceeding with a reissue application, a third party requester may file a notification of concurrent proceedings pursuant to 37 CFR 1.985(b). After being notified of the existence of a reissue application and after consideration of the merger and suspension options becomes ripe, the Office of Patent Legal Administration would sua sponte consider any action to be taken.after the order to reexamine (37 CFR 1.931), in the event the Office has not acted prior to that date to merge or stay The requester does have the right to file a petition under 37 CFR 1.182 to stay the reexamination proceeding that it requested.

Any merger or stay petition under 37 CFR 1.182 filed prior to the initial Office action on the merits must also be filed under 37 CFR 1.183 to waive the requirement of 37 CFR 1.939(b) that no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination proceeding. Any petition to merge or stay which is filed by a party other than the patent owner will not be considered, but will be returned to that party by the OPLA (or expunged by the OPLA, if the petition was inadvertently already entered).

All petitions to merge or stay which are filed by the patent owner or the third party requester subsequent to the date of the order for reexamination will be referred to the OPLA for decision.

All petitions to merge or stay which are filed by the patent owner or the third party requester subsequent to the date of the order for reexamination will be referred to the OPLA for decision.

VI.   FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claims fee, extension of time fee, petition fees, appeal fees, brief fees, oral hearing fees), only a single fee need be paid. For example, only one fee need be paid for an appellant brief, even though the brief relates to merged multiple examinations and copies of the brief are filed for each file in the merger (as is required). As to excess claim fees, reissue practice will control.

VII.   INTERVIEWS IN MERGED PROCEEDINGS

Pursuant to 37 CFR 1.955, an interview which discusses the merits of a proceeding is not permitted in an inter partes reexamination proceeding. Thus, in a merged proceeding of an inter partes reexamination and a reissue application, there will be no inter partes interview as to the substance of the proceeding. Also, there will be no separate ex parte interview as to the substance of the proceeding with either the patent owner (the reissue applicant) or the third party requester (of the reexamination). Accordingly, where a party requests any information as to the merits of the merged proceeding, the examiner will not conduct a personal or telephone interview with that party to provide the information. Further, an informal amendment by the patent owner (the reissue applicant) will not be accepted, because that would be tantamount to an ex parte interview. All communications between the Office and the patent owner (and the third party requester) which are directed to the merits of the merged proceeding must be in writing and filed with the Office for entry into the record of the proceeding.

VIII.   EXAMINER’S AMENDMENT TO PLACE PROCEEDING IN CONDITION FOR ALLOWANCE IN MERGED REISSUE/INTER PARTES REEXAMINATION

As pointed out immediately above, interviews, both personal and telephone are not permitted in a merged reissue/inter partes reexamination proceeding. Thus, the examiner is not permitted to telephone the patent owner/reissue applicant and obtain authorization to make an amendment. Accordingly, the only times that an examiner’s amendment can be made in conjunction with a Notice of Allowability are where the patent owner authorization need not be obtained. Such amendments include:

  • (A) An examiner’s amendment to deal with formal matters such as grammar, incorrect spelling, or incorrect number; i.e., matters that do not involve a rejection, do not go to the merits, and do not require the examiner to obtain approval.
  • (B) An examiner’s amendment to change the title.

See also MPEP § 1302.04et seq. as to examiner’s amendments not needing authorization by an applicant or a patent owner. Note, however, that in a merged reissue/inter partes reexamination proceeding (as opposed to an application per se) all such examiner’s amendments must be made by formal examiner’s amendment accompanying the Notice of Allowability, in order to provide notice of the changes made in the patent being reexamined to both the patent owner/reissue applicant and the third party requester.

Note that any change going to the merits of the case (i.e., more than a formal matter) could not be made by examiner’s amendment accompanying the Notice of Allowability. Rather, a change going to the merits would require (A) reopening of prosecution with the approval of the CRU Director, (B) an Office action suggesting the change to the patent owner/reissue applicant, (C) a formal amendment submitted by patent owner/reissue applicant, and (D) an opportunity for the third party requester to comment on the patent owner/applicant’s submission.

2686.04   Reexamination and Litigation Proceedings [R-11.2013]

35 U.S.C. 314   Conduct of inter partes reexamination proceedings.

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[Editor Note: As in effect prior to September 16, 2012]

  • (c) SPECIAL DISPATCH.— Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.

35 U.S.C. 317   Inter partes reexamination prohibited.

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[Editor Note: As in effect prior to September 16, 2012]

  • (b) FINAL DECISION.— Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.

35 U.S.C. 318   Stay of litigation.

[Editor Note: As in effect prior to September 16, 2012]

Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.

37 C.F.R. 1.987   Suspension of inter partes reexamination proceeding due to litigation.

If a patent in the process of inter partes reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the inter partes reexamination proceeding.

37 C.F.R. 1.907   Inter partes reexamination prohibited.

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  • (b) Once a final decision has been entered against a party in a civil action arising in whole or in part under 28 U.S.C. 1338 that the party has not sustained its burden of proving invalidity of any patent claim-in-suit, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such civil action, and an inter partes reexamination requested by that party, or its privies, on the basis of such issues may not thereafter be maintained by the Office.

35 U.S.C. 311 permits a request for inter partes reexamination to be filed “at any time.” Thus, requests for inter partes reexamination can be filed where the patent (for which reexamination is requested) is involved in concurrent litigation. The guidelines set forth below will generally govern Office handling of inter partes reexamination requests where there is concurrent litigation.

I.   COURT-ORDERED/SANCTIONED REEXAMINATION PROCEEDING, LITIGATION STAYED FOR REEXAMINATION, OR EXTENDED PENDENCY OF REEXAMINATION PROCEEDING CONCURRENT WITH LITIGATION

Where a request for reexamination indicates (A) that it is filed as a result of an order by a court or an agreement by parties to litigation which agreement is sanctioned by a court, or (B) that litigation is stayed for the purpose of reexamination, the request will be taken up by the examiner for decision 6 weeks after the request is filed, and all aspects of the proceeding will be expedited to the extent possible. Cases will be taken up for action at the earliest time possible, and Office actions in these reexamination proceedings will normally set a 1-month shortened statutory period for response rather than the 2 months usually set in reexamination proceedings. Response periods may be extended only upon a strong showing of sufficient cause (see MPEP § 2665). Action on such a proceeding will generally take precedence to any other action taken by the examiner in the Office. See generally In re Vamco Machine and Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985); Gould v. Control Laser Corp., 705 F.2d 1340, 217 USPQ 985 (Fed. Cir. 1983); Loffland Bros. Co. v. Mid-Western Energy Corp., 225 USPQ 886 (W.D. Okla. 1985); The Toro Co. v. R.L. Nelson Corp., 223 USPQ 636 (C.D. Ill. 1984); Digital Magnetic Systems, Inc. v. Ansley, 213 USPQ 290 (W.D. Okla. 1982); Raytek, Inc. v. Solfan Systems Inc., 211 USPQ 405 (N.D. Cal. 1981); and Dresser Industries, Inc. v. Ford Motor Co., 211 USPQ 1114 (N.D. Texas 1981).

In addition, if (A) there is litigation concurrent with an inter partes reexamination proceeding and (B) the reexamination proceeding has been pending for more than one year, the Director or Deputy Director of the Office of Patent Legal Administration (OPLA), Director of the Central Reexamination Unit (CRU), or a Senior Legal Advisor of the OPLA, may approve Office actions in such reexamination proceeding setting a one-month or thirty days, whichever is longer, shortened statutory period for response rather than the two months usually set in reexamination proceedings. A statement at the end of the Office action – “One month or thirty days, whichever is longer, shortened statutory period approved,” followed by the signature of one of these officials, will designate such approval. It is to be noted that the statutory requirement for “special dispatch” in reexamination often becomes important, and sometimes critical, in coordinating the concurrent litigation and reexamination proceedings.

II.   FEDERAL COURT DECISION KNOWN TO EXAMINER AT THE TIME THE DETERMINATION ON THE REQUEST FOR REEXAMINATION IS MADE

If a Federal Court decision on the merits of a patent is known to the examiner at the time the determination on the request for inter partes reexamination is made, the following guidelines will be followed by the examiner:

  • (A) The Third Party Requester Was Not a Party to the Litigation.

    When the initial question as to whether the art raises a question of patentability as to a patent claim is under consideration, the existence of a final court decision of claim validity in view of the same or different art does not necessarily preclude the presence of such a question. This is true because of the different standards of proof and claim interpretation employed by the District Courts and the Office. See for example In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (manner of claim interpretation that is used by courts in litigation is not the manner of claim interpretation that is applicable during prosecution of a pending application before the PTO) and In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) (the 35 U.S.C. 282 presumption of patent validity has no application in reexamination proceedings). Thus, while the Office may accord deference to factual findings made by the court, the determination of whether a basis for reexamination exists will be made independently of the court’s decision on validity, since the decision is not controlling on the Office. See In re Swanson et al, 540 F.3d 1368, 1378 (Fed. Cir. 2008).

    A non-final holding of claim invalidity or unenforceability will also not be controlling on the question of whether a substantial new question of patentability or reasonable likelihood of prevailing is present.

    Only a final holding of claim invalidity or unenforceability (after all appeals) is controlling on the Office. In such cases, a substantial new question of patentability or reasonable likelihood of prevailing would not be present as to the claims held invalid or unenforceable. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).

  • (B) The Third Party Requester Was a Party to the Litigation.

    Final Holding upholding validity: The provisions of 35 U.S.C. 317(b) and 37 CFR 1.907(b) apply. Where a final decision was entered against a party in a Federal Court civil action (arising in whole or in part under 28 U.S.C. 1338) that the party did not sustain its burden of proving invalidity of a patent claim in suit, that party and its privies may not request inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in the civil action (as to those asserted by the patent owner, and/or challenged by the third party requester, and resolved in favor of the patent owner in the civil action). Further, an inter partes reexamination already requested by that party, or its privies, on the basis of such issues will not be maintained by the Office, i.e., the proceeding will be concluded. Note, however, that the statute does not preclude an ex parte reexamination by the same third party requester.

    In view of the above, when the examiner is aware that the third party requester was a party to previous Federal Court litigation as to the patent for which inter partes reexamination has been requested, the examiner must determine:

  • ""
    • (1) Was the Federal Court decision adverse to the third party requester as to at least one claim of the patent?
  • ""
    • (2) Was the Federal Court decision a final decision, after all appeals?
  • ""
    • (3) Is the issue being raised in the reexamination request the same issue as was raised in the Federal Court during the civil action, or an issue that the third party requester could have raised in the Federal Court during the civil action?
  • "" - If the answer to each of questions (1)-(3) is “yes” for all claims for which reexamination was requested in the proceeding, then the inter partes reexamination prosecution must be terminated. In such a case, the Central Reexamination Unit (CRU) Director will prepare a decision discussing the above considerations (1)-(3) and vacating the reexamination proceeding.
  • "" - If the answer to all of questions (1)-(3) is “yes” for one or more (but not all) of the claims for which reexamination was requested in the proceeding; those claims will not be treated. The examiner’s action will point out the claims not treated and the reason why, i.e., a discussion of the above considerations (1)-(3). The guidelines set forth above in subsection II.(A) will be used for the claims remaining.
  • "" - If the answer to question (1) or to question (3) is “no” for all claims for which reexamination was requested, then the examination of the reexamination proceeding will proceed without any discussion on the record of considerations (1)-(3), using the guidelines set forth above in subsection II.(A).
  • "" - If, for any claim for which reexamination was requested, the answer to both of questions (1) and (3) is “yes”, but the answer to question (2) is “no”, then examination of the reexamination proceeding will proceed using the guidelines set forth above in subsection II.(A). The examiner’s action will contain a discussion of considerations (1)-(3). If the examiner subsequently becomes aware that the Federal Court decision has become final, reexamination of the affected claims must be discontinued. If all claims being examined are affected, the reexamination will be vacated/terminated by the CRU Director as discussed above. See also subsection V. below.

Final Holding of invalidity: A final holding of claim invalidity or unenforceability (after all appeals) is controlling on the Office. In such cases, a substantial new question of patentability or reasonable likelihood of prevailing would not be present as to the claims held invalid or unenforceable. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988). Where all claims for which reexamination was requested are affected, the reexamination will be vacated/terminated by the CRU Director. A non-final holding of claim invalidity or unenforceability, however, will not be controlling on the question of whether a substantial new question of patentability is present.

  • (C) Specific Situations.

For a discussion of the policy in specific situations where a Federal Court decision has been issued, see MPEP § 2642 and subsection V. below.

Note the following two Federal Circuit decisions involving reexamination proceedings where the court affirmed the Office’s rejections even though parallel district court proceeding upheld the validity of the claims. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007) and In re Translogic Technology, Inc., 504 F.3d 1249, 84 USPQ2d 1929 (Fed. Cir. 2007).

In Trans Texas, the patent being reexamined was subject to an infringement suit, in which the district court had issued its claim construction ruling (in a district court opinion) as to the definition of a term. The parties ultimately reached a settlement before trial, and the district court issued an “Order of Dismissal with Prejudice.” The patent owner relied on that district court claim construction ruling in a reexamination proceeding, and argued that the Office was bound by that district court claim construction ruling, under the doctrine of issue preclusion. The Federal Circuit stated that issue preclusion could not be applied against the Office based on a district court holding in an infringement proceeding, since the Office was not a party to that earlier infringement proceeding.

In Translogic, a district court infringement suit proceeded in parallel with a reexamination proceeding. The district court upheld the validity of the patent in the infringement suit, while the reexamination examiner found the claim combination to be obvious. The examiner’s rejection was affirmed by the Board. The defendant (the alleged infringer) of the infringement suit appealed the district court decision to the Federal Circuit, while the patent owner appealed the Board’s decision to the Federal Circuit. The Federal Circuit consolidated the appeals, and then addressed only the patent owner’s reexamination appeal from the Board. The Federal Circuit affirmed the examiner’s conclusion of obviousness by relying upon and providing an extensive discussion of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).

Note also In re Swanson et al, 540 F.3d 1368, 88 USPQ 2d 1196 (Fed. Cir. 2008) where the Federal Circuit held that the prior federal court judgment upholding validity over a specific prior art reference (in Abbott Labs. v. Syntron Bioreseach, Inc., 334 F.3d 1343 (Fed. Cir. 2003)), did not preclude the Office’s finding that a substantial new question of patentability existed as to the same claims based on the same prior art reference applied in the same manner in the subsequent ex parte reexamination proceeding, and did not preclude the Office’s finding that the patent claims were unpatentable.

Finally, see In re Baxter International Inc., 678 F.3d 1357, 102 USPQ2d 1925 (Fed. Cir. 2012) (patent reexamination should take notice of a court decision but the Office need not come to the same conclusion as the court).

III.   REEXAMINATION WITH CONCURRENT LITIGATION BUT ORDERED PRIOR TO FEDERAL COURT DECISION

In view of the statutory mandate to make the determination on a request for reexamination within 3 months, the determination on the request based on the record before the examiner will be made without awaiting a decision by the Federal Court. It is not realistic to attempt to determine what issues will be treated by the Federal Court prior to the Court’s decision. Accordingly, the determination on the request will be made without considering the issues allegedly before the Court. If reexamination is ordered, the reexamination generally (see discussion immediately below) will continue until the Office becomes aware that a court decision has issued. At such time, the request will be reviewed in accordance with the guidelines set forth below.

In Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988), the Court of Appeals for the Federal Circuit stated the following as to the Office’s authority to stay a reexamination process pending the outcome of a Federal District Court case where invalidity is an issue:

"Whatever else special dispatch means, it does not admit of an indefinite suspension of reexamination proceedings pending conclusion of litigation. If it did, one would expect to find some intimation to that effect in the statute, for it would suggest the opposite of the ordinary meaning. But there is none."

"The Commissioner… has no inherent authority, only that which Congress gives. It did not give him authority to stay reexaminations; it told him to conduct them with special dispatch. Its silence about stays cannot be used to countermand that instruction."

The Ethicon case was decided as to ex parte reexamination, for which 35 U.S.C. 305 dictates in its last sentence:

“All reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office.”

For inter partes reexamination, however, 35 U.S.C. 314 provides a qualification as to conducting reexamination with special dispatch:

“Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.” [Emphasis added.]

35 U.S.C. 314 provides for special dispatch in inter partes reexamination “[u]nless otherwise provided by the Director for good cause.” Accordingly, where there is good cause for the Director of the USPTO to suspend (stay) reexamination proceedings pending the conclusion of litigation, a suspension will be effected. This matter will be approached on a case-by-case basis. See subsection V. below for an actual situation where there was pending litigation having the potential to terminate a reexamination prosecution under 35 U.S.C. 317(b), and a suspension was granted. If the examiner believes there is “good cause” to suspend (stay) reexamination proceedings, the case should be brought to the Office of Patent Legal Administration (OPLA) for consideration of such by a Reexamination Legal Advisor (RLA).

It should be noted that a suspension will not be considered on its merits prior to ordering of reexamination. Until that point, there is no proceeding to suspend, and the Office must issue its decision on the request within the statutorily mandated 3 months. Also, suspension will not be considered on its merits when there is an outstanding Office action. In order to ensure consideration on the merits of a petition to suspend where there is an outstanding Office action, the patent owner must: (1) provide a complete response to the outstanding Office action, and (2) include a petition to suspend under 37 CFR 1.182.

It should also be noted that if, pursuant to 35 U.S.C. 318, a court stays litigation as to the patent being reexamined, action in the reexamination proceeding would not be suspended. This is so because action in the reexamination proceeding would be needed to resolve the “issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order” set forth in 35 U.S.C. 318.

IV.   FEDERAL COURT DECISION ISSUES AFTER INTER PARTES REEXAMINATION ORDERED

Pursuant to 37 CFR 1.985(a), the patent owner in an inter partes reexamination proceeding must promptly notify the Office of any Federal Court decision involving the patent.

Upon the issuance of a holding of claim invalidity or unenforceability by a Federal Court, reexamination of those claims will continue in the Office until the decision becomes final. A non-final Court decision concerning a patent under reexamination shall have no binding effect on a reexamination proceeding.

Where an inter partes reexamination proceeding is currently pending and a final Federal Court decision issues after all appeals, the reexamination proceeding is reviewed to see if no substantial new question of patentability remains or reasonable likelihood of prevailing remains (as to one or more claims) due to holding of claims invalid, and to determine whether the provisions of 35 U.S.C. 317(b) and 37 CFR 1.907(b) apply as a result of a decision in a civil action arising in whole or in part under 28 U.S.C. 1338.

A final Court holding of invalidity/unenforceability is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims held invalid or unenforceable will be withdrawn from consideration in the reexamination. The reexamination will continue as to any remaining claims. If all of the claims being examined are finally held invalid or unenforceable, the reexamination will be vacated/terminated by the CRU Director as no longer containing a substantial new question of patentability or reasonable likelihood of prevailing and the reexamination prosecution will be terminated. If not all claims being examined were held invalid, a substantial new question of patentability may still exist as to the remaining claims. In such a situation, the remaining claims would be examined; and, as to the claims held invalid, form paragraph 26.80 should be used at the beginning of the Office action.

¶ 26.80    Claims Held Invalid by Court, No Longer Being Reexamined

Claims [1] of the [2] patent are not being reexamined in view of the final decision of [3]. Claims [1] were held invalid by the [4].

Examiner Note:

  • 1. In bracket 1, insert the claims held invalid.
  • 2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe et al).
  • 3. In bracket 3, insert the decision (e.g., ABC Corp. v. John Doe, 888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZ Corp. v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D. Cal. 1999)).
  • 4. In bracket 4, insert the name of the court (e.g., the Court of Appeals for the Federal Circuit, or the Federal District Court).

The issuance of a final Court decision after all appeals (in a civil action arising in whole or in part under 28 U.S.C. 1338) upholding validity during an inter partes reexamination, where the person who filed the request was a party to the litigation, will have the effect that the Office will discontinue examination of all claims affected by the validity holding (for issues raised or could have been raised as to those claims asserted by the patent owner, and/or challenged by the third party requester). If the provisions of 37 CFR 1.907(b) apply such that all of the claims in the reexamination proceeding cannot be maintained, the order to reexamine is vacated by the CRU Director if the decision was rendered prior to the order. If the decision was rendered subsequent to the order, reexamination is terminated. If the provisions of 37 CFR 1.907(b) apply to some of the claims, but not all of the claims in the proceeding; those claims to which 37 CFR 1.907(b) applies will not be treated. The examiner’s action will point out the claims not treated, and the reason why those claims cannot be maintained in the reexamination under 37 CFR 1.907(b). Action will be given on the remaining claims. Note that the provisions of 37 CFR 1.907(b)cannot be waived since they track the statute, 35 U.S.C. 317. See also subsection V. below.

The issuance of a final Court decision upholding validity during an inter partes reexamination, where the person who filed the request was not a party to the litigation, will have no binding effect on the examination of the reexamination. This is because the Court stated in Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988) that the Office is not bound by a court’s decision upholding validity and should continue the reexamination. The Court noted that District Courts and the Office use different standards of proof in determining invalidity and unpatentability, and thus, on the same evidence, could quite correctly come to different conclusions. Specifically, invalidity in a District Court must be shown by “clear and convincing” evidence, whereas in the Office it is sufficient to show non-patentability by a “preponderance” of the evidence. Since the “clear and convincing” standard is harder to satisfy than the “preponderance standard,” a court’s decision upholding validity is not controlling. Deference will, however, ordinarily be accorded to the factual findings of the court, where the evidence before the Office and the court is the same. If sufficient reasons are present, claims upheld by the court may be rejected in reexamination.

V.   DISCUSSION OF EFFECT OF LITIGATION WHERE REQUESTER WAS A PARTY TO THE LITIGATION

For inter partes reexamination, 35 U.S.C. 317(b) provides:

“Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit…, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action…, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.” [Emphasis added]

Where a final decision was entered against a party in a Federal Court civil action (arising in whole or in part under 28 U.S.C. 1338) that the party did not sustain its burden of proving invalidity of a patent claim in suit, then that party and its privies may not request inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in the civil action. Further, an inter partes reexamination already requested by that party, or its privies, on the basis of such issues will not be maintained by the Office; in such an instance, the prosecution will be terminated and the proceeding will be concluded. This is a statutory estoppel which can attach to an inter partes reexamination third party requester that is also a party to litigation concerning the patent for which reexamination has been requested.

35 U.S.C. 314(c) states:

Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.” [Emphasis added]

The statute thus authorizes the Director of the USPTO to suspend (stay) reexamination proceedings, where there is good cause to do so, pending the conclusion of litigation based on a potential for termination of a reexamination prosecution under 35 U.S.C. 317(b). Thus, a District Court decision that is pending appeal on the validity of the same claims considered in an inter partes reexamination proceeding may provide the requisite statutory “good cause” for suspension, due to the real possibility that the 35 U.S.C. 317(b) estoppel may attach in the near future to bar/terminate the reexamination proceeding. Any such fact situation is resolved on a case-by-case basis.

In any inter partes reexamination where the requester (or its privies) is also a party to ongoing or concluded litigation as to the patent for which reexamination has been requested, the potential for this statutory estoppel to attach must be considered. The following provides a discussion of the interaction of 35 U.S.C. 317(b), 35 U.S.C. 314, and the inter partes reexamination process.

Congress, in creating the inter partes reexamination statutory framework in 2002, borrowed heavily from the existing ex parte reexamination regime. For example, inter partes reexamination proceedings, like ex parte reexaminations, must be conducted with “special dispatch.” 35 U.S.C. 314(c). Unlike ex parte reexamination, however, Congress provided the Office with the statutory authority and discretion to suspend inter partes reexamination proceedings for “good cause.” See 35 U.S.C. 314(c).

Another difference between the two regimes is that Congress specifically provided estoppel provisions to shut down an inter partes reexamination of a patent claim when a “final decision” upholding the validity of that claim has been reached in a civil action or in a prior inter partes reexamination proceeding. See 35 U.S.C. 317(b); 35 U.S.C. 315(c). Thus, if a party’s challenge to the validity of certain patent claims has been finally resolved, either through civil litigation or the inter partes reexamination process, then (A) that party is barred from making a subsequent request for inter partes reexamination (or filing a new civil action) challenging the validity of those same claims, and (B) “an inter partes reexamination previously requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office.” Id.

The statute and legislative history of the estoppel provisions make it clear that the inter partes reexamination of a claim (requested by a party) must be terminated once a final decision upholding the validity of that claim (challenged by the same party) has issued “after any appeals,” not simply just after a district court decision which is still pending on appeal. While Congress desired that the creation of an inter partes reexamination option would lead to a reduction in expensive patent litigation, it nonetheless also provided in the statute that a court validity challenge and inter partes reexamination of a patent may occur simultaneously; but once one proceeding finally ends in a manner adverse to a third party, then the issues raised (or that could have been raised) with respect to the validity of a claim in that proceeding would have estoppel effect on the same issues in the other proceeding.

Taking the above into account, the following factors are to be considered in determining whether it is appropriate to refuse to order an inter partes reexamination, terminate the reexamination, or suspend action in the reexamination, based on litigation in which the reexamination requester is a party to the litigation.

  • (A) The 35 U.S.C. 317(b) estoppel applies only to patent claims that were litigated in the suit, i.e., litigated claims. The estoppel does not apply to non-litigated patent claims.

    Where there are non-litigated claims for which reexamination had been requested in the inter partes reexamination request, the reexamination proceeding is to go forward based on those non-litigated claims. If, however, during the reexamination proceeding, the patent owner disclaimed all the non-litigated claims, leaving only litigated claims, the proceeding is to be referred to the OPLA.

  • (B) The 35 U.S.C. 317(b) estoppel applies only to issues which the requester or its privies raised or could have raised in the civil action. The estoppel does not apply where new issues are raised in the request.

    If the request provides new art/issues not raised in the litigation (civil action), and which could not have been so raised, then estoppel does not attach. The patent owner has the burden of showing that the art and issues applied in the request was available to the third-party requester and could have been placed in the litigation.

  • (C) The 35 U.S.C. 317(b) estoppel applies only in a situation where a final decision adverse to the requester has already been issued.

    If there remains any time for an appeal, or a request for reconsideration, from a court (e.g., District Court or Federal Circuit) decision, or such action has already been taken, then the decision is not final, and the estoppel does not attach. A stay/suspension of action may be appropriate for the reexamination proceeding if the litigation has advanced to a late enough stage and there is sufficient probability that a final decision will be adverse to the requester; however, that is a matter to be discussed with the OPLA in any such instance.

  • (D) Is there a concurrent ex parte reexamination proceeding for the patent?

    As stated in MPEP § 2286: “The issuance of a final Federal Court decision upholding validity during an ex parte reexamination also will have no binding effect on the examination of the reexamination. This is because the court states in Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988) that the Office is not bound by a court’s holding of patent validity and should continue the reexamination.” If there is a concurrent ex parte reexamination proceeding having overlapping issues with an inter partes reexamination proceeding where the estoppel has the potential to attach, but no final decision has been issued, then the Office may in some instances (depending on the individual facts and circumstances), to go forward with statutorily required “special dispatch” as per Ethicon in a merged proceeding containing both the inter partes reexamination and the ex parte reexamination. This is a matter of administrative convenience to avoid rework and make the process more efficient. Again, OPLA should be consulted.

  • (E) Some examples of where this estoppel issue was actually addressed by the Office.

    In reexamination control numbers 95/000,093 and 95/000,094 (the ‘093 and ‘094 proceedings), action was suspended based on ongoing litigation. After a District Court decision adverse to requester, it was determined that “good cause” existed to wait for the outcome of the Federal Circuit appeal, because the reexamination proceedings were only at their beginning stages, while the concurrent litigation was potentially near its final resolution. It was noted that requester had chosen to permit the District Court litigation to proceed for three years before filing its requests for reexamination, the filing taking place only after judgment was entered in patent owner’s favor in the litigation. Had requester filed its requests for reexamination earlier, the reexamination proceedings would have been much farther along in the process, and may likely have been completed at the Office before the District Court issued its decision. Moreover, had requester filed its reexamination requests earlier in the litigation, the District Court might have stayed the litigation to await the Office’s decisions in the two reexamination proceedings. After choosing to go years through the entire District Court litigation proceeding without asking for the Office’s input, requester was not in a position to complain that a suspension of the ‘093 and ‘094 reexamination proceedings would deprive requester of a chance to obtain the Office’s decision, when there was a strong possibility that the Federal Circuit’s decision would estop the Office from issuing any decision at all. In short, requester could not have it both ways. Requester waited three years after the district court case began, and waited until after the District Court issued a final decision, such that its District Court litigation could in no way be affected by any decision on its reexamination requests. Requester’s delay was the reason that the ‘093 and ‘094 reexaminations could very well be mooted before any reexamination decision issued and the USPTO Director found “good cause” to suspend the proceedings. On May 22, 2006, the U.S. District Court, Eastern District of Virginia, in Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006), issued a decision upholding the Office’s finding of “good cause” to suspend the ‘093 and ‘094 inter partes reexamination proceedings. Requester chose its route (litigation) and had to deal with the consequences of its decision, i.e., a suspension of the reexamination proceedings.

    On the other hand, see reexamination control numbers 95/000,020, 95/000,071 and 95/000,072, for decisions in which action was not suspended, because the specific facts dictated otherwise.

VI.   LITIGATION REVIEW AND CRU APPROVAL

In order to ensure that the Office is aware of prior or concurrent litigation, the examiner is responsible for conducting a reasonable investigation for evidence as to whether the patent for which reexamination is requested has been, or is, involved in litigation. The investigation will include a review of the reexamination file, the patent file, and the results of the litigation computer search by the Scientific and Technical Information Center (STIC).

2686.05   Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review [R-11.2013]

The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review (“PTAB Review Proceeding”), if another proceeding (e.g., a reexamination proceeding) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter may proceed, including providing for stay, transfer, consolidation or termination of such matter or proceeding. Accordingly, if an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being reexamined, the reexamination proceeding must be referred to the examiner’s SPRS who will coordinate with the PTAB before taking any action on the reexamination proceeding.

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