2010 article, "Substantial New Questions of ," explained how meeting Changes to Reexamination that threshold is quite different from pro- posing a rejection of the claims. 4 Even a Under the America Invents Act very strong proposed rejection may not raise an SNQP, and, in any event, failure BY MATTHEW C. PHILLIPS & KEVIN B. LAURENCE OF tionable in PTO proceedings that to separately address the existence of an STOEL RIVES LLP efficiently render high-quality decisions. SNQP will doom a request. Inter partes reexamination was slow to The SNQP standard includes two dis- gain acceptance. Enacted in 1999 as part tinct requirements: (1) a showing that the of the American Inventors Protection Act, patentability question is new and (2) a this new version of reexamination gave showing that the patentability question is challengers significant participation rights substantial. The latter simply means that throughout the proceedings. The lack of a reasonable examiner would consider the participation rights in ex parte reexami- question to be important in deciding the nation was perceived to be the primary patentability of the claim. That is usually reason reexamination had not become a easily shown by a requester and not the popular alternative to litigation. Yet, the subject of controversy. Matt Phillips Kevin Laurence bar did not rush to embrace this new type of reexamination. Part of the sluggish start The "new question" requirement, how- ever, has proven to be where the action is. uch has been and will be written was attributable to the fact that it took time Usually, new , i.e., art never before about the new review and supple- for there to be patents eligible for inter considered by the PTO in connection with mental examination proceedings partes reexamination, as the new provi- M the , raises an SNQP, provided it established by the America Invents Act sions applied only to patents issuing from (AIA). Our May 2010 article introduced applications filed on or after November 29, is not cumulative to the old prior art. The post-grant and , as those 1999. Another reason for the reluctance to PTO has therefore required that reexami- proceedings were contemplated in the embrace inter partes reexamination was fear nation requesters demonstrate that the new Senate's 2010 version of patent reform leg- of its estoppel provisions. prior art contains "a new, non-cumulative islation,' and our June 2010 article did the By the time the PTO formed the Central technological teaching."' Invariably, that same for supplemental examination. 2 The Reexamination Unit in 2005, inter partes requires a discussion of the patent's origi- AIA puts those three new proceedings plus reexamination was turning a corner. It nal prosecution history to discern the defi- a temporarily available proceeding for chal- became more popular as fears of estop- ciencies in the old prior art and thus the lenging business patents into effect pel subsided and more patents became reasons the patent was originally granted, on September 16, 2012, and we will write eligible for inter partes reexamination. It as well as some comparison of the new more about them in future articles here as soon became apparent that it was a more prior art to the old prior art to show that the PTO promulgates rules to implement effective tool for challenging a patent, as the new art's technological teaching is those new proceedings. compared to ex parte reexamination, and new and non-cumulative. In the authors' In the meantime, the AIA has also made its popularity began to soar by about 2007. experience, showing the existence of an important changes to reexamination, and The golden age of inter partes reexamina- SNQP can sometimes take more pages in those changes generally went into effect tion has been from about 2007 to the recent the request than proposing rejections based on September 16 of this year. This article enactment of the AIA. on the new art. discusses those changes. Despite its popularity, inter partes reex- The "new" requirement is further com- amination has not been perfect. The pro- plicated by the possibility that old prior art THE FINAL YEAR FOR INTER PARTES ceedings can be quite slow, and petition can sometimes raise a new question. That REEXAMINATION practice can become a major distraction. can occur when the reexamination request Sunseriing — A Requiem for Inter Partes Fortunately, the new review proceedings casts the old art in a new light.° Reexamination seem to be designed to avoid those flaws. Under the AIA, the SNQP threshold con- The AIA marks the beginning of the end New Initiation Threshold tinues to apply to ex parte reexaminations, of inter partes reexamination. Requests for The last year of inter partes reexamina- but the threshold for inter partes reexami- inter partes reexamination filed on or after tion, under the AIA, will be markedly dif- nation changed to showing "a reasonable September 16, 2012 will not be recognized ferent from prior years in one key respect: likelihood that the requester will prevail by the PT0.3 On that date, inter partes review The threshold for ordering inter partes with respect to at least 1 of the claims chal- will replace inter partes reexamination. reexamination. lenged in the request."' This new threshold History will likely show that inter panes Prior to the AIA, the threshold was the is applicable to all inter partes reexamina- reexamination was an important transi- existence of a "substantial new question tion requests filed on or after September tional step toward what will hopefully be of patentability" (SNQP). That was — and 16, 2011. It will also be the same threshold an effective suite of options for challengers will continue to be — the same threshold for used to judge inter partes review petitions and patent owners to remove or revise ques- ordering ex parte reexamination. Our April beginning September 16, 2012.8

22 INTELLECTUAL PROPERTY TODAY NOVEMBER, 2011 This new threshold is meant to be higher CHANGES TO EX PARTE REEXAMINATION Citation of Patent Owner Statements than the SNQP threshold. The legislative The AIA leaves ex parte reexamination Regarding Claim Scope history of the MA is replete with comments largely unchanged. The most significant The AIA also amends 35 U.S.C. § 301, to that effect.9 Congress was aware that well change is that the new review proceedings which concerns the citation of printed pub- over 90% of reexamination requests are will estop ex parte reexamination. The only lications in a patent file and forms the basis granted, and it wanted to impose a tighter other changes are fairly minor. They are for ex parte reexamination. As amended standard. (1) elimination of the option to appeal from by the AIA, § 301 will additionally permit It is unclear what a "reasonable likeli- the Board to district court; (2) addition of anyone to submit "statements of the pat- hood" means precisely. May it be less new statutory language to echo the SNQP ent owner filed in a proceeding before a than 50% or must it be over 50%? By how standard; and (3) expanded citation of Federal court or the Office in which the much? Those are questions that should information in issued patent files to permit patent owner took a position on the scope eventually be answered as the PTO makes citation of patent owner statements regard- of any claim of a particular patent."'s The decisions under this standard. ing claim scope. PTO can then refer to those statements dur- Interestingly, Congress chose different ing a reexamination or review proceeding. Estoppel of Ex Parte Reexamination by — seemingly clearer — words to express the The amendment to § 301 will take effect on Earlier Review threshold for instituting post-grant review: September 16, 2012. In the past and presently, nothing could "more likely than not that at least 1 of estop a requester from filing a request for the claims . . . is unpatentable."" That CONCLUSION ex parte reexamination. However, the new language seems to mean anything more post-grant and inter partes review proceed- The familiar reexamination practice of than 50%. A "reasonable likelihood" is ings have estoppel provisions that extend the past is dissipating. Within the next presumably different, but how it differs is to any "proceeding before the Office" and year, that practice will be a vastly different not immediately apparent. therefore include an ex parte reexamina- reexamination-and-review practice with a What is clear is that the new standard tion." The estoppel will apply claim by variety of different proceedings. In the does not incorporate any notion of newness. claim and extend to any ground that the meantime, the AIA has already changed The reasonable likelihood of prevailing petitioner raised or reasonably could have reexamination practice, as this article has goes directly to the strength of the merits raised during the review. The estoppel will discussed. a. of the proposed rejections. Inter panes be trigged when the Board issues a final reexamination requesters should no longer written decision in the review. ENDNOTES need to separately explain how their pro- 1. Matthew C. Phillips & Kevin B. Laurence, Post- Elimination of Appeals to District Court posed rejections arise from new questions Grant Proceedings Under the Patent Reform Act of The MA conclusively eliminates the 2010, Intell. Prop. Today 28-30 (May 2010). based on new, non-cumulative technologi- possibility that the patent owner could cal teachings in the cited prior art. Instead, 2. Kevin B. Laurence & Matthew C. Phillips, appeal an adverse Board decision to dis- Supplemental Examination Under the Patent inter partes reexamination requesters can trict court. The AIA amends 35 U.S.C. §§ Reform Act of 2010, Intell. Prop. Today 8-9 (June now focus on demonstrating the strength of 141(b) and 306 to make that clear, leaving 2011). their proposed rejections. the Federal Circuit as the only path for 3. 37 C.F.R. § 1.913(b) (as amended, as reported at 76 Fed. Reg. 59,058 (Sept. 23, 2011)). The PTO immediately revised the inter appeal of a reexamination decision. Prior partes reexamination rules at 37 C.F.R. §§ 4. Matthew C. Phillips & Kevin B. Laurence, to the AIA, those statutes were ambiguous Substantial New Questions of Patentability, Intell. 1.913-.931, essentially to replace all refer- as to whether an appeal could be taken to Prop. Today 34-35 (Apr. 2010). ences to "substantial new question of pat- the district court from a Board decision in 5. MPEP § 2216. entability" with "showing of a reasonable a reexamination. That change was effective 6. Id. §§ 2216, 2258.01(A). likelihood that the requester will prevail immediately upon enactment and appli- 7. 35 U.S.C. § 312(a) (as amended by AIA, effective with respect to at least one of the claims cable to all appeals pending at the Board Sept. 16, 2011). challenged" or words to that effect." Thus on or after that date. 8. 35 U.S.C. § 314(a). an inter partes reexamination request must 9. H.R. Rep. No. 112-98 (Part 1), at 47, 165 (2011); More Statutory Language Resembling the include (1) such a showing in addition to Crossing the Finish Line on Patent Reform: SNAP Standard (2) "a detailed explanation of the perti- What Can and Should Be Done, Subcomm. The AIA provides that, when decid- on Intellectual Property, Competition, and the nency and manner of applying" the prior art ing when to order ex parte reexamination, Internet of the H. Comm. on the Judiciary, 112th to the claims (i.e., a proposed rejection).'2 the PTO "may take into account whether, Cong., at 32-33, 45, 49-50 (Feb. 11, 2011) (state- However, the two components of a request ment of Hon. Paul R. Michel); 112 Cong. Rec. and reject the . . . request because, the S5428 (daily ed. Sept. 8, 2011) (statement of Sen. are not so different in substance as under same or substantially the same prior art Patrick Leahy). the SNQP threshold. or arguments previously were presented 10. 35 U.S.C. § 324(a). Notwithstanding the foregoing, if a dis- to the Office."' This provision, although 11. 76 Fed. Reg. 59,058 (Sept. 23, 2011). cussion of the patent's prosecution his- not mandatory, seems to restate the SNQP 12. 37 C.F.R. § 1.915(b)(3). tory and old prior art helps make the standard. This provision will go into effect 13. 35 U.S.C. §§ 315(e)(1), 325(e)(1). proposed rejections more persuasive, then as of September 16, 2012, when it will also 14. 35 U.S.C. § 325(d). the requester should still include that apply to post-grant and inter partes review 15. 35 U.S.C. § 301 (as amended by MA, effective discussion. proceedings. Sept. 16, 2012).

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