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From the PLI Course Handbook:

Parallel Patent Litigation and Reexamination Proceedings 2007: Keeping Your Case on Track

No. 13599

PATENT REEXAMINATION AND THE CROSSOVER WITH LITIGATION

Rajiv P. Patel, Fenwick & West LLP

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PATENT REEXAMINATION AND THE CROSSOVER WITH LITIGATION

Rajiv P. Patel, Fenwick & West LLP

Introduction 3

Overview of Reexamination 4

Basis for Reexamination. 8

Initiating Reexamination. 10

Action on the Request 12

Ex Parte Reexamination Prosecution 14

Inter Partes Reexamination Prosecution 17

Reexamination Crossing Over with Litigation 23

The Defendant’s Considertions 23

The Plaintiff’s Considerations 29

Conclusion 31

About the Author 32

Introduction

Increasing, companies today find themselves having to assert or defend against patent infringement claims. Those asserting patents seek to leverage rights secured from the U.S. Patent and Trademark Office against potential infringers that offer products and services without appropriate licenses. Patents deployed for strategic business purposes must be carefully studied to determine the context, scope and strength of their claims. Moreover, in some instances patentees may seek to further strengthen their patent position, particularly when attacked by alleged prior art that continues to fall short of intended allegations.

On the other side, those defending against patent infringement claims look towards noninfringement of the particular patent or may seek to invalidate a patent in whole or in part. In taking a position on noninfringement, a potential defendant may study the effect of a narrower scope of the claims than were issued. In asserting invalidity of the claims, the potential defendant may investigate whether the claims are invalid, and thus should not have been patentable, in view of certain prior art.

For both potential plaintiffs and defendants at stake in these patent battles is a potential injunction against a product or service or millions of dollars in licensing fees or patent damages award, in addition to the millions of dollars it may take to litigate the patent. With such high stakes at issue, one potentially valuable administrative process available to both parties is a patent reexamination.

Initially introduced as an ex parte administrative process in 1980 and thereafter as an inter partes process in 1999, these processes are increasingly used in cases where patents are about to be the subject of or already are involved with litigation. This article explores what patent reexamination and its crossover with patent litigation.

Overview of Reexamination

A reexamination is an administrative process in the U.S. Patent and Trademark Office (“Patent Office”) in which the Patent Office examines a previously issued U.S. patent to determine whether claims of that patent are valid (and patentable) in view of prior art reference documents. As noted above, examination can be either ex parte[1] or inter partes[2].

Ex parte means the reexamination proceedings are primarily between an examiner at the Patent Office and a patent owner. Ex parte patent reexamination was first introduced in 1980. Congress’ intent behind reexamination was (1) to settle validity disputes more quickly and less expensively than protracted litigation, (2) allow courts to refer patent validity questions to the Patent Office and (3) reinforce investor confidence in certainty of patent rights by providing the Patent Office with a broader opportunity to review doubtful patents.[3]

For a patent owner advantages of ex parte reexamination to include determining the validity and scope of their patents in a less threatening environment than a judicial proceeding. Moreover, the patent owner has control over the process because they may amend their claims, present arguments to the examiner and interview the examiner in an effort to maintain a valid patent in view of the prior art references. However, a significant risk for the patent owner is invalidation of their patent if the examiner and subsequent appeals process rejects all claims in the reexamined patent.

For a third-party a benefit of ex parte reexamination is challenging a patent in a less costly forum than a court proceeding. Particularly for complex technology, a patent examiner may have better perspective to analyze invalidating prior art than judges and juries. Strategically, the third-party may use the process to limit the claims sufficiently to avoid infringement or stay a patent litigation or judgment in court until the Patent Office has an opportunity determine the validity of the patent.

Despite Congress’ intent behind ex parte reexamination, third parties historically have not used the process as frequently as anticipated. One reason is because the third-party is unable to partake in the process of determining the validity and scope of challenged patent claims in a meaningful manner.

To address these historical concerns, Congress introduced inter partes reexamination as a part the American Inventors Protection Act (“AIPA”) of 1999.[4] Inter partes means that the third-party may now actively participate in the reexamination process between the examiner and the patent owner. Hence, the third-party has an opportunity to actively argue or present evidence in rebuttal during the process. The third-party may also appeal an adverse decision by an examiner to the Patent Office Board of Appeals and Interferences, the U.S. District Court for the District of Columbia, or to the Federal Circuit.[5]

Strategically, because the process is not burdened by rules of judicial proceedings (e.g., discovery, motions, etc.), the inter partes reexamination potentially resolves disputes quicker then litigation. Further, unlike litigation, patents are not presumed valid in inter partes reexamination. Therefore, a third-party does not have to provide “clear and convincing” evidence to invalidate a patent. Hence, for complex technology it may prove easier to have an experienced examiner appreciate prior art evidence to invalidate or narrow patent claims rather than a judge or jury that may not have experience in the particular technology area.

However, there are two significant drawbacks of inter partes reexamination. First, it is only available for reexamination of original patent applications[6] filed on or after November 29, 1999.[7] Hence, the process is unavailable to challenge a substantial number of patents.

Second, the third-party is estopped from later asserting in any civil action, or in a subsequent inter partes reexamination, the invalidity of any claim finally determined to be valid on any ground the third-party requester raised or could have raised in the inter partes reexamination.[8] Hence, a third-party could be defenseless in subsequent invalidity challenges in court or inter partes reexaminations.

With an overview of the reexamination basics in mind, the following sections provide additional details of the reexamination processes.

Basis for Reexamination

Both ex parte or inter partes reexamination may be initiated when there is “a substantial new question of patentability.”[9] This new question of patentability must be based upon a prior art document, namely another patent or printed publication.[10] The substantial new question of patentability and the prior art document are set forth in a Request for Reexamination (“reexamination request” or “request”).[11]

Prior to the High Technology Technical Amendments Act of 2002 (the “Amendment”), per the Federal Circuit ruling in In re Portola Packaging,[12] only prior art documents not previously before an examiner at the Patent Office could be used to initiate a reexamination proceeding. The Amendment overturned the ruling in Portola Packaging so that any prior art document, including one previously cited, can now be used to initiate reexamination provided it raises a substantial new question of patentability.

To help ensure that the Patent Office is considering a substantial new question of patentability, requesters seeking reexamination should clearly set forth in detail what the requester considers the “substantial new question of patentability” to be in view of prior patents and printed publications.[13] This is accomplished through a statement in the reexamination request as to how the prior art is applied. Specifically, it includes an “identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.”[14] In addition, a request should point out how any questions of patentability raised are substantially different from those raised in the previous examination of the patent.[15] However, the request should not be based on public use, on sale or fraud basis as those are not considered by the Patent Office.[16]

Initiating Reexamination

The Patent Office rules provide that any person at any time during the period of enforceability of a patent may initiate an ex parte reexamination.[17] The “any person” includes the Patent Office, the patent owner, or a third party may initiate a reexamination process. When initiated by a third-party, that third party may remain anonymous in ex parte reexamination.[18] In contrast, for inter partes reexamination the third-party must identify themselves as the real party in interest because the third-party (including its privies) may not file subsequent inter partes reexamination requests during the pendency of a present inter partes reexamination.[19]

In both ex parte and inter partes reexamination, the initiating third-party must serve copies of the reexamination request to the patent owner.[20] Further, if the request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity.[21]

In addition, when a third-party files a reexamination request, the patent owner is not permitted to respond to the request while the request is pending at the Patent Office.[22] Any papers filed prior to a decision on the request are not considered and will be returned.[23]

Action on the Request

The ex parte or inter partes reexamination request is accorded a filing date on the date which the request satisfies all the requirements for the appropriate request.[24] Once the request requirements are met, the Patent Office must decide on whether to grant the request within three months of the filing date.[25] This decision on whether to grant the request, as well as the subsequent reexamination, is handled by the Central Reexamination Unit (CRU) within the Patent Office.[26]

In deciding whether to grant a reexamination request, an examiner must determine whether “a substantial new question of patentability” affecting any claim of the patent has been raised.[27] In making this determination, the examiner looks to the request, which requires “a statement pointing out each substantial new question of patentability based on prior patents and printed publications.”[28] If the examiner concludes that a substantial new question is found, depending on the request an order for ex parte or inter partes reexamination of the patent is issued.[29]

When reexamination is ordered in inter partes reexamination, it may be accompanied by an initial Office action on the merits.[30] However, when reexamination is ordered in ex parte reexamination, a patent owner is given at least two months to file a statement on the new question of patentability, including any proposed amendments.[31] This statement is optional for the patent owner. If filed, the statement should clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations.[32]

Although the ex parte reexamination process ultimately involves only the examiner and the patent owner, when a third party initiates reexamination, the process is initially may be quasi-inter partes. Specifically, if the patent owner may files the optional statement in response to the reexamination order, the third-party can file a reply to the statement.[33] Thereafter, the third-party does not participate in the reexamination process,[34] although the third-party continues to receive all correspondence between the patent owner and the Patent Office during the proceeding.

Ex Parte Reexamination Prosecution

Once the period passes in ex parte reexamination for the patent owner’s statement, and if applicable, the third-party reply to the statement, the reexamination is queued for substantive examination. Specifically, an examiner issues an Office action setting forth whether claims are rejected, objected to or allowed and, where appropriate, the basis for such conclusion. Thereafter, for claims rejected and/or objected to the patent owner must respond within a time period as set within the Office action.

Prosecution of ex parte reexaminations must be conducted with “special dispatch.”[35] In particular, the first action on the merits should be completed within one month of the filing date of the requester’s reply[36] or, if there is no requestor other than the patent owner, within one month of the filing date of the patent owner’s statement.[37] If no submissions are made in the contexts, then the first action on the merits should be completed within one month of any due date for such submission. Mailing of the first action should occur within six weeks after the appropriate filing or due date of any statement and any reply to it.[38] It is noted that any reexamination cases involved in litigation, will have priority over all other cases.[39]

Prosecution in ex parte reexamination has some nuances compared with conventional prosecution. For example, one difference is how matter omitted in a reexamination proceeding is identified in amendments. Specifically, such omitted matter is indicated by enclosed brackets rather than strikethrough.[40] Another difference involves requests for extensions of time to respond to an Office action. Specifically, time for taking any action is extended only for sufficient cause and for a reasonable time specified.[41] Moreover, any request for such extension must be filed on or before the day on which action by the patent owner is due.[42] The regulations make it clear that in no case will the mere filing of a request effect any extension.[43]

Another important distinction involves final rejections (or actions) and after final practice. In particular, the Patent Office intends for the second Office action in the reexamination proceeding following the decision ordering reexamination to be made final in accordance with the guidelines that are set forth in MPEP § 706.07(a), although the prosecution should not be prematurely cut off when the patent owner seeks to define the claimed invention to which they are entitled.[44] Nevertheless, the patent owner should be aware that a reexamination proceeding may result in the final cancellation of claims from the patent and that the patent owner does not have the right to renew or continue the proceedings by re-filing of a continuation application or a request for continued examination (“RCE”).[45]

Once a final rejection is entered, the patent owner no longer has any right to unrestricted prosecution. At this point further amendments are governed by 37 CFR § 1.116. Although RCE practice is unavailable to the patent owner, the patent owner may seek to continue prosecution through a petition process that essentially is a request for continued reexamination (“RCR”).[46] In pursuing this petition, the patent owner may have to set forth how amendments to the claims would further prosecution to resolve the reexamination with special dispatch. If furtherance of prosecution seems unlikely, the patent owner may appeal the final rejection to the Board of Patent Appeals and Interferences.[47] However, consistent with the ex parte reexamination process, a third-party is not permitted to appeal a reexamination decision.

An ex parte reexamination proceeding cannot be abandoned. Rather, when the ex parte reexamination proceeding concludes, the Patent Office issues a “Notice of Intent to Issue Ex Parte Reexamination Certificate” (NIRC) that indicates patentable claims (confirmed or allowed) and cancelled claims.[48] The reexamination proceeding then closes with the issuance and publication of a reexamination certificate.[49] The certificate officially notes cancellation of any claim of the patent finally determined to be unpatentable, confirmation of any claim of the patent determined to be patentable, and incorporation in the patent any proposed amended or new claim determined to be patentable.[50]

Inter Partes Reexamination Prosecution

Similar to ex parte reexamination, inter partes reexamination also should be conducted with special dispatch.[51] As previously noted, in inter partes reexamination the reexamination order may be accompanied by an Office action on the merits.[52] Similar to conventional prosecution, the Office action on the merits details whether and what claims are rejected, objected to, and/or allowed and on what basis.[53]

The patent owner must respond to the Office action within a set time limit, typically within two months.[54] In addition, similar to ex parte reexamination prosecution, amendments should be made as set forth in 37 CFR § 1.530(d)-(k)[55] and extensions of time must be requested in advance and will only be granted for sufficient cause.[56] In addition, in inter partes reexamination written comments by both the patent owner and third-party requester (further described below) are limited to 50 pages, exclusive of the amendments, appendices of claims, and reference materials such as prior art references.[57]

Each time a patent owner files a response to an Office action, a third-party requester may once file written comments within a period of 30 days from the date of service of the patent owner’s response. [58] This time cannot be extended and papers submitted late are refused consideration.[59] These comments must be limited to issues raised by the Office action or the patent owner’s response.[60] The third-party requester may submitter may use the opportunity to comment to submit prior art, which otherwise is limited once the inter partes reexamination is ordered. The comments (as well as submission of prior art) may be necessary to rebut a finding of fact by the examiner, rebut a response of the patent owner, or explain when the submitted prior art first became known or available to the third-party after the filing of the request for inter partes reexamination.[61]

In limited circumstances, a patent owner may file a supplemental response to address comments of the third-party. However, the supplemental response will be entered only where the patent owner has made a showing of sufficient cause[62] as to why it should be entered.[63]

After receive the responses from the patent owner and the third party, the Patent Office determines whether the proceeding is ready for closure, referred to as an Action Closing Prosecution (ACP). [64] The ACP is not issued if there is a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment, or if the issues are not yet clearly defined.[65] The Patent Office will issue an ACP when on a second (or subsequent time) at least one claim remain rejected or a determination of patentability is made of all the pending claims.[66] When claims remain rejected, the ACP has attributes similar to a final action in ex parte proceedings, but it is not a final action and there is no appeal from it.[67]

In response to the ACP, the patent owner may file a patent owner submission and, if filed, the third-party requester can response to that submission.[68] If no submission is filed or the Patent Office will not modify their position in response to a submission, the Patent Office will issue a Right of Appeal Notice (RAN).[69] An appeal can only be taken upon issuance of the RAN.[70] Appeals to the Board of Patent Appeals and Interferences and to the United States Court of Appeals for the Federal Circuit are governed under part 41 of 37 CFR.[71] Prior to 2002 the third-party requester had no opportunity to appeal decisions of the Board of Patent Appeals and Interferences to the Federal Circuit. In 2002, the statute was amended to provide the third-party requester an opportunity to appeal from the Board of Appeals and Interferences to the United States Court of Appeals for the Federal Circuit.[72]

When the inter partes reexamination proceeding concludes, the Patent Office issues a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). In addition, for each claims found to be patentable, a reason for patentability is provided.[73]

The NIRC is appropriate in five instances. First is when there is no timely response by the patent owner to an Office action requiring a response.[74] Second is after a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal. Third, is after filing of a notice of appeal, where all parties who filed a notice of appeal or notice of cross appeal fail to timely file an appellant brief (or fail to timely complete the brief, where the appellant brief is noted by the examiner as being incomplete). Fourth is after a final decision by the Board of Patent Appeals and Interferences, where there is no further timely appeal to the Court of Appeals for the Federal Circuit nor is there a timely request for rehearing by the Board. Fifth is after the Federal Court appeal process has been completed and the case is returned to the examiner.[75]

As with ex parte reexamination, an inter partes reexamination cannot be abandoned.[76] Instead, when the reexamination proceedings close, the Patent Office issues and publishes a reexamination certificate. The inter partes reexamination certificate cancels any claim of the patent finally determined to be unpatentable, confirms any claim of the patent determined to be patentable, and incorporates in the patent any proposed amended or new claim determined to be patentable.[77]

Reexamination Crossing Over with Litigation

Having understood the basics of ex parte and inter partes reexamination, one area in which reexamination is gaining prominence is in the context of crossing over with patent litigation. In this context, often the defendant initiates the reexamination. However, in some instances a patent owner (plaintiff) may initiate a reexamination as a process to further validate or appropriately scope claims in a patent prior to entering the heart of litigation. This section takes a closer look at reexamination in this litigation context.

The Defendant’s Considerations

In parallel with a patent litigation before a district court, a defendant may decide to file as a third-party in the Patent Office a reexamination of a patent in suit. In doing so, the defendant also may try to obtain a stay of the litigation, particularly for an inter partes reexamination. [78] In seeking a stay, a defendant may hope to achieve significant cost savings by challenging the patent in an administrative forum that is free an apart from the costly burdens of litigation such as discovery and/or motion practice.

Whether a stay is granted, depends on the particular court. “The district court has the inherent power to control its own docket, including the power to stay proceedings.”[79] In addition, “[t]he power to stay proceedings is incidental to the power inherent in every court to control the disposition of the causes on its docket with economy of time and effort for itself, for counsel, and for litigants.”[80] As to “[h]ow this can best be done calls for the exercise of judgment, which must weigh competing interests and maintain an even balance.”[81]

When deciding whether to stay litigation pending a reexamination, “courts typically consider three factors: (1) whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set.”[82] Essentially, courts determine whether the benefits of a stay outweigh the inherent costs based on these factors.

In addition to seeking a stay of the litigation, why a defendant may file a parallel reexamination may vary. Ideally, the defendant may seek to invalidate one or more claims in a forum that only needs a preponderance of evidence rather than clear and convincing evidence. Moreover, where particularly complex technology must be understood, challenging validity of a patent in the Patent Office may provide a better opportunity in front of examiners who are technically experienced.

Challenging validity has become particularly intriguing in view of the recent Supreme Court decision in KSR International Co. v. Teleflex Inc.[83] Prior to this decision, for years both the courts and the Patent Office applied a “teaching- suggestion-motivation” (TSM) test in determining whether a claimed invention was obvious. That is, a claimed invention would be obvious if some motivation or suggestion to combine prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.

In KSR, the Court rejected this approach as being to rigid to determine obviousness and instead broadened the inquiry. The Court began looking at not at why a patent should be allowed, but rather why it should not be allowed. Specifically, the Court stated that

a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.[84]

To help drive at the obviousness inquiry, the Court highlighted two aspects. First, when looking at what is “obvious” rather than looking at what the patentee was attempting to solve, the Court stated that “what matters is the objective reach of the claim [so that if] the claim extends to what is obvious, it is invalid”.[85]

Next, rather than looking at whether a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem, the inquiry should be broadened to consider common sense. Specifically, the Court stated:

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.[86]

Applying the KSR decision to a reexamination context may broaden the inquiry of whether a substantial new question of patentability exists. For example, where a patent was previously granted because the prior art did not explicitly or implicitly teach, suggest, or motivate to combine references, the inquiry may now need to consider whether there were other reasons to combine known elements. This may mean that post-KSR a defendant may have a better opportunity to challenge a patent in the Patent Office based on obviousness.

Even if a patent cannot be invalidated through reexamination, a defendant may achieve other benefits through the process. In some instances, claim amendment could be narrow the scope of protection so that infringement may be avoided. Narrowing of claims, even when not sufficiently narrowed from a defendant’s perspective, still provides benefits such as file history estoppel or other evidence that may be helpful in claim construction in the litigation itself. Claim amendments may also allow for intervening rights. Specifically, when claims are amended some infringement may be permitted without incurring liability of damages.[87]

Despite the above benefits of filing a reexamination in the context of a parallel patent litigation, there could be significant drawbacks that may suggest that a defendant not file a reexamination request. For example, the patent owner (plaintiff) may successfully narrow the claim with limitations that avoid invalidity, yet still cover the accused product or service.

Further, considering that a patent is presumed valid, that presumption could be “lost” if the patent emerges from reexamination with little to no change in claim scope. This can be particularly highlighted in instances when a patent emerges from reexamination post-KSR. The defendant may be able to counter this issue in an ex parte reexamination. In particular, the defendant may file the reexamination request based on certain references and reserve others for litigation or subsequent ex parte reexamination proceedings. However, the defendant may be unable to use this approach for inter partes reexamination.

With an inter partes reexamination request, the defendant may face collateral estoppel issues. Specifically, the defendant would be estopped from asserting in a later litigation the invalidity of any claim that was determined to be valid and patentable on any ground that the defendant raised, as a third-party requester, during the reexamination.[88] In addition, the defendant can only file one request for inter partes reexamination. Thus, the defendant must conduct the prior art search and analysis before filing the request.

To counter these downsides of inter partes reexamination, the defendant should diligently search and analyze prior art patents and publications prior to filing the request. In addition, the defendant can assert invalidity based on newly discovered prior art that was unavailable to the defendant or the Patent Office during the inter partes reexamination proceedings.[89] In addition, the defendant may develop other invalidity theories such as prior public disclosure, public use, sale, or offer for sale.

The Plaintiff’s Considerations

While a patent owner/plaintiff would not initiate an inter partes reexamination when on the verge of or while in litigation, they may decide to strategically initiate an ex parte reexamination. One reason for doing so is to ensure that claims of a patent that will be, or are, asserted are valid in view of known prior art. The scope of this prior art could vary, for example, from an anticipating reference that may be found in a pre-litigation context to an obviousness combination that could be problematic in view of the Supreme Court KSR decision.

Using ex parte reexamination, the patent owner may be able to reduce the risk of losing the patent the entire patent in litigation due to invalidity based on references. The ex parte reexamination process allows the patent owner to negotiate with the examiner an appropriate scope of claim protection without having a third-party (e.g., defendant) interfere in the process and unnecessarily cloud issues regarding patentability.

For the patent owner, one challenge in the reexamination process will be handling obviousness rejections post-KSR. In particular, the patent owner will need to be vigilant in watching for and addressing whether the Patent Office gets drawn into using hindsight bias and relies upon ex post reasoning when rejecting claims based on obviousness.[90]

A patent owner that emerges successfully from the reexamination process with appropriately scoped claims will find that a patent may now have significantly more value. Having essentially been twice examined and having withstood challenges such as obviousness post-KSR, the patent owner may have a higher degree of comfort in countering a validity attack in a subsequent patent litigation.

Conclusion

Reexamination is now emerging as a viable mechanism for challenging patents in an administrative forum. Moreover, it also has emerged as a valuable tool in the context of patent litigation for third-parties (e.g., defendants) and patent owners (plaintiffs). Hence, both patent owners and third-parties should not incorporate a careful study pros and cons of reexamination in their patent litigation strategy.

About the Author

Rajiv P. Patel is a partner in the Intellectual Property/Patent Group of Fenwick & West LLP. His practice includes a focus on patent procurement, dispute and transaction matters.

In patent procurement matters, Mr. Patel has prepared and prosecuted patents in a wide range of electrical, mechanical and software technologies before the U.S. Patent and Trademark Office (USPTO). His prosecution experience before the USPTO includes appeals before the Board of Patent Appeals and Interferences (BPAI). In addition, Mr. Patel has counseled companies on strategic uses of patent reissue proceedings and has actively prosecuted such proceedings. Further, Mr. Patel has developed and executed global patent strategies involving patent procurement in Europe, Canada, Australia, Japan, Korea, China, Taiwan, Brazil and India.

In patent dispute matters, Mr. Patel has counseled and partaken in reexamination proceedings before the USPTO and litigation proceedings in U.S. District Courts. The disputes have involved technology areas that include solid-state memories, electronic gaming, Internet technologies, and interactive television.

In patent transaction matters he has been involved with negotiations of patent and intellectual property (IP) licenses in a variety of business contexts. For example, he has led IP audit and due diligence matters for mergers and acquisitions, venture funding, initial public offerings private equity financings, bankruptcy proceedings, and securitizations.

Mr. Patel was Adjunct Professor of Law at the University of California, Hastings College of the Law, where he taught a patents course. He currently serves on the Dean’s Leadership Council of Franklin Pierce Law Center and the Dean’s Executive Committee at Rutgers University, School of Engineering.

Mr. Patel received his law degree (J.D.) from Franklin Pierce Law Center, a Master of Intellectual Property degree from Franklin Pierce Law Center, and a Bachelor of Science degree in electrical engineering (with high honors) from Rutgers University, School of Engineering. Mr. Patel is a member of the State Bar of California and Registered to Practice before the USPTO.

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[1] 35 USC § 301, et seq.

[2] 35 USC § 311, et seq.

[3] Patlex Corp. v. Mossinghoff, 758 F.2d 594, 601-602 (Fed. Cir. 1985).

[4] The American Inventors Protection Act was enacted November 29, 1999, as Public Law 106-113 and amended by the Intellectual Property and High Technology Technical Amendments Act of 2002 (Public Law 107-273) enacted November 2, 2002.

[5] See Intellectual Property and High Technology Technical Amendments Act of 2002 (Public Law 107-273) enacted November 2, 2002

[6] See MPEP § 2611 (“The phrase ‘original application’ is interpreted to encompass utility, plant and design applications, including first filed applications, continuations, divisionals, continuations-in-part, continued prosecution applications (CPAs) and the national stage phase of international applications. This interpretation is consistent with the use of the phrase in 35 U.S.C. 251 and the federal rules pertaining to reexamination. In addition, MPEP § 201.04(a) defines an original application as "... an application which is not a reissue application." MPEP § 201.04(a) further states that “[a]n original application may be a first filing or a continuing application”. Therefore, the optional inter partes reexamination is available to patents which issued from all applications (except for reissues) filed on or after November 29, 1999. A patent which issued from an application filed prior to November 29, 1999, in which a request for continued examination (RCE) under 37 CFR 1.114 was filed on or after May 29, 2000, however, is not eligible for optional inter partes reexamination. An RCE is not considered a filing of an original application; rather it is a continuation of the prosecution of the application in which it is filed.).

[7] 37 CFR § 1.913.

[8] 35 USC § 315 (c); 37 CFR §§ 1.907, 1.915.

[9] See 35 USC §§ 301-304; 35 USC §§ 301, 311-313.

[10] 35 USC § 301.

[11] See 37 CFR §§ 1.510, 1.915.

[12] In re Portola Packaging, Inc., 110 F.3d 786 (Fed. Cir. 1997).

[13] MPEP §§ 2216, 2616, 2242 (8th Ed., Rev. August 2006)).

[14] 37 CFR §§ 1.510(b)(2), 1.915(b)(3); MPEP §§ 2217, 2617.

[15] MPEP §§ 2216, 2217, 2616, 2617.

[16] MPEP §§ 2216, 2616.

[17] 37 CFR §§ 1.510.

[18] Id.

[19] 37 CFR §§ 1.907, 1.915.

[20] 37 CFR §§ 1.510(b)(5), 1.915(b)(6). Recent rule changes by the Patent Office designate the correspondence address for the patent as the correct address for all communications for patent owners in an ex parte reexamination or an inter partes reexamination. See 72 Fed. Reg. 18892 (April 16, 2007). In addition, like inter partes reexamination, the Patent Office has provided for the use of a single “mail stop” address for the filing of substantially all ex parte reexamination papers. Id.

[21] 37 CFR §§ 1.510(f), 1.915(c), 1.34.

[22] 37 CFR §§ 1.530(a), 1.939(b); MPEP §§ 2225, 2625.

[23] Id.

[24] 35 USC §§ 302, 311; 37 CFR §§ 1.510(d), 1.923.

[25] 37 CFR §§ 1.515(a), 1.923.

[26] MPEP §§ 2245, 2633.

[27] 35 USC § 304.

[28] 37 CFR § 1.510(b); MPEP §2216.

[29] 35 USC §§ 304, 313; 37 CFR §§ 1.525, 1.931; MPEP §§ 2246, 2646

[30] MPEP § 2646.

[31] 37 CFR § 1.530(b); MPEP § 2249.

[32] 37 CFR § 1.530(c); MPEP § 2249.

[33] 37 CFR § 1.535.

[34] 37 CFR § 1.550(g).

[35] 35 USC §§ 305.

[36] 37 CFR § 1.535.

[37] 37 CFR §1.530.

[38] MPEP §2261.

[39] Id.

[40] 37 CFR § 1.530(f); MPEP § 2250.

[41] 37 CFR § 1.550(c); MPEP § 2254.

[42] Id.

[43] Id.

[44] MPEP § 2271.

[45] Id.

[46] See 37 CFR §§1.181, 1.182; Official Gazette (OG), March 1, 2005.

[47] 35 USC § 306; MPEP § 2273.

[48] MPEP § 2287.

[49] 35 USC § 307.

[50] 37 CFR § 1.570; MPEP § 2288.

[51] 35 USC § 314.

[52] 37 CFR § 1.935; MPEP § 2660.

[53] 37 CFR §§ 1.104, 1.935-1.937; MPEP § 2660.

[54] 37 CFR §§ 1.941-1.945; MPEP § 2662.

[55] MPEP § 2661.01.

[56] 37 CFR § 1.956.

[57] 37 CFR § 1.943.

[58] 37 CFR § 1.947; MPEP § 2666.05.

[59] 37 CFR §§ 1.947, 1.957.

[60] Id.

[61] See, e.g., 37 CFR § 1.948; MPEP § 2666.05.

[62] “The showing of sufficient cause must provide: (1) a detailed explanation of how the criteria of § 1.111(a)(2)(i) is satisfied; (2) an explanation of why the supplemental response was not presented together with the original response to the Office action; and (3) a compelling reason to enter the supplemental response.” Revisions and Technical Corrections Affecting Requirements for Ex Parte and Inter Partes Reexamination, Final Rule, 72 Fed. Reg. 18892, 18894 (April 16, 2007) (to be codified at 37 CFR §1.945)

[63] 37 CFR § 1.945; Revisions and Technical Corrections Affecting Requirements for Ex Parte and Inter Partes Reexamination, Final Rule, 72 Fed. Reg. 18892-18907 (April 16, 2007) (to be codified at 37 CFR §1.945).

[64] 37 CFR § 1.949; MPEP § 2671.01.

[65] 37 CFR § 1.949; MPEP § 2671.01.

[66] 37 CFR § 1.949; MPEP § 2671.02.

[67] 37 CFR § 1.949; MPEP § 2671.02.

[68] 37 CFR § 1.951; MPEP § 2673.

[69] Id.

[70] 37 CFR § 1.949; MPEP § 2671.02.

[71] 35 USC § 315; 37 CFR §§ 1.959, 41.81; MPEP §§ 2674, 2683.

[72] See Section 13106 of Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002).

[73] MPEP § 2687.

[74] Id. Note that “[i]f all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). All claims will be canceled by formal examiner's amendment.”).

[75] Id.

[76] Id.

[77] 35 USC § 316; 37 CFR § 1.997; MPEP § 2688.

[78] See 35 USC § 318.

[79] Echostar Techs. Corp. v. Tivo, Inc., No. 5:05-CV-81 (DF), 2006 U.S. Dist. LEXIS 48431 (E.D. Tex. July 14, 2006) (citing Soverain Sofnvare LLC v. Amazon Com., 356 F. Supp.2d 660, 662 (E.D. Tex. 2005)).

[80] Id. (citing Landis v. North American Co., 299 U.S. 248, 254 (1936)).

[81] Id.

[82] Id. (citing Soverain, 356 F. Supp. 2d at 662).

[83] 550 U.S. ____ (2007); No. 04-1350 (April 30, 2007).

[84] Id., Slip Op. at 12.

[85] Id., Slip Op. at 16.

[86] Id., Slip Op. at 17.

[87] 35 USC §§ 307(b), 316(b).

[88] 35 USC §§ 315(c), 317; 37 CFR § 1.907.

[89] 35 USC § 315(c).

[90] KSR, Slip Op. at 17.

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