Another Reason to Choose Inter Partes Reexamination

Scott Daniels | June 11, 2012

We have commented a number times that the advantages of inter partes reexamination generally outweigh those of ex parte reexamination.  The PTO Board’s decision this past Friday in Panduit v. ADC Telecommunications (95/000,411; see also 95/000,415) illustrated one such advantage: the right of an inter partes requester to submit new prior art at specific moments in the reexamination.

In an earlier appeal, the Board had entered new grounds for rejection, and the patentee ADC asked that prosecution be re-opened to challenge the new grounds.  In that challenge, ADC argued to the examiner that its claims were patentably distinguishable over the prior art relied upon by the Board, citing several limitations in its claims.  The requester Panduit replied by submitting a new prior art reference; Panduit argued that the reference satisfied those claim limitations and that the reference, in combination with the art already of record, rendered ADC’s claims obvious.

Panduit’s submission was permissible under 37 C.F.R. §1.948, which reads:

 After the inter partes reexamination order, the third party requester may only cite additional prior art as defined under § 1.501 if it is filed as part of a comments submission under § 1.947 or § 1.951(b) and is limited to prior art:

(1) which is necessary to rebut a finding of fact by the examiner;

(2) which is necessary to rebut a response of the patent owner; or

(3) which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim.

Of course, there is no corresponding right for an ex parte requester to submit additional prior art.  (Incidentally, §1.947 allows an inter partes requester to comment on a patent owner’s response to an Office action on the merits, and §1.951 allows an inter partes requester to comment on a patent owner’s comments on issues raised in an Office action closing prosecution). 

Here, Panduit’s new reference was submitted “to rebut a response by the patent owner” and was fully considered by the examiner.  Unfortunately for Panduit, the examiner concluded that the newly proposed combination of art did not make ADC’s claims obvious.  The examiner therefore refused to enter Panduit’s proposed rejection.  In its decision Friday, the Board agreed with the examiner and affirmed the examiner’s refusal to enter the rejection. 

The patient died, but procedurally at least, the operation was a success.

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