Petitions : US PTO Litigation Alert™

APJs Give Further Guidance on Petition Arguments

Scott Daniels | December 3, 2012

In an earlier post, we reported that a panel of eight APJs had ordered withdrawal of grounds for rejection from a Petition that were redundant with other proposed grounds for rejection.  Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003.  Since then, the Petitioner has asked for rehearing, but the APJs have refused to alter their earlier order.  The APJ’s refusal gives insight into how they will treat future Petitions.

The Petitioner asked for reconsideration for two reasons.  First, it argued that it could rely solely on expert testimony to show that a particular claim limitation is known in the art, and separately and alternatively, cite a specific prior art reference to show that the limitation is known.  The APJs say no: the “references should be cited in support of the expert’s opinion.”  To propose “different grounds based separately on expert opinion and on references creates redundancy, promotes inefficiency,” etc.

More generally, the Petitioner asserted that it should be free to present different alternatives for meeting a particular claim limitation.  The APJs agreed with Petitioner’s general proposition, but added that “alternative grounds may be presented if an actual need for presenting alternatives exists and is adequately explained in the petition” (emphasis added).  The APJs conceded that the Patent Owner might later amend its claim to distinguish over the expert opinion or prior art reference.  But the APJs also noted that such an amendment may accomplished only by motion to the APJs, and that the Petitioner would be free to oppose the motion and to respond to the new issues raised by the amendment.  Clearly, the APJs want a Petition to be limited to the claims as they appear in the issued patent and not to anticipate claim changes that the Patent Owner might later make.

Petitions to Revive a Terminated Reexamination Proceeding

Misa Bretschneider | July 26, 2012

Petitions to revive a terminated reexamination give the patent owner a procedural safeguard if it accidentally misses a due date.

While it seems that such petitions are more frequently filed in ex parte than inter partes proceedings, petitions to revive are commonly granted in both types of proceedings.

Usually a patent owner files a petition to revive, asserting an unintentional delay under 37 CFR 1.137(b). The patent owner must also file the petition pursuant to 37 CFR 1.550(e) (for ex parte reexamination) or 37 CFR 1.958 (for inter partes reexamination).

Petitions to revive are relatively simple and straightforward. To file a successful petition, a patent owner must (1) file the late response along with the petition, (2) pay the petition fee as set forth in 37 CFR 1.17(m) ($810 for small entities; $1540 for non-small entities), and (3) include a proper statement under 37 CFR 1.137(b) that the “entire delay” from the response due date to the filing date of the petition was “unintentional.”


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Extension of Time Petitions in Reexamination: More to Them than Some Might Think

Misa Bretschneider | July 12, 2012

Petitions for extension of time are the most common type of petition filed in reexamination proceedings.  Many patent practitioners, accustomed to the PTO’s practice of automatically granting extension of time requests in original prosecution, are sometimes surprised by extension of time practice in reexamination proceedings where it is not uncommon for a supervisory patent examiner to grant the petitioner only in-part or even to deny it.

We looked at a random pool of 150 petitions for extension of time, and found that 52% of the requests for extension of time were granted, 25% of requests, granted only in-part, and 23% denied.  One petitioner requested a one-month extension of time due to an unexpected withdrawal of counsel.  The examiner held that because the petitioner had been deprived of counsel for seven days, there was “sufficient cause” to afford the petitioner a corresponding seven day, not one-month, extension.  Such partial grants of extensions might not seem problematic, but where a party assumes or worse, relies on a specific extension to file a timely response.  While the median time-lag between a petition filing and decision is 6 days, it is sometimes two or three weeks before a decision is made.  Thus, a petitioner could find itself in a tough spot if it presumed that its petition would be granted, only to find there weeks later that its petition is only granted-in-part.
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Rambus Suffers Setback in ‘109 Reexamination at the PTO Board

Scott Daniels | March 22, 2012

Rambus’ hopes for preserving its U.S. Patent No. 7,287,109 suffered a setback this morning when the PTO Board of Appeals denied its petition to modify an earlier Board decision.  In that earlier decision, the Board affirmed a rejection of certain ‘109 claims as being obvious over the “Farmwald” reference; Rambus’ petition asked that the affirmed rejection be treated as a “new ground for rejection,” allowing Rambus to resume prosecution of the ‘109 patent claims before the examiner.  After today’s denial by the Board of Rambus’ petition, Rambus’ only remedy is to pursue an appeal of the rejection at the CAFC.

Rambus had argued in its petition that the Board’s earlier decision affirming the prior art rejection relied on “new facts” not considered by the examiner.  Rambus argued, essentially, that it had not received a fair opportunity to address the new facts relied upon by the Board. 


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PTO Gives Advice on Reexamination Petitions and Cautions the Bar

Scott Daniels | January 24, 2011

The PTO has become something of a punching bag among patent practitioners in recent years for the length of time it requires to complete the typical reexamination, especially the typical inter partes reexamination. Long reexamination proceedings, however, are in part caused by the unduly aggressive petition practice of some patentees and requestors.  The PTO, through a recent presentation by Senior Legal Adviser Kenneth Schor, has now issued specific guidelines of what it regards as legitimate petitions and illegitimate petitions – this distinction being backed by the possibility of the PTO’s referring lawyers who file the latter to the Office of Enrollment and Discipline.  The guidelines need to be studied carefully since much of the advice contained therein will not be intuitive for many practitioners.
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