Inter Partes Reexamination: Standard for Initiating Reexamination No Longer Requires “New” Issues

The threshold standard for initiating an inter partes reexamination was changed on September 16, 2011 – the enactment date of the America Invents Act.  The revised law eliminates the old “substantial new question of patentability” standard and now requires “a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request.”  This reasonable likelihood of prevailing (RLP) standard must now be met before the USPTO can initiate an inter partes reexamination.

In my initial review of the change, I wrote that the new standard is “stricter” than the old.  Certainly, a reasonable likelihood of success is more difficult to prove than simply raising a substantial question. However, I must add an important caveat — the old standard required that the substantial question be “new” while the revised standard does not have such a limitation. 

In a recent petition decision, the USPTO confirmed this analysis — indicating that the a reexamination request under the RLP standard can be based entirely upon issues previously addressed by the Office. In other words, “the determination of whether the question presented in the request are new is no longer a prerequisite of the determination of whether to order inter partes reexamination.” (Quoting from the petition decision) The USPTO wrote:

Whether the issue being brought forth for consideration has been addressed in a previous Office proceeding does not preclude reexamination under the current standard for ordering inter partes reexamination. Under 35 U.S.C. 312, the Office has the discretion to reconsider issues that have been addressed in the past, provided the estoppel provisions of 35 U.S.C. 317 do not apply.

In a footnote, the decision noted that the question of whether the raised objections to patentability are “new” is simply “not relevant to deciding this petition.”

File Attachment: Dismissal of Petition.pdf (210 KB).

Robert Frame had argued on behalf of petitioner that the new RLP standard should be interpreted as SNQ+.  Frame pointed to the House Report on the AIA that stated:

The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’ -a standard that currently allows 95% of all requests to be granted — to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.

As discussed above, that approach was rejected by the USPTO (CRU).

The patent being reexamined is No. 8,028,491 and covers a particular type of tactile warning surface units used to warn visually impaired individuals of a hazard (such as a curb).  The design allows the surface units to be wet-set (in concrete) and also replaceable.  This type of device is required in many situations in order to comply with requirements of the ADA.

In 2011, the patent holder (ADA Solutions) filed suit against several alleged infringers. On that same day, several of the accused infringers filed this reexamination request. (The parties are litigating other patents as well).

20 thoughts on “Inter Partes Reexamination: Standard for Initiating Reexamination No Longer Requires “New” Issues

  1. Duh. That was the obvious intent of the legislation. Why do you think that the proponents put up well north of $100 million dollars to enact the AIA? They were facing far more than that in patent infringement liability, well into the billions, and they needed a way to deep pocket the parties asserting all those patents against them. All the different ways to contest or invalidate patents that were added or modified were added or modified to make it easier to keep the reviews of the patents being asserted against them in the USPTO as long as possible. When you are spending millions defending against a patent, spending whatever it takes to keep reviewing it in the patent office is cheap – and far, far, cheaper than paying damages.

    It should be noted that these changes were aimed at patent trolls (i.e. NPE – non-practicing entities). These same large companies made it harder to invalidate their own patents by, for example, attacking them on enablement or correct inventorship (something that independent inventors and small companies don’t need to worry nearly as much about).

    Last summer, while the patent bar slept, it was estimated there was a time when there were more lobbyists lobbying for passage of the AIA, than there were Members of Congress. And, this doesn’t count all the articles written supporting the legislation, etc. No one was surprised when Sen. Leahy, Chair of the Senate Judiciary Committee, celebrated initial passage of the legislation in the Senate at an IBM plant in Burlington, VT – IBM being one of the biggest proponents of the legislation and backers of Leahy over the years, and, probably not coincidentally, the former employer of Director Kappos.

  2. Tinla,

    I see your point. It does seem that the standard may have been lowered, not raised. Every examination and every re-examination is no longer final, pretty much like it is in court where every defendant has a right to raise the same issues previously raised by a different defendant in a prior litigation. If the arguments are good and would succeed perhaps 50% of the time, continually raising the same prior art might be a good strategy. It only takes one loss by the patent owner, but the public is never barred.

    What this seems to suggest is that there can indeed be serial inter partes reviews relitigating the exact same issue to the extent that new infringers are willing to make the attempt, and perhaps make better arguments. The latter is to be expected because they have before them the record of the other “litigation,” and should be able to make a good argument to rebut the patent owner, assuming such an argument exists.

  3. Smitty, you have a good point there.

    I suppose the answer to this question would depend upon whether there is a seventh amendment right to a jury trial regarding validity even in DJ actions and even where the only remedy sought in an infringement suit was an injunction.  In England, there certainly was a right to a jury trial regarding validity, but the action itself was in equity.  (The Chancellor in equity would have the facts tried to a common-law jury in commom-law courts.)  The seventh amendment appears to be limited to actions at common law.  Whether our own courts would consider this to be an action common law or action in equity is a good question.

  4. “NS, your’re suggesting that in a DJ action, the PO has no right to a jury trial?”

    Depends on the legal action. Are there damages associated with the PO’s action? Remember: actions purely in equity do not require and typically do not involve jury trials.

  5. TINLA IANYL,

    While I think you are correct to a large degree, I have my doubts as to the Office recognizing a change in law as allowing reexaminations. Not that I think such would be legally correct, as I felt that even under the old paradigm the legality was met; but rather, the Office could face the same avalanche of work as they faced with the KSR decision and may seek a similar (to me empty) excuse for not taking on such reexaminations.

    I still struggle with people’s concepts that the standard is more difficult. Overall, I felt as if it were a wash at best and this post makes me feel that perhaps the standard has been eased in certain respects.

  6. Regarding:

    “Was not In re Portola Packaging Inc., 110 F.3d 786, 789-90 (Fed. Cir. 1997), the Fed. Cir. decision precluding reexaminations based on art already of record in the original application, expressly overuled in the 1999 AIA Statute?”

    And

    “Admittedly, the above noted language provides a discretionary duty (i.e., “may”). Yet, when judging the “reasonable likelihood” that a petitioner will prevail, if the Office has previously considered, and rejected a same argument would such not speak to a likilhood of failure?”

    Previously, under SNQ, the petition would be denied if the same argument and art were used, and a change in law such as KSR or Prometheus were argued. Now, if the Examiner capitulated to no suggestion or motivation in the references, or mere satisfaction of MOT, It’s open season. I think that’s the big change Dennis is noting. Good points though. Good discussion.

  7. The “new” requirement is implied in the RLP standard. Only a fool would file an inter partes re-exam request without new art.

  8. new standard…

    According to prior statistics the PTO grants over 90% of reexam requests -a large number of them (~70%) within 7 days of the request which is barely enough time for the ink to dry. Is the PTO properly granting requests, or have they become a rubber stamp for large infringers? Even past chief judge Michel opined that the old question of patentability is “hardly any standard at all”.

    “America Invents Act”

    “This is not a patent reform bill” Senator Maria Cantwell (D-WA) complained, despite other democrats praising the overhaul. “This is a big corporation patent giveaway that tramples on the right of small inventors.”

    Senator Cantwell is right. Just because they call it “reform” doesn’t mean it is. The agents of banks, huge multinationals, and China are at it again trying to brain wash and bankrupt America.

    They should have called the bill the America STOPS Inventing Act or ASIA, because that’s where it is sending all our jobs.

    The patent bill is nothing less than another monumental federal giveaway for banks, huge multinationals, and China and an off shoring job killing nightmare for America. Even the leading patent expert in China has stated the bill will help them steal our inventions. Who are the supporters of this bill working for??

    Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large multinational corporations and maintain their monopolies by robbing and destroying their small entity and startup competitors (so it will do exactly what the large multinationals paid for) and with them the jobs they would have created. The bill will make it harder and more expensive for small firms to get and enforce their patents. Without patents we cant get funded. In this way large firms are able to play king of the hill and keep their small competitors from reaching the top as they have. Yet small entities create the lion’s share of new jobs. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale destroyer of US jobs. Those wishing to help fight this bill should contact us as below.

    Small entities and inventors have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Congress tinkering with patent law while gagging inventors is like a surgeon operating before examining the patient.

    Those wishing to help fight big business giveaways should contact us as below and join the fight as we are building a network of inventors and other stakeholders to lobby Congress to restore property rights for all patent owners -large and small.

    Please see link to truereform.piausa.org for a different/opposing view on patent reform.
    link to docs.piausa.org

  9. From a slightly different angle, I am wondering if the new RLP standard will have any bearing on reexam prior litigation preclusion cases like In re Swanson and In re Construction Equipment Company. Those cases held that prior litigation on an issue of validity over particular references would not preclude a subsequent reexam grant based on that same issue and references under SNQ. I am thinking that RLP is still not going to be a bar to a grant in this situation, where a request advances the same invalidity argument not carried at an earlier litigation. But maybe RLP will nonetheless require that a prior litigation on a same issue be given more deference for non-grant? RLP feels closer to standards at litigation for attacking validity than SNQ, perhaps making litigation results more relevant to an identical request. (On the other hand, one could argue that by specifying consideration of prior presentment to the Office for non-grant in 325(d), Congress did not intend other prior considerations, such as prior litigation, to play a role in non-grant under expressio unius.)

  10. Paul, the interferences were constitutional because of de novo review.

    That option is not available for a losing patent owner.

    Sent from iPhone

  11. Ned, the new inter partes post grant proceedures will be run in almost the same Board-run “contested cases” manner for deciding patent claim validity [NOT just priority] as interferences have been for years, and, needless to say, not with juries [likewise ITC patent cases or any other administrative contested case proceeding].
    The argument for reexaminations is optionally taking a patent back to the PTO for the kind of unusually thorough examination by professional PTO examiners that every application should get to begin with if that were possible financially, which of course it isn’t.
    There are certainly lots of things wrong with reexaminations, including the PTO delays, but many problems are due to patent owners not realizing how much supporting evidence they need to obtain aand introduce in only the single short time period available, and restricted time extensions. Reexamination is not like normal prosecution that an applicant can keep re-arguing and dragging on almost indefinitely with RCE’s, continuations, divisionals and/or appeals, with endless new or amended claims and arguments, if the applicant wants to. A reexamination is more like “sudden death overtime.”

  12. The IPR standard is further fleshed out in 325(d), which was not cited in the decision. It reads, in relevant part:

    “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because,the same or substantially the same prior art or arguments previously were presented to the Office.”

    Admittedly, the above noted language provides a discretionary duty (i.e., “may”). Yet, when judging the “reasonable likelihood” that a petitioner will prevail, if the Office has previously considered, and rejected a same argument would such not speak to a likilhood of failure? Likewise, as Congress raised the SNQ threshold for post grant proceedings to reign in the high grant rates, and to address the potential for patentee harassment, I am not sure the Office wants to ignore the discretion of 325(d) and invite the rehashing of previous office proceedings; such would not seem to be consistent with the intent of Congress, or a wise use of Office resources.

  13. You got a lot of issues here. The easiest to address is that there is no right to jury trial unless more than twenty dollars will change hands. See the Seventh Amendment. Of course, the proceeding is worth more than twenty dollars to all parties involved, but the outcome won’t make anyone twenty dollars richer (at least directly).

  14. Paul, the new procedures are not in rem actions by the government. They are not re-examinations at all. They are trials. The results are binding, just as in court, between the parties.

    I’m not suggesting, Paul, that one could not bifurcate validity and infringement. What I am suggesting however is that the patent owner has a right to a trial by jury to validity issues.

    Congress could have authorized that the new inter partes review be conducted by Article III judges with the authority to call juries if demanded.

    Alternatively, the Article I judges could have the fact issues decided by juries in Article I courts. See the procedure in England where the Chancellor sent the case to the common law courts for the fact issues to be decided by juries and then decided the legal issues on remand.

    After all, the above procedure is a source of the rule that obviousness is a question of law to be decided upon facts, where the facts are to be determined by the jury.

    There is a reason that we had interferences appealable for de novo trial in regular courts. It was the constitutional issue after all.

  15. Was not In re Portola Packaging Inc., 110 F.3d 786, 789-90 (Fed. Cir. 1997), the Fed. Cir. decision precluding reexaminations based on art already of record in the original application, expressly overuled in the 1999 AIA Statute?

    A “new question” does not require new art, it can be something material buried in a reference in the original prosecution that was not considered or inacurately distingushed.

    Also, a reexamination is an in rem and administrative proceeding, not a civil action, much less “a suit at common law,” for more than 20 dollars, needed to trigger the 7th Amendment of the Constitution.
    No matter how much some attorneys for patent owners dislike reexaminations, and would naturally prefer to force all patent validity issues into a Hobson’s choice of costly lay jury trials and appeals or an equivalent cost settlement, Congress seems to like them, as the AIA demonstrated. So everyone is going to have to get used to them, because after this September there will be five of them.

  16. If I were the patentee, I’d still request a jury trial to test the constitutionality of the new framework for inter partes review. This is not an action between the government and the patent holder. This is an action between a patent holder and an infringer concerning validity the patent. It just simply that the the judges are not article 3 judges, but article 1 judges. Congress by statute cannot remove a patent owner’s seventh memo right to a jury trial.

    When when the question of the right to a jury trial first arose in connection with three examinations, critical to the decision was that a re-examination was by the government. Inter partes review is not by the government. It is a trial.

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