In re Swanson: CAFC Allows Reexamination Based on Reference Previously Considered by PTO and Courts

In re Swanson (Fed. Cir. 2008)

Back in 1984, the patent examiner rejected Swanson’s claim based on U.S. Patent No. 4,094,647 (“Deutsch”). The claims were then amended and the patent allowed. Later, in an infringement action involving the patent, the Federal Circuit affirmed a judgment that “Deutsch did not anticipate the asserted claims.” Abbott v. Syntron, 334 F.3d 1343 (Fed. Cir. 2003). Surmodics is the patent owner, and the patent is licensed to Abbott.

After losing at the CAFC, Syntron filed for ex parte reexamination of the patent – asserting again that the claims were anticipated by Deutsch. As per usual, the PTO agreed to reexamine the patent – based on a “substantial new question of patentability.” 35 USC §303. On appeal, Swanson argues that the Deutsch reference was considered in both the initial examination and the litigation – and thus cannot serve as the “new” basis for reexamination.

Third-party filed reexaminations provide a check on PTO power, but the SNQ requirement is designed to protect patentees from harassment.

This ‘substantial new question’ requirement would protect patentees from having to respond to, or participate in unjustified reexaminations. Further, it would act to bar reconsideration of any argument already decided by the Office, whether during the original examination or an earlier reexamination. House Report 96-1307, 96th Cong., 2d Sess. (1980).

In its 1997 Portola Packaging case, the CAFC gave teeth to the SNQ requirement – finding that a new question could not be presented by “prior art previously considered by the PTO in relation to the same or broader claims.” Reacting to that decision, in 2002 Congress amended Section 303 and to ensure that a new question may be raised by prior art that was previously considered by the examiner:

35 USC §303 “The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.”

Pointedly, the House Report accompanying the 2002 legislation found that “the Federal Circuit incorrectly interpreted Congress’ original intent.” According to the House Report, “the appropriate test to determine whether a ‘substantial new question of patentability’ exists should not merely look at the number of references or whether they were previously considered or cited but their combination in the appropriate context of a new light as it bears on the question of the validity of the patent.”

SNQ = Reference Never Considered by the PTO for the Particular Purpose: Based on the statutory change, the appellate panel found that a substantial new question is simply one that has never been considered by the PTO. Here, the record shows that the original examiner relied upon Deutsch only as a secondary reference in an obviousness rejection of a broader claim.

“In light of the extremely limited purpose for which the examiner considered Deutsch in the initial examination, the Board is correct that the issue of whether Deutsch anticipates the method disclosed in claims 22, 23, and 25 was a substantial new question of patentability, never before addressed by the PTO”

SNQ Relation to Court Proceedings: In court, the parties had battled out the exact anticipation argument presented in the reexamination. On appeal, the CAFC panel found that “the determination of a substantial new question is unaffected by these court decisions.” According to the court this makes sense because “the two forums [Courts and the PTO] take different approaches in determining validity and on the same evidence could quite correctly come to different conclusions” based on the burden of proof. Quoting Ethicon (Fed. Cir. 1988).



  • Judges Gajarsa (Author), Lourie, & Bryson.
  • This opinion gives further strength to ex parte reexamination requests.
  • The CAFC has consistently required that a patent’s presumption of validity be negated by “clear and convincing evidence.” Here, the court made a minor slip by calling the standard ‘statutory.’

“In civil litigation, a challenger who attacks the validity of patent claims must overcome the presumption of validity with clear and convincing evidence that the patent is invalid. 35 U.S.C. § 282. If this statutory burden is not met, “[c]ourts do not find patents ‘valid,’ only that the patent challenger did not carry the ‘burden of establishing invalidity in the particular case before the court.'” Ethicon, 849 F.2d at n.3 (internal citations omitted) (emphasis in original).”

Thanks to Paul Morgan for noting this issue.

The Surprising Efficacy of Inter Partes Reexaminations

An Analysis of the Factors Responsible For Its 73% Patent Kill Rate And How To Properly Defend Against It

     By Andrew S. Baluch and Stephen B. Maebius, Foley & Lardner LLP[i]< ?xml:namespace prefix ="" o />


In creating inter partes reexamination, Congress hoped to provide a faster, cheaper alternative for resolving questions of patent validity in the U.S. Patent & Trademark Office (USPTO) rather than in the courts.  As a measure of the procedure’s growing popularity and availability, the rate of requests for inter partes reexamination has steadily increased each year, totaling over 308 since the procedure was created in November 1999.[ii]  But, while the pace of reexam requests continues to increase, the end results of completed proceedings have received relatively little attention.

Here, we report the outcomes of all inter partes reexaminations completed as of August 2008.  Surprisingly, the proceedings displayed a high 73% “kill” rate (complete elimination of all claims targeted by the requesters) — a rate which is far above that in litigation (33%)[iii] and ex parte reexamination (12%)[iv]. 

Is the high kill rate explained by the fact that especially weak patents were targeted?  Did the patent owners simply give up because the patents were commercially unimportant?  Or is inter partes reexamination truly the best procedure for a party to use in the U.S. to invalidate a patent? 

For both requesters and patent owners, the present study highlights the factors and strategies favoring success in inter partes reexaminations.  Although the reported statistics appear to favor requesters, a patent owner has unique procedural tools at its disposal both in the courts and at the USPTO.


·         Requester’s Success Rate:  Third-party requesters succeeded in having all claims cancelled or disclaimed in 73% (22) of the first 30 completed inter partes proceedings in which a certificate issued.  These early certificates are likely skewed in favor of quick dispositions in which the patent owner simply failed to respond to a first Office action, which occurred in 43% (13) of the proceedings.  However, when the patent owner did respond to the first Office action, the requester’s success rate fell to 53% (9 out of 17).  In any event, the requester’s likelihood of a complete victory in inter partes reexams is substantially greater than that in ex parte cases during the same period: only 12% of all ex parte reexams since January 2000 resulted in all claims being cancelled.[v]

·         Pendency:  The inter partes proceedings had an average pendency (measured from request date to certificate issue date) of 33.3 months.  Like the requester’s success rate, the overall pendency is skewed by the numerous early cases in which the patent owner simply failed to defend its patent.  Eliminating these uncontested cases dramatically increases the average pendency up to 42.5 months.

·         Grounds of Rejection:  In a first Office action, obviousness was the sole ground of rejection in only 20% (6) of the proceedings, whereas anticipation was a ground of rejection in 73% (22) of the proceedings.  Nevertheless, obviousness-only rejections did not improve the patent owner’s chances of success: 83% (5 out of 6 obviousness-only cases) resulted in all claims being cancelled or disclaimed.

·         No Board Decisions:  None of the first 30 inter partes reexamination certificates was the product of a Board decision.  Only one party, a patent owner, filed a notice of appeal, but then dropped the appeal by declining to file an appeal brief.  In all cases where examiners found claims to be patentable, the third-party requesters did not bother to appeal the finding.

·         Litigation:  Five (17%) of the 30 inter partes reexaminations involved concurrent litigation between the patent owner and third-party requester.  The causes of action were split:  2 declaratory judgment (DJ) actions brought by the third-party requester, and 3 infringement suits brought by the patent owner.  The only still-pending cases involve reexaminations favoring the plaintiff:  one DJ action in which all reexamined claims were cancelled, and one infringement suit in which all reexamined claims were confirmed.


[i]  The authors are patent attorneys at Foley & Lardner LLP and further acknowledge their past and current involvement in both ex parte and inter partes reexaminations.  The views expressed herein are solely those of the authors and should not be attributed to their firm or any of its clients.  Comments may be directed to

[ii] USPTO Inter Partes Reexamination Filing Data (Sept. 30, 2007).

[iii] See Kimberly A. Moore, Judges, Juries, and Patent Cases – An Empirical Peek Inside the Black Box, 99 Mich. L. Rev. 365 (2000) (between 1983 and 1999, validity was upheld in 67% of cases — 64% of bench trials; 71% of jury trials).

[iv] See Dennis Crouch, Ex Parte Reexamination Statistics II, Patently-O, available at (posted Jun. 25, 2008) (between January 2000 and June 2008, all claims were cancelled in 12% of proceedings).

[v] See Crouch, supra.  See also USPTO Ex Parte Reexamination Filing Data (Dec. 31, 2007) (reporting 12% cancellation rate for all ex parte reexams initiated by third-party requester).

Ex Parte Reexamination Statistics II

Patent.Law088To get some sense of the PTO’s current ex parte reexamination practice, I looked at the 2000+ reexamination certificates that have been published in the Official Gazette since January 2000.  There are three potential outcomes for any particular reexamined claim: validity affirmed; validity affirmed with an amendment; and cancelled. In addition, claims may be added. 

Outcomes: From my sample, 71% of the completed reexaminations resulted in claims that were either amended or cancelled while only the remaining 29% resulted in all claims being confirmed. A much smaller number – 12% – of the reexaminations resulted in all claims being cancelled. 

The middle ground: 59% had at least one independent claim confirmed while 50% included at least one amended claim.  For the 34 completed design patent reexaminations, the single claim was confirmed as valid 16 times and cancelled 18 times.

Timing: The reexamination certificates in my sample had an average pendency of 33.5 months (median 28.5 months).* The PTO’s reported average and median are 24.0 months and 18.6 months respectively. The difference apparently comes from their inclusion of reexaminations from the 1980’s and 1990’s which had much lower pendency than more recent numbers. [PTO Data 1981-2007]. 

Outcome & Timing: Reexaminations that simply resulted in a confirmation that the the initial claims are valid were resolved more quickly (averaging 24 months) while those resulting in cancellation of all clams were much slower (averaging 45 months). Cases at the longer end of the spectrum often involved either BPAI appeals or lost files.


  • Thanks to several Patently-O readers for showing me how to find reexamination certificates. I was able to use the Westlaw database for this search. (Remember law school and the free academic access). The data can be compiled from the PTO OG, but that would be a larger job. The PTO does maintain a list of all the issued reexamination certificates here.
  • * I roughly calculated pendency by measuring the elapsed time from publication of a reexamination request to publication of the reexamination certificate.
  • Reexamination Statistics I

Ex Parte Reexamination Statistics I

PatentLawPic332Through its attorneys Microsoft requested ex parte reexamination almost thirty Avistar patents. In recent days, the PTO denied Microsoft’s request in 14 of those cases.

Standing alone, this denial does not appear to be big news — except for the fact that over 95% of requests for ex parte reexamination are granted. In FY 2003–07, for instance, the PTO reviewed 2389 requests for ex parte reexamination and only denied the request in 105 cases. (4.4%). (At this point, there is some possibility that the denials are procedural  as the documents are not yet available on PAIR).

To be granted, a reexamination request must present a “substantial new question of patentability” that affects at least one claim of a patent.  The request must be based on a prior art patent or publication.  Prior public use or sale are not admissible as evidence in an ex parte reexamination proceeding (although affidavits explaining the prior art publications is admissible).

In general, there has been a rise in requests for ex parte reexamination. As the chart below demonstrates, increase is entirely due to an increase in requests for reexamination that are filed by third parties.


Patently-O Bits and Bytes No. 36

  • PatentLawPic304[Not a] Patent Race: IPO released its annualy survey of top utility patent assignees. IBM again leads the way with over 3,000 utility patents issued in 2007. The organization leads the report with the interesting statement: “IPO DOES NOT INTEND TO ENCOURAGE MORE PATENTING IN U.S.”. [LINK]
  • Tafas v. Dudas: On May 19, the CAFC released its notice of docketing in the case — starting a 60 day clock for the PTO to submit its opening brief. I expect that they will take the entire time.
  • Inter Partes Reexaminations: Joff Wild highlights a new report on PTO Inter Partes Reexaminations: “Without appeal, the average pendency period for inter partes re-exam is 43.5 months, much longer than the 28.5 months reported by the USPTO – a 95% confidence interval would put the pendency between 34 and 53 months….To date, there has never been a single inter partes re-examination that has gone through the entire re-examination process (including appeal) and made it to completion. Only three have ever received a decision by the Board of Patent Appeals and Interferences.” [LINK][Report][Zura comments]
  • MBHB Snippets: In the past, I have published several practice focused articles in MBHB’s Snippets publication. The newest edition is now online. Articles include:
    • Aaron Barkoff, Patent Litigation Under a Future Biosimilars Act
    • Kevin Noonan, Follow-on Biologic Drugs and Patent Law: A Potential Disconnect?
    • Jim McCarthy & Marcia Ireland Rosenfeld, It’s Not Easy Selling Green
    • Benjamin Huber, Seagate: Reports of the Death of Opinions of Counsel Have Been Greatly Exaggerated
    • [Read Snippets]

RIM v. NTP Continues to Trouble Patent Office

Although NTP v. RIM settled years ago, the PTO’s reexamination of NTP’s patents have continued to plod along. PatentlyOImage009In the background are allegations by NTP that PTO officials improperly (and covertly) met with RIM CEO Jim Balsillie and other RIM representatives regarding the ongoing (ex parte) reexaminations.

During ex parte reexaminatoin, third-party communications are strictly forbidden.  It is clear, however, that in the months leading up to the NTP settlement, the PTO was feeling a tremendous amount of political pressure from RIM as well as Congress and the Senate.

Now, Congressman Howard Berman has demanded information from the PTO regarding these meetings “hand-delivered” by “May 19, 2008.”

“Did this meeting [with Balsillie and counsel] take place? What was discussed at this meeting? What is the USPTO’s policy concerning ex parte communications between senior USPTO officials and parties who have an interest in the outcome of proceedings before the office? In what other instances, if any, did senior USPTO officials engage in similar ex parte communications with parties that had an interest in the outcome of a proceeding being conducted before the Office?”

Hopefully the Office will be able to provide Chairman Berman with a tidy set of evidence to clarify the rules and exactly what happened.


PubPat: Proposed Post-Grant Review Cuts-Out Public Interest

RavicherThere is a possibility that a passed Patent Reform statute would eliminate third-party-requested reexaminations (ex parte and inter partes) and yet fail to create any substantive third-party initiated post-grant procedure to replace the current options.

In addition, the proposed post-grant review procedure would block a non-threatened party from challenging the validity of a patent more than a year after its issuance. In a letter sent today to the Senate reformers, Dan Ravicher of PubPat asks that third-party reexamination be preserved.  The non-profit groups such as PubPat and EFF have filed dozens of reexamination requests asking the PTO to invalidate “wrongfully issued” patents.

The Current Proposal Found in S.1145: The proposed system of post-grant review would have two windows for third-party filings:

  • First Window: Post-Grant oppositions filed by anyone within one year of issuance.  Patents reviewed in the first window would not be given any presumption of validity.
  • Second Window: Opposition must be filed by party who has a likelihood of feeling “significant economic harm” based on the patent. A presumption of validity would apply in reviews within the second window.

The PTO would be required to complete its review work within 18 months. Post grant reviews would be conducted by a three-member panel of administrative judges rather than by examiners. Parties to the review may settle the case.

  • PubPat Recent Successes:
    • Forgent Networks ‘672 "JPEG" patent: Broadest claims finally rejected;
      Patentee abandoned assertion of patent.
    • Columbia ‘275 Axel Cotransformation Patent: All claims finally
      rejected; Patentee abandoned assertion of patent.
    • Microsoft ‘517 FAT Patent: Patentee modifies claims, which are allowed.
    • Pfizer ‘156 Lipitor Patent: Patentee modifies claims, which are allowed.
    • WARF Stem Cell patents and Gilead Tenofovir (AIDS drug) patents have had all claims non-finally rejected, but are still pending. 

In Reexamination, PTO is Not Bound by District Court Claim Construction

In re Trans Texas Holding Corp. (Fed. Cir. 2007)

Trans Texas holds two patents directed to a system of insulating both deposits and loans from inflationary and short-term interest rate fluctuations. In earlier litigation, a Texas district court construed various claim terms. Now, in reexamination, the PTO has taken a fresh look and offered its own interpretation of the claims.

Issue Preclusion (AKA Collateral Estoppel) traditionally blocks the same parties from relitigating the same issue in a later proceeding. CAFC caselaw has identified four elements of issue preclusion:

  1. Identity of the issues in a prior proceeding;
  2. The issues were actually litigated;
  3. Determination of the issues was necessary for the prior judgment; and
  4. The party defending against preclusion had a “full and fair opportunity to litigate the issues.”

Ex Parte Proceeding: Although reexamination is an ex parte proceeding, the CAFC considers the PTO to be a “party” as any other outcome “simply makes no sense.”

The PTO is plainly a party to these appeal proceedings, and if it were not treated as a party, there would be no basis for even considering the application of issue preclusion in the first place.

Since the PTO did not have an opportunity to litigate the issue in the Texas district court, it cannot be bound by that decision.

[T]he PTO was not even a party to the earlier district court litigation and cannot be bound by its outcome.

Obviousness affirmed.