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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Thursday
Sep082011

The Elevated Inter Partes Reexamination Threshold of Leahy-Smith: A Boon To Requesters

Guest Post by Matthew A. Smith1, Andrew R. Cheslock2, and Max Colice, Ph. D.3

Should President Obama sign the Leahy-Smith America Invents Act as expected, the threshold for initiating an inter partes reexamination will immediately change.  Rather than being required to demonstrate a “substantial new question of patentability”, requesters will be required to show a “reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request”.4

This is widely viewed as an elevation of the threshold requirement for initiating an inter partes reexamination.  The current “substantial new question” standard requires the Examiner to find only that “there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publica­tion important in deciding whether or not the claim is patentable”.5  Notably, the Examiner does not need to find the art sufficient to reject a claim.6

Although some commentators expect a glut of filings prior to the change to avoid the new standard, it is actually a boon to requesters.  The worst possible result of an inter partes reexamination request is not a denial of the request.  The estoppel of 35 U.S.C. § 315(c) is not triggered by a denial,7 and in some cases the request can be supplemented and refiled.8  The worst possible outcome is a grant of the request, followed by an office action confirming all claims (about 1 in every 30 inter partes cases).  In this scenario, the Examiner can move directly to an Action Closing Prosecution, the patent owner need not respond (foreclosing a requester comment) and the requester is still faced with the estoppel provisions of § 315(c).  If a request can not demonstrate a “reasonable likelihood that the requester would prevail”, then even under the current standard it has no business being filed.

While it is true that the change in the threshold will probably cut down on the number of granted requests, it will do so principally by eliminating only those requests that fall in the space between “substantial new question” and “likely to result in a rejection”.  The change should thus effectively eliminate the single worst possible outcome of an inter partes reexamination for the requester, without having a practical impact on the requester’s ability to submit requests that will result in rejected claims. 


[1] Matthew A. Smith is Senior Counsel in the Washington, D.C. office of Foley & Lardner LLP, and the author of the West Treatise Inter Partes Reexamination 2d.  He also serves as an Adjunct Professor at George Washington University Law School, where  he teaches International Patent Law.  His practice includes litigation, reexamination and counseling in patent matters, especially relating to the fields of electronics, semiconductors and software. He can be reached at msmith@foley.com.  The views in this article reflect only the opinions of the authors, and are not necessarily the views of Foley & Lardner LLP or its clients.

[2] Andrew R. Cheslock is an associate in the Washington, D.C. of Foley & Lardner LLP. He specializes in patent litigation, reexamination, and counseling in the electronics and software fields.  He can be reached at acheslock@foley.com.

[3] Max Colice is a patent agent in the Boston office of Foley & Lardner LLP. He specializes in patent prosecution and reexamination, especially relating to optics, electronics, semiconductors, and software.  He can be reached at mcolice@foley.com.

[4] H.R. 1249, Sec. 6(c)(3)(A)(i)(I)(aa).

[5] MPEP § 2242.

[6] See, e.g., Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 848 (Fed. Cir. 2008)(quoting MPEP § 2642).

[7] See 35 U.S.C. §§ 315(c) and 313.

[8] See, e.g., inter partes reexamination 95/000106 (2007-06-27 Petition Decision, pp. 7-8).