Ex Parte and Inter Partes
Reexamination Tactics
AIPLA 2010 Winter Institute
Greg H. Gardella
Overview of Tactical Decisions
• Choosing Between Ex Parte and Inter Partes
• Content of the Request for Reexamination
• Patent Owner’s Statements (Ex Parte)
• Responses to Office Actions
• Interviews
• Information Disclosure Statements
• Appeal
2
Choosing Between
Ex Parte and Inter Partes
• Inter Partes generally preferred
– “No interview” rule, participation rights, appeal rights
– Estoppel applies only after Fed.Cir. appeal, only to
certain types of validity defenses
– Impact on decision to stay litigation
• Ex parte may be preferable in some instances
– Anonymity
– Joint defense groups
– Prior art search still underway
3
Overview of Tactical Decisions
• Choosing Between Ex Parte and Inter Partes
• Content of the Request for Reexamination
• Patent Owner’s Statements (Ex Parte)
• Responses to Office Actions
• Interviews
• Information Disclosure Statements
• Appeal
4
Content of the Request for
Reexamination
• Anticipation v. Obviousness
• Number of Proposed Rejections
• Specific identification and explanation of
“combined system”
• Expert declaration explaining rational for,
operation of combined system, lack of
nexus
5
Content of the Request for
Reexamination
• MPEP, BPAI holdings and related authority are
generally more persuasive
– 2010 KSR Guidelines Update
• Patent Owner statements/admissions
– If in litigation, can be the basis for a Substantial New
Question of patentability or a rejection
6
Overview of Tactical Decisions
• Choosing Between Ex Parte and Inter Partes
• Content of the Request for Reexamination
• Patent Owner’s Statements (Ex Parte)
• Responses to Office Actions
• Interviews
• Information Disclosure Statements
• Appeal
7
Patent Owner’s Statements
• Ex parte only, occurs after Determination
• Waiver of Patent Owner’s Statements
• PO Statements generally not desirable
– Opportunity for Requester to respond, including with
declaration evidence
– Query whether same position cannot be effectively
raised in response to Office Action
• PO Statements might be helpful to address status
as prior art and in other limited circumstances
8
Overview of Tactical Decisions
• Choosing Between Ex Parte and Inter Partes
• Content of the Request for Reexamination
• Patent Owner’s Statements (Ex Parte)
• Responses to Office Actions
• Interviews
• Information Disclosure Statements
• Appeal
9
Responses to Office Actions
• Retain your expert immediately
• Consider the rejections carefully
– Inherency, prima facie case issues
– Manner in which references were combined
– Functionality of hypothetical combined system
– Predictability of combination
– Secondary indicia
10
Responses to Office Actions
• Ex parte: Interview examiners as soon as
arguments are vetted
– Prepare well for examiner interview
• Submit all claim amendments in response to first
action
• Third Party Comments in Inter Partes
– Expert declarations
– Alternative manners of, reasons for combining
– Rule 948 issues
11
Overview of Tactical Decisions
• Choosing Between Ex Parte and Inter Partes
• Content of the Request for Reexamination
• Patent Owner’s Statements (Ex Parte)
• Responses to Office Actions
• Interviews
• Information Disclosure Statements
• Appeal
12
Interviews
•
•
•
•
Expert insight v. attorney argument
Consider bringing both an expert and an inventor
Prepare as you would for an oral argument
Bring evidence
– E.g., prior art documents that demonstrate legal or
factual premise
• Listen, then recalibrate
• Ask questions
13
Overview of Tactical Decisions
• Choosing Between Ex Parte and Inter Partes
• Content of the Request for Reexamination
• Patent Owner’s Statements (Ex Parte)
• Responses to Office Actions
• Interviews
• Information Disclosure Statements
• Appeal
14
Information Disclosure Statements
• Anything that could be considered inconsistent
with an argument for patentability
– Examiner’s findings (both US and foreign)
– Third party argument (in litigation or otherwise)
• Unexplained submissions will generally not
prevent later reexaminations based on references
listed in an IDS
– Consider providing summary of key aspects of prior
art in order to preclude later reexaminations
15
Overview of Tactical Decisions
• Choosing Between Ex Parte and Inter Partes
• Content of the Request for Reexamination
• Patent Owner’s Statements (Ex Parte)
• Responses to Office Actions
• Interviews
• Information Disclosure Statements
• Appeal
16
Appeal
• Achilles’ Heel
– Claims for which no prima facie case was made
– May cause Office to re-open prosecution
• Secondary indicia now a factor
– Ex Parte Technofirst S.A., 2010 WL 785243 (BPAI 2010)
• Broadest reasonable construction
– In re Suitco Surface, Inc. (Fed. Cir. Case No. 20091418)
17
Ex Parte and Inter Partes
Reexamination Tactics
AIPLA 2010 Winter Institute
Greg H. Gardella