Greg H. Gardella

Ex Parte and Inter Partes Reexamination Tactics

AIPLA 2010 Winter Institute

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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. 2009-

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Greg H. Gardella

Ex Parte and Inter Partes Reexamination Tactics

AIPLA 2010 Winter Institute