Re-work Frustrates Patent Owners & The System
I have written about Patent Owner estoppel for years. That is, estoppel stemming from claims cancelled in PTAB trial proceedings. This estoppel is based on the idea that, if you have an amendment to bring to a given claim set, you should bring that amendment during the trial — not thereafter, such as in a patent reissue, reexamination or continuation application.
Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim. But, it is fairly common for unsuccessful Patent Owners to go right back after a PTAB loss and pursue substantively identical claims through patent reissue or reexamination. Why?
Patent Owners are not gluttons for punishment, they are just following the directions of the agency.
The former Director did his best to pull as may “pro-patent” levers as he could while heading the agency. But, in doing so, he encouraged a policy in direct conflict with Rule 42.73. For example, in 2019-20, most PTAB Final Written Decisions (FWD) started suggesting that should the Patent Owner wish to pursue amendments, they should consider reissue or reexamination, explaining via footnote:
Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (see 84 Fed. Reg. 16,654 (Apr. 22, 2019))
The Notice discusses timing of such filings, but mentions nothing of patent owner estoppel as a roadblock to almost all such amendments under the Rule. Not to mention the fact that such amended claims may do nothing for your litigation campaign should you manage to get them. See Fellowes, Inc. v. Acco Brands Corp., 2019 U.S. Dist. LEXIS 67431 (N.D. Ill. 2019) (issue preclusion bars plaintiff from asserting reexamined claims because “[t]he difference between [reexamined] ’796 Patent claims 19 and 20 and ’767 Patent claims 11 and 12 [invalidated in an IPR] is not material.”).
Practically speaking, any such reissue/reexamination filing would necessarily need to pursue narrowed claims, and indistinct ones at that. Why send Patent Owners down a path that is clearly fruitless under the agencies own rules? It’s high time to either repeal the Rule, or to clarify guidance to avoid such inconsistencies.
Finally, and perhaps more commonplace, is the pursuit of continuation patents after and adverse FWD. The same cosmetic amendments are often made here, and examiners have no meaningful guidance on estoppel in the MPEP, and don’t appear to closely review PTAB materials entered in the record. A far better solution for patent quality would be to transfer continuations related to an adverse IPR decision to the Central Reexamination Unit CRU) where they can be given the appropriate level of review (as are reissue and reexaminations), including the application of estoppel. Alternatively, such cases should undergo a separate estoppel review prior to issuance.