You Don’t Need To Build An IPR Off-Ramp—It Already Exists

At the House Judiciary Committee’s IP Subcommittee hearing on sovereign immunity, Chairman Issa had a simple request for Phil Johnson, one of the witnesses—to, for the record, “look at the various off-ramp possibilities” for PTAB proceedings.  An off-ramp is a way for a patent owner to take their patent and amend it in front of a patent examiner, instead of defending the validity of their claims in an inter partes review (IPR).

Given the factual errors I found in Mr. Johnson’s testimony, I decided to take Chairman Issa up on his request and look at off-ramps in PTAB proceedings.  Not a new off-ramp—the ones that already exist and are already being used.

There Are Actually Multiple Off-Ramp Options

To start, there are multiple existing ways to take a patent out of IPR.  Which one a patent owner selects may depend, but a patent owner has the option of filing a reissue application, an ex parte reexamination, or a supplemental reexamination.  (If there’s another patent application in the same family pending, they could also file a continuation, but that option won’t always be available.)

Each has a different role to play.

A reissue is when a patent owner says “there is something substantively wrong with my original patent, and I want to correct it.”  At the outset of a reissue, you concede that there’s an issue with your patent, and that you want to correct it via new prosecution.  Effectively, a reissue is a way to reopen prosecution of the original patent in exchange for surrendering the original patent.

Ex parte reexamination, in contrast, is when you present the Patent Office with new prior art that you think presents a patentability issue and ask the PTO to decide if there’s a “substantial new question of patentability” raised by the new prior art.  If there is, you enter reexamination; otherwise, you don’t.  Unlike reissue, this is not conducted in the same way as original prosecution—you don’t even write your amendments to claims in the same format.  But also unlike reissue, the portions of your claims that you haven’t changed aren’t re-reviewed.  Instead, the focus is on amended claim language and how the amended claim overcomes the prior art.

Finally, supplemental examination is a new procedure added in the AIA.  In supplemental examination, similar to ex parte reexamination, you submit new prior art to the Patent Office and ask them to consider it.  If they determine that the prior art raises a substantial new question of patentability, an ex parte reexamination is initiated.  This sounds a lot like ex parte reexamination, but supplemental examination has one advantage that no other post-grant procedure has—art submitted via supplemental examination cannot be used to allege a patent is unenforceable due to inequitable conduct.  

So, we have three different off-ramp options, all of which already exist, and all of which are already being used.

What Happens When A Patent Owner Takes An Off-Ramp?

There are three possible paths.  

  1. The IPR can go ahead, while the off-ramp is stayed.  
  2. The off-ramp can go ahead, while the IPR is stayed.  
  3. Both can go ahead at the same time.  

In order to understand which path is taken and why, I took a look at the PTAB’s published decisions regarding requests to stay a parallel proceeding in an IPR.  I located 64 determinations on stay requests.  (There are a few more but they are temporary determinations or requests for additional briefing.)  Of these 64 determinations, 25 were initiated by petitioners, 14 by patent owners, and 25 by the PTAB sua sponte.

I can sum up the PTAB’s general rule in two sentences: if the off-ramp pertains to the same claims and art as the IPR, it will probably be stayed.  If they cover different claims, both will likely proceed concurrently.

The PTAB’s general rule also provides clear guidance for how a patent owner can take an off-ramp to amend their claims; file a reissue application, and then either settle or request adverse judgment in the IPR.  The IPR will terminate, and the reissue will proceed, allowing the patent owner to make substantive amendments.  As an alternative option, the patent owner can file a supplemental reexamination request.  Because supplemental reexamination cures inequitable conduct, something an IPR cannot do, the PTAB has disfavored staying supplemental reexaminations to avoid prejudice to the patent holder’s rights.  But in either case, if the patent owner wants to escape the IPR and amend their claims, they can already do so—they just have to give up their current claims, in favor of amending their claims, in order to guarantee that the IPR won’t continue.

Patent Owners Have Taken These Off-Ramps At Least 50 Times

Those 64 decisions on stays were found using Docket Navigator.  But they’re not the only cases where an off-ramp proceeding was requested while an IPR was going on.  In a number of cases, the off-ramp was taken and no stay was ever requested or decided on.

To find those other cases, I turned to another tool—Google’s BigQuery tool, along with their “patent public data” dataset.  This tool is publicly available and the first 1 TB of queries each month is free.  I’m excited about the potential of this kind of data being publicly available in a form that’s easy to query and analyze.  For each search below, I’ve included my query parameters so you can reproduce my data.

First, I looked at how many patent owners have filed for reissues after an IPR was filed.  There are 57 unique reissue/IPR pairs (i.e., if there are two IPRs on the same patent and a reissue was filed, there are two reissue/IPR pairs), representing 45 unique reissue filings on 40 different patents.

Reissues

#standardSQL
SELECT parents.parent_application_number, parents.application_number, trials.TrialNumber
FROM ((`patents-public-data.uspto_oce_pair.continuity_parents` parents
INNER JOIN `patents-public-data.uspto_ptab.trials` trials ON parents.parent_application_number = trials.ApplicationNumber)
INNER JOIN `patents-public-data.uspto_oce_pair.application_data` appdata ON appdata.application_number = parents.application_number)
WHERE parents.continuation_type LIKE 'REI' AND appdata.filing_date > trials.AccordedFilingDate

Of these 45 reissue filings, 3 have issued as patents, the patent owner has decided to abandon 15, and the remaining 27 are still being examined.  18 were stayed at some point during reissue examination, but none are currently stayed.

I also looked at ex parte reexaminations.  While locating patent owner requested ex parte reexaminations is a little harder, BigQuery again provided a starting point by searching for all ex parte reexaminations that remain open.

Ex Parte - Currently Pending

#standardSQL
SELECT DISTINCT appdata.application_number, parents.parent_application_number, trials.TrialNumber, appdata.patent_issue_date FROM ((`patents-public-data.uspto_oce_pair.application_data` appdata
INNER JOIN `patents-public-data.uspto_oce_pair.continuity_parents` parents ON parents.application_number = appdata.application_number)
INNER JOIN `patents-public-data.uspto_ptab.trials` trials ON parents.parent_application_number = trials.ApplicationNumber)
WHERE appdata.application_number LIKE '90%' AND patent_issue_date IS NULL

I could also search for matters where a reexamination certificate issued after an IPR was filed.

Ex Parte - Issued After IPR Filed

#standardSQL
SELECT DISTINCT appdata.application_number, parents.parent_application_number, trials.TrialNumber, appdata.patent_issue_date FROM ((`patents-public-data.uspto_oce_pair.application_data` appdata
INNER JOIN `patents-public-data.uspto_oce_pair.continuity_parents` parents ON parents.application_number = appdata.application_number)
INNER JOIN `patents-public-data.uspto_ptab.trials` trials ON parents.parent_application_number = trials.ApplicationNumber)
WHERE appdata.application_number LIKE '90%' AND patent_issue_date > trials.AccordedFilingDate

Reviewing the results of these two searches, there have been 215 unique ex parte reexaminations, although a few of them predate the IPR system and are simply still pending (or marked as pending erroneously).  Because an ex parte reexamination can be requested by anyone, not just a patent owner, I attempted to determine which had been filed by the patent owner.  Of those 215 unique ex parte reexaminations, 11 appear to have been patent owner requested in response to an IPR.  Several were actually requested after an IPR was settled, in order to confirm the patentability of the claims over the prior art.  Others successfully continued in parallel to the IPR, dealing with additional claims.

The Off-Ramp Is Already Built—But Patent Owners Don’t Want To Use It

Patent owners complain that they want to amend their patents and the PTAB won’t let them, and that they don’t want to re-prosecute their patents in front of the PTAB.  But this data shows that when a patent owner wants to take an IPR off-ramp, they can; they simply need to file for a reissue or supplemental reexamination and terminate the IPR via settlement or adverse judgment.

So the next question is “if these off-ramps to amendment and prosecution exist, why don’t patent owners take them?”

One reason might be a lack of awareness that they do exist, or a lack of confidence that they’ll be able to take advantage of them.  However, the options clearly do exist, and when a patent owner requests cancellation of claims in order to pursue amendments in reissue or reexamination, the PTAB has never rejected that request.  (In one instance, the patent owner attempted to avoid the effects of cancellation in their request; the PTAB rejected the request until the objectionable language was removed, and then promptly granted the request.)

But the other, bigger reason is intervening rights, the concept that when a claim is amended after issue, actions taken in the intervening period between issue and amendment are no longer considered infringing.  That’s because, as a matter of fairness and due process, no one can be held liable for infringing a claim that didn’t exist at the time of infringement.  But intervening rights aren’t unique to IPR; they’re effectively required as a matter of due process.  Any post-issuance amendment, by any mechanism, is going to require intervening rights.  Any off-ramp is going to have this due process toll associated with it.

And as I wrote in response to the House Judiciary Subcommittee hearing back in July, this means that amending claims involves the patent owner giving up past damages for the amended claims.  And that, not the PTAB’s rulings on amendments, is a big reason that patent owners don’t even try to amend claims in IPR—they don’t want to give up past damages.  They’d rather take a risk that their patent, as drafted, is invalid.

There’s no need for a new off-ramp.  The ones we already have could handle as much traffic as patent owners want to send their way.

Joshua Landau

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

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