On September 16, 2012, the America Invents Act ended the ability to request inter partes reexamination.
However, inter partes reexamination requests filed prior to September 16 could remain for years. So it is worth looking at In Belkin v. Kappos and Optimum Path. In this case, the Federal Circuit affirmed the Board cannot consider prior art references that don't raise a substantial new question of patentability.
A policy limiting the scope of reexamination may seem harsh, but you have to consider the PTO's burden in examining all the arguments and prior art in requests for inter partes reexamination even when they don't raise a substantial new question of patentability. I reviewed one request that was over 600 pages!
Here's what the Federal Circuit had to say:
If the Director determines that any references does not raise a substantial new question of patentability, one must petition the Director to review the determination pursuant to 37 C.F.C. § 1.927. If this is not done that decision becomes final and nonappealable, and renders those issues beyond the scope of the reexamination.
Belkin requested inter partes reexamination of U.S. Patent No. 7,035,281 stating four prior art references raised new questions of patentability regarding claims 1-32. The Director determined the first three references did not raise a substantial new question of patentability, but the fourth reference did with respect to claims 1-3 and 8-10. Thus, the Director ordered reexamination of claims 1-3 and 8-10.
The Director denied Belkin's petition to review the denial of reexamination of claims 4-7 and 11-32. Belkin for reasons stated below, did not, however, file a petition to review the determination that the first three prior art references failed to raise substantial new questions of patentability concerning claims 1-3 and 8-10.
The examiner issued an action closing prosecution in the reexamination addressing only Belkin's proposed rejection of claims 1-3 and 8-10 as anticipated by the fourth reference and a right of appeal notice issued addressing only the fourth reference. Belkin appealed to the Board to challenge the examiner's not rejecting claims based on the first three references.
The Board determined that it lacked jurisdiction to decide whether a substantial new question of patentability existed regarding the first three references since that determination is non-appealable under 35 U.S.C. § 312(c). The Board held that it had no final decision on patentability and nothing to appeal regarding the three references. The Board affirmed the examiner's regarding the fourth reference. On rehearing, the Board declined to modify its decision and noted Belkin had not petitioned under 37 C.F.R. § 1.927 to review the Director's determination that there was no substantial new question of patentability for the issues based on the three references regarding claims 1-3 and 8-10.
Belkin unsuccessfully argued the Board has jurisdiction to consider the first three prior art references because once a substantial new question of patentability affecting a claim is found, all prior art must be considered including prior art found previously not to raise a substantial new question of patentability.
The Director responded 35 USC § 312(c) bars the Board from considering prior art not found to raise a substantial new question of patentability even if a substantial new question of patentability was found with respect to other references. The Director argued reexamination is limited to resolve the substantial new question of patentability, not questions raised by the requester that have been determined not to rise to that level. As only one reference raised a substantial new question of patentability, the Director argued the reexamination was limited to that question.
The Federal Circuit agreed and stated such an issue is nonappealable. At the outset, an inter partes reexamination is a two-step process. First, the Director must determine whether a substantial new question of patentability affecting any claim of the patent is raised by the request under § 311, with or without consideration of other patents or printed publications. 35 U.S.C. § 312(a). The statute is clear that decision is final and nonappealable. § 312(c).
The Federal Circuit noted the statute requires the Director order reexamination for resolution of the substantial new question of patentability found by the Director under § 312(a). The statute thus requires that an issue must raise a "substantial new" question of patentability with respect to cited prior art before it can be considered during inter partes reexamination. And an issue that has been determined to raise a substantial new question of patentability with respect to certain other prior art cannot be considered by the examiner and ultimately the Board. Instead if a requester disagrees with the decision that no substantial new question of patentability has been raised, 37 C.F.R. § 1.927 only permits the requester to petition the Director for review of that decision. Belkin didn't file a petition with respect to claims 1-3 and 8-10.
The Federal Circuit held:
Inter partes reexamination is not totally limited to those issues suggested by the requester that present a substantial new question of patentability. Indeed, the PTO may make any new rejection, as long as that rejection also meets the substantial new question of patentability requirement. See 35 U.S.C. § 303(a) ("On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him . . .."). Thus, the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under § 311 that the Director has determined raise such an issue. It otherwise may not include other prior art than what constituted the basis of the Director's determination of a substantial question of patentability.
Belkin unsuccessfully argued that such a result is inconsistent with the appeals statutes, 35 U.S.C. §§ 134(c) and 315(b), and regulations such as 37 C.F.R. § 41.61(a)(2). Those statutes grant rights to the requester to appeal a "final decision. . . favorable to the patentability of any . . . claim." §§ 134(c), 315(b). Similarly, § 41.61(a)(2) specifically allows the requester to appeal "any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any . . . claim." Id. Belkin argues that the examiner's decision not to reject claims 1-3 and 8-10 based on the issues determined not to raise a substantial new question was a decision favorable to patentability.
Belkin argued it did not petition for review of claims 1-3 and 8-10 because the Manual of Patent Examination and Procedure ("MPEP") § 2648 states: No petition may be filed requesting review of a decision granting a request for reexamination even if the decision grants the request as to a specific claim for reasons other than those advanced by the third party requester. No right to review exists as to that claim, because it will be reexamined in view of all prior art during the reexamination under 37 CFR 1.937.
The Federal Circuit responded that provision does not discuss the preclusive effect of a determination that an issue does not raise a substantial new question of patentability. Instead, MPEP § 2648 states the uncontroversial proposition that no petition may be filed to review a decision granting a request for reexamination.
Belkin also argued that 37 C.F.R. § 1.104 supports its interpretation because that regulation requires the examiner to make a "thorough investigation of the available prior art" during reexamination. The Federal Circuit maintained section 1.104 wouldn't help Belkin as the "available prior art" is only that which the Director has indicated constitutes a substantial new question of patentability.
The Federal Circuit noted a reference to "all prior art" in the MPEP or the regulations cannot trump the statute. Statutes rank higher than regulations, which rank higher than the MPEP.
Belkin relies on a decision of the Director denying a petition for review of the denial of four substantial new questions of patentability relating to a different patent to assert that it could not have petitioned the Director concerning his decision on the substantial question of patentability. Decision Expunging Petitions, In re Schwindt, Reexamination Control No. 95/001,743 (Mar. 5, 2012) (J.A. 1840-43). Belkin notes that the decision denied the petition because reexamination was ordered for the same claims on a different ground than proposed by the requester pursuant to MPEP § 2648. However inconsistent that decision may or may not be with the Director's current position, it must yield to the statute, which denies appealability of the Director's decisions on substantial questions.
Belkin raised concerns a third-party requester in an inter partes reexamination is estopped from later asserting the invalidity of any claim "finally determined to be valid and patentable on any ground which the thirdparty requester raised or could have raised" during the reexamination. Belkin argues that once reexamination has been granted, the requester must put forward all eligible prior art or face that estoppel. Belkin's concerns are unwarranted.
The Federal Circuit replied the estoppel was not before it. As Belkin merely asserted that the three references raised substantial new questions of patentability as to claims 1-3 and 8-10— which the Director rejected—Belkin's arguments regarding estoppel are thus not persuasive.
The Federal Circuit concluded Belkin should have petitioned the Director to review the determination that the arguments relying on the other references did not raise a substantial new question of patentability pursuant to 37 C.F.C. § 1.927. Belkin didn't and the decision became final and nonappealable, rendering those issues beyond the scope of the reexamination. Accordingly, it affirmed the Board.
The Federal Circuit also cautioned that America Invents Act amended the inter partes reexamination provisions and the request for inter partes reexamination in this case was filed before the date of enactment, September 16, 2011. Thus, the Federal Circuit expressed no opinion on the applicability of the AIA to the case, and did not reach the issue of what prior art references the PTO may or may not consider during reexamination in response to an amended or substituted claim.
Copyright © 2012 Robert Moll. All rights reserved.
