“Inter Partes Generally”
Inter partes reexamination can be requested by any party other than the patent owner and its privies, at any time during the period of enforceability of a patent [37 C.F.R. § 1.913]. Inter partes reexamination is only available for patents that issued from an original application filed in the United States on or after November 29, 1999 [37 C.F.R. § 1.913]. Until recently, the meaning of “an original application” was not fully settled.
The issue was whether an inter partes reexamination can be filed on a patent from a continuation application having a filing date on or after November 29, 1999, but which claims priority to a filing before November 29, 1999. The PTO’s position was that “an original application” includes any application with an actual filing date on or after November 29, 1999, regardless of whether that application claimed priority to an application filed before that date. The PTO’s interpretation was upheld in district court and was subsequently affirmed by the Federal Circuit in Cooper Techs. Co. v. Dudas [Cooper Techs. Co. v. Dudas, No. 2008-1130, slip op. at 2-7 (Fed. Cir. Aug. 19, 2008)]. The practical effect is that only patents whose actual filing date is on or after November 29, 1999, is eligible for inter partes reexamination, irrespective of whether the patent’s effective filing date is earlier.
As with ex parte reexaminations, a third party requester can petition the Director to review a determination refusing inter partes reexamination. The Director’s decision of the petition is non-appealable [37 C.F.R. § 1.927]. A patent owner is entitled to appeal to the BPAI and to the Federal Circuit with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent [35 U.S.C. § 315(a)]. A third party requester is entitled to appeal to the BPAI and to the Federal Circuit with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent [35 U.S.C. § 315(b)].
“Estoppels in inter partes reexamination”
Estoppels in an inter partes reexamination flow two ways—from the inter partes reexamination to the civil action and from the civil action to the inter partes reexamination. In a subsequent civil action, a party cannot argue invalidity of a claim finally determined to be valid or patentable on any ground which that party raised or could have raised during the inter partes reexamination [35 U.S.C. § 315(c)]. The third party is not, however, precluded from asserting invalidity based on newly discovered art that was unavailable to the third party requester and the PTO at the time of the inter partes reexamination [35 U.S.C. § 315(c)].
Similarly, once a final decision has been entered against a party in a civil action that the party has not sustained its burden of proving the invalidity of any patent claim in suit, the party and its privies cannot request inter partes reexamination on the basis of issues that the third party raised or could have raised in the civil action [35 U.S.C. § 317(b)]. It appears from the statute that these estoppels in inter partes cases apply only to civil actions brought in the district court under 28 U.S.C. § 1338 and not to Section 337 ITC investigations. Whether this was an oversight is unknown, but the authors are not aware of any cases for which estoppel has been applied in an ITC investigation.
Once a request for inter partes reexamination has been granted, the third party requester cannot file a subsequent request for inter partes reexamination while the prior inter partes reexamination is pending [35 U.S.C. § 317(a)]. Further, once a final decision is granted favorable to patentability of any original, proposed amended, or new claim, the third party requester cannot thereafter request inter partes reexamination of such claim on the basis of issues that the third party raised or could have raised in the prior inter partes reexamination [35 U.S.C. § 317(b)].
Finally, after an inter partes reexamination has been instituted, the third party requester is precluded from citing any additional prior art unless it rebuts a finding of the examiner or a response by the patent owner, or if it became known or available after filing the request [37 C.F.R. § 1.948]. There are no estoppels, however, that prevent the third party requester from filing subsequent ex parte reexaminations. But the CRU closely examines such subsequent requests with a close eye to whether there is, in fact, a true SNQ.
[Cases]
[1.4.11 Inter Partes Reexamination] > Cooper Techs. Co. v. Dudas, No. 2008-1130, slip op. at 2-7 (Fed. Cir. Aug. 19, 2008)