1442.01 Litigation-Related or PTAB Trial-Related Reissues [R-08.2017]

During initial review, the examiner should determine whether the patent for which the reissue has been filed is involved in litigation or a pending trial before the Patent Trial and Appeal Board (PTAB), and if so, the status of that litigation or pending trial before the PTAB.

If the examiner becomes aware of litigation involving the patent sought to be reissued during examination of the reissue application, the examiner should first check MPEP § 1442.02 to determine whether prosecution in the reissue application should be suspended. If prosecution will not be suspended, and applicant has not made the details regarding that litigation of record in the reissue application, the examiner, in the next Office action, will inquire regarding the specific details of the litigation.

Form paragraph 14.06 may be used for such an inquiry.

If additional details of the litigation appear to be material to examination of the reissue application, the examiner may make such additional inquiries as necessary and appropriate.

For any pending trial before the PTAB, the examiner may view the status by using the PTAB’s electronic file system accessible from www.uspto.gov. The PTAB (as delegated by the Director) may exercise exclusive jurisdiction within the Office over every application and patent that is involved in a pending trial before it. Therefore, prior to acting on the application, the examiner should ensure that the PTAB has not suspended the reissue application.

For reissue application files that are maintained in the Image File Wrapper (IFW) system, if the existence of litigation or PTAB trial has not already been noted, the examiner should annotate the printed bibliographic data sheet such that adequate notice is provided of the existence of the litigation or PTAB trial.

Applicants will normally be given 2 months to reply to Office actions in all reissue applications that are being examined during litigation or PTAB trial, or after litigation or PTAB trial had been stayed, dismissed, etc., to allow for consideration of the reissue by the Office. This 2-month period may be extended only upon a showing of clear justification under 37 CFR 1.136(b). The Office action will inform applicant that the provisions of 37 CFR 1.136(a) are not available. Of course, up to 3 months may be initially set for reply if the examiner, consulting with their supervisor, determines such a period is clearly justified.

1442.02 Concurrent Litigation or Trial Before the Patent Trial and Appeal Board [R-08.2017]

To avoid duplicating effort, action in reissue applications in which there is an indication of concurrent litigation will generally be suspended sua sponte. Also, if there is a pending trial before the Patent Trial and Appeal Board (PTAB), the PTAB may suspend action in the reissue application. If it is evident to the examiner, or the applicant indicates, that any one of the following applies:

• (A) a stay of the litigation is in effect;
• (B) the litigation or trial before the PTAB has been terminated;
• (C) there are no significant overlapping issues between the application and the litigation or pending trial before the PTAB; or
• (D) it is applicant’s desire that the application be examined at that time;

then the Office may or may not suspend the reissue application using its discretion based upon the facts of the situation.

Where any of (A) - (D) above apply, form paragraphs 14.08-14.10 may be used to deny a suspension of action in the reissue, i.e., to deny a stay of the reissue proceeding.

Where none of (A) through (D) above apply, action in the reissue application in which there is an indication of concurrent litigation will be suspended by the examiner. The examiner should consult with the Technology Center Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS) before suspending action in the reissue application. Form paragraph 14.11 may be used to suspend action, i.e., stay action, in a reissue application with concurrent litigation.

An ex parte reexamination proceeding will not be stayed where there is litigation. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988). Thus, where a reissue application has been merged with an ex parte reexamination proceeding, the merged proceeding will not be stayed where there is litigation. In a merged ex parte reexamination/reissue proceeding, the ex parte reexamination will control because of the statutory (35 U.S.C. 305) requirement that ex parte reexamination proceedings be conducted with special dispatch. See MPEP § 2285 and § 2286. As to a stay or suspension where reissue proceedings are merged with inter partes reexamination proceedings, see 37 CFR 1.937 and MPEP § 2686.

1442.03 Litigation Stayed [R-08.2017]

All reissue applications, except those under suspension because of litigation, will be taken up for action ahead of other “special” applications; this means that all issues not deferred will be treated and responded to immediately. Furthermore, reissue applications involved in “stayed litigation” will be taken up for action in advance of other reissue applications. Great emphasis is placed on the expedited processing of such reissue applications. The courts are especially interested in expedited processing in the Office where litigation is stayed.

In reissue applications with “stayed litigation,” the Office will entertain petitions under 37 CFR 1.182, which are accompanied by the fee under 37 CFR 1.17(f), to not apply the 2-month delay period stated in MPEP § 1441. Such petitions are decided by the Office of Patent Legal Administration.

Time-monitoring systems have been put into effect which will closely monitor the time used by applicants, protestors, and examiners in processing reissue applications of patents involved in litigation in which the court has stayed further action. Monthly reports on the status of reissue applications with related litigation are required from each Technology Center (TC). Delays in reissue processing are to be followed up. The TC Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS) is responsible for oversight of reissue applications with related litigation.

The purpose of these procedures and those deferring consideration of certain issues, until all other issues are resolved or the application is otherwise ready for consideration by the PTAB (note MPEP § 1448), is to reduce the time between filing of the reissue application and final action thereon, while still giving all parties sufficient time to be heard.

Requests for stays or suspension of action in reissues where litigation has been stayed may be answered with form paragraph 14.07.

If concurrently a reissue application and an inter partes review, post grant review proceeding, or covered business method review ("PTAB Review Proceeding") are copending, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter (e.g., the reissue application) may proceed, including a stay, transfer, consolidation or termination of such matter or proceeding. See 35 U.S.C. 315(d) and 35 U.S.C. 325(d) and 37 CFR 42.122 and 37 CFR 42.222.

1442.04 Litigation Involving Patent [R-08.2017]

Where the patent for which reissue is being sought is, or has been, involved in litigation, the applicant should bring the existence of such litigation to the attention of the Office. 37 CFR 1.178(b). This should be done at the time of, or shortly after, the applicant files the application, either in the reissue oath or declaration, or in a separate paper, preferably accompanying the application as filed. Litigation begun after filing of the reissue application also should be promptly brought to the attention of the Office. Additional proceedings that should be called to the attention of the Office include interferences and any pending trial before the Patent Trial and Appeal Board, such as derivation, post-grant review, inter partes review, and covered business method proceedings.

Litigation encompasses any papers filed in the court or issued by the court. This may include, for example, motions, pleadings, and court decisions, as well as the results of such proceedings. When applicant notifies the Office of the existence of the litigation, enough information should be submitted so that the Office can reasonably evaluate the need for asking for further materials in the litigation. Note that the existence of supporting materials which may substantiate allegations of invalidity should, at least, be fully described, and preferably submitted. The Office is not interested in receiving voluminous litigation materials which are not relevant to the Office’s consideration of the reissue application. The status of the litigation should be updated in the reissue application as soon as significant events happen in the litigation. When a reissue application is filed, the examiner should determine whether the original patent has been adjudicated by a court. The decision(s) of the court, and also other papers in the suit, may provide information essential to the examination of the reissue. Examiners should inform the applicant of the duty to supply information as to litigation involving the patent. Form paragraph 14.11.01 may be used for this purpose. See MPEP § 1418.

Additionally, the patented file will contain notices of the filing and termination of infringement suits on the patent. Such notices are required by law to be filed by the clerks of the federal district courts. These notices do not indicate if there was an opinion by the court, nor whether a decision was published. Shepard’s Federal Citations and the cumulative digests of the United States Patents Quarterly, contain tables of patent numbers giving the citation of published decisions concerning the patent.

A litigation search should be requested by the examiner to determine whether the patent has been, or is, involved in litigation. For IFW reissue application files, the "Search Notes" box on the "Search Notes" form is annotated to indicate that the review was conducted, and the "Search Notes" form is then scanned into the reissue application file history.

Additional information or guidance as to making a litigation search may be obtained from the library of the Office of the Solicitor. Where papers are not otherwise conveniently obtainable, the applicant may be requested to supply copies of papers and records in suits, or the Office of the Solicitor may be requested to obtain them from the court. The information thus obtained should be carefully considered for its bearing on the proposed claims of the reissue, particularly when the reissue application was filed in view of the holding of a court.

If the examiner becomes aware of litigation involving the patent sought to be reissued during examination of the reissue application, and applicant has not made the details regarding that litigation of record in the reissue application, the examiner, in the next Office action, should inquire regarding the same. Form paragraph 14.06 may be used for such an inquiry. See MPEP § 1442.01.

If the additional details of the litigation appear to be material to patentability of the reissue application, the examiner may make such additional inquiries as necessary and appropriate.

1442.05 Court Ordered Filing of Reissue Application [R-10.2019]

In most instances, the reissue-examination procedure is instituted by a patent owner who voluntarily files a reissue application as a consequence of related patent litigation. Some federal district courts in earlier decisions have required a patentee-litigant to file a reissue application as a consequence of the patent litigation. However, the Court of Appeals for the Federal Circuit held in Green v. The Rich Iron Co., 944 F.2d 852, 853, 20 USPQ2d 1075, 1076 (Fed. Cir. 1991) that a federal district court in an infringement case could not compel a patentee to seek reissue by the USPTO.

It is to be noted that only a patentee or assignee may file a reissue patent application. An order by a court for a different party to file a reissue will not be binding on the Office.