OVERVIEW OF USPTO PROCEEDINGS FOR THE REEXAMINATION OF A U.S. PATENT

[Effect of a Pending Reexamination]{.underline} \-- Each claim of a
patent is presumed valid under 35 U.S.C. 282 and may be enforced
notwithstanding the presence of a pending reexamination proceeding. See
Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir.
1988); See also Viskase Corp. v. Am. Nat\'l Can Co., 261 F.3d 1316,
1328, 59 USPQ2d 1823, 1831 (Fed. Cir. 2001); In re Etter, 756 F.2d 852,
857, 225 USPQ 1, 4 (Fed. Cir. 1985)(en banc). Although litigation may
move forward in parallel with a reexamination proceeding, at the
district court\'s discretion, the results of the reexamination
proceeding may have an effect on the litigation. See e.g., In re
Translogic, 504 F.3d 1249 (Fed. Cir. 2007). Under 35 U.S.C. 307, a
patent is not revised by any amendment or cancellation of a claim made
during a reexamination proceeding until a reexamination certificate is
issued.

[*Ex Parte* Reexamination]{.underline} -- A proceeding in which
[any]{.underline} person may request reexamination of a U.S. Patent
based on one or more prior patents or printed publications. A requester
who is not the patent owner (i.e., a "third party requester") has only
limited participation rights in the proceeding. \[MPEP 2209\]

[*Inter Partes* Reexamination]{.underline} -- A proceeding in which any
person who is [not]{.underline} the patent owner and is [not otherwise
estopped]{.underline} may request reexamination of a U.S. Patent issued
from an original application filed on or after November 29, 1999 based
on one or more prior patents or printed publications. Both patent owner
and third party requester have participation rights throughout the
proceeding, including appeal rights. \[MPEP 2609\]

[Reexamination Granted]{.underline} -- An Order Granting Reexamination
is [not]{.underline} a determination of claim patentability. An Order
that one or more claims of a U.S. Patent will be reexamined because the
request has established the existence of at least one SNQ based upon
prior patents and/or printed publications. \[MPEP 2247.01\]

In *ex parte* reexamination, the Order, whether granting or denying
reexamination, must be mailed [within]{.underline} three months of the
filing date of the request for reexamination. \[MPEP 2241\]

In *inter partes* reexamination, the Order must be mailed [not later
than]{.underline} three months after the request is filed. \[MPEP 2641\]

[Reexamination Denied]{.underline} -- An Order Denying Reexamination is
also [not]{.underline} a determination of claim patentability. An order
denying reexamination of any of the claims of a U.S. Patent because the
Office has determined that no SNQ has been established in the request
for reexamination. \[MPEP 2247.01

[Substantial New Question of Patentability (SNQ)]{.underline} -- A
request for reexamination must establish the existence of at least one
new technological teaching affecting any claim of the patent for which
reexamination has been requested that was not considered by the Office
in a prior Office proceeding involving the patent. The SNQ is
established based on prior patents and/or printed publications. \[MPEP
2242\]

[Notice of Filing of Request for Reexamination]{.underline} -- Notice
that a request for reexamination has been filed and accorded a filing
date is published in the *Official Gazette*. \[MPEP 2215\]

[Rejection (Non-Final)]{.underline} -- The initial Office action on
patentability.

In *ex parte* reexamination, the initial action is [not]{.underline}
mailed with the Order Granting Reexamination; the patent owner may file
optional comments, to which the third party requester may respond, prior
to the initial Office action. Therefore the Office must await the
expiration of the periods for such comments and responses thereto before
mailing the initial action. \[MPEP 2262\]

In *inter partes* reexamination, the initial action [may
optionally]{.underline} be mailed together with the Order Granting
Reexamination, but even if not, [no]{.underline} party comments are
permitted prior the mailing of the initial action. Patent owner files a
response to a non-final action that includes argument and/or an
evidentiary showing and/or amendments, and the response will be entered
as a matter of right. Third party requester may thereafter respond with
written comments directed to the Office action [and]{.underline} to the
patent owner's response. \[MPEP 2260\]

[Rejection (Final)]{.underline} -- A second or subsequent action on
patentability in an *ex parte* reexamination may be made "final." While
responsive arguments may be considered, entry of an amendment or
consideration of additional evidence is not a matter of right in a final
rejection. Patent owner may appeal to the USPTO Board of Patent Appeals
and Interferences (BPAI). \[MPEP 2271\]

[Action Closing Prosecution (ACP)]{.underline} -- The second or
subsequent action on patentability in an *inter partes* reexamination
proceeding. Patent owner may respond with argument and/or an evidentiary
showing and/or amendments. Alternatively, patent owner may choose not to
respond. If patent owner does file a response,

then third party requester may thereafter file written comments directed
[only]{.underline} to the patent owner's submission. Entry of the patent
owner response is not a matter of right. Neither party may appeal at
this point in the proceeding. \[MPEP 2671.02\]

[Right of Appeal Notice (RAN)]{.underline} -- After (1) considering any
patent owner response to an ACP, and any third party requester written
comments thereto, or (2) the expiration of the time for patent owner to
file a response and no response has been filed, the examiner will either
re-open prosecution if necessary, or issue a RAN. The RAN sets time
periods in which the parties may appeal to the BPAI. The RAN also closes
prosecution. Any amendment filed after a RAN will [not]{.underline} be
entered. \[2673.02\]

It is possible for the Office to issue a RAN after a patent owner
response to the initial Office action on patentability [if both parties
stipulate]{.underline} that the issues are appropriate for a final
rejection and or a final patentability determination.

[Appeal to the BPAI -- *Ex Parte* Reexamination]{.underline} -- A notice
of appeal is a proper response to a final rejection in an *ex parte*
reexamination. [Only]{.underline} patent owner may appeal. The appeal
process is similar to that in a non-provisional patent application.
\[MPEP 2273\]

[Appeal to the BPAI -- *Inter Partes* Reexamination]{.underline} --
Either party may file a notice of appeal as a proper response to a RAN
in an *inter partes* reexamination. If some clams are rejected and some
claims are allowed or confirmed as patentable, both parties may appeal
those determinations, file appeal briefs, respondent's briefs directed
to the other party's appeal brief, and, after the examiner files the
examiner's answer to those briefs, file a rebuttal brief directed to the
examiner's answer. \[MPEP 2674\]

[Subsequent (Court) Appeals -- *Ex Parte* Reexamination]{.underline} --
If the request for reexamination was filed prior to November 29, 1999,
patent owner may appeal the decision of the BPAI to either the U.S.
District Court for the District of Columbia, or to the Court of Appeals
for the Federal Circuit. If the request for reexamination was filed on
or after November 29, 1999, patent owner may appeal only to the Federal
Circuit. \[MPEP 2279\]

[Subsequent (Court) Appeals -- *Inter Partes* Reexamination]{.underline}
-- Either party who was a party to an appeal to the BPAI and is
dissatisfied with the result may appeal [only]{.underline} to the Court
of Appeals for the Federal Circuit. \[MPEP 2683\]

[Concurrent Reexamination and Litigation]{.underline} -- If there is
concurrent litigation and reexamination on a patent, and the request for
reexamination was filed as a result of court order, or the litigation
has been stayed for the purpose of reexamination, the Office will
expedite the proceedings by taking the case up for action at the
earliest possible time, setting shorter response times, and permitting
extensions of time only upon a [strong]{.underline} showing of
sufficient cause. \[MPEP 2286\]

[Effect of Concluded Litigation on Reexamination]{.underline}

A court decision holding that a patent claim is [valid]{.underline} will
not preclude the Office from continuing to reexamine such claim in an
*ex parte* reexamination proceeding, even if the court decision is final
and non-appealable. The Office applies the "broadest reasonable
interpretation" for claim language in a reexamination proceeding,
because claims may be amended during the proceeding. Courts apply a less
liberal standard of claim interpretation, and therefore, the Office may
conclude that a claim held valid in a court proceeding is unpatentable
or invalid in an *ex parte* reexamination proceeding. \[MPEP 2286\]

A final, non-appealable court decision holding that a patent claim is
[invalid]{.underline} will preclude the Office from ordering any
reexamination proceeding for such claim, or, will result in termination
of any reexamination proceeding previously ordered as to such claim.
\[MPEP 2286\]

It should be noted that with respect to *inter partes* reexamination, a
final, nonappealable holding in litigation that a patent claim is valid
may operate to estop a party from even requesting *inter partes*
reexamination of that claim, or from maintaining a previously ordered
*inter partes* reexamination of that claim. Estoppel may also operate to
preclude a party who has obtained an Order Granting *Inter Partes*
Reexamination of a patent claim from asserting invalidity of that claim
in litigation under Section 1338 of Title 28 on grounds that such party
raised, or could have raised, during that *inter partes* reexamination,
if that claim has been finally determined to be patentable in the *inter
partes* reexamination proceeding. \[MPEP 2686.04(V)\]

[Notice of Intent to Issue Reexamination Certificate (NIRC)]{.underline}
-- Reexamination proceedings do not become "abandoned." Rather, an NIRC
is mailed to inform the parties that a reexamination proceeding has been
terminated, whether by the failure of a party to timely file a required
response, or by the natural resolution of all outstanding issues of
claim patentability. The NIRC lists the status of all claims that were
subject to reexamination, including any patent claims that have been
canceled and any claims added during the proceeding that were not part
of the patent that were reexamined and determined to be patentable. The
NIRC also indicates which patent claims, if any, were not reexamined. An
NIRC [may]{.underline} include an examiner's amendment, and
[must]{.underline} include reasons for confirmation of any patent claims
that were determined to be patentable without amendment, and reasons for
allowance of any amended patent claims or any newly added claims. \[MPEP
2287\]

[Reexamination Certificate]{.underline} -- A reexamination proceeding is
concluded by publication of a reexamination certificate. The certificate
amends the text of the patent that was reexamined, in a manner analogous
to a certificate of correction. The Reexamination Certificate will
contain the text of all changes to the text of the patent that was the
subject of the reexamination proceeding. \[MPEP 2288 and 2290\]

[Notice to the Public of Reexamination Certificate]{.underline} --
Publication of a reexamination certificate is announced in the Official
Gazette. \[MPEP 2691\]