As the Board continues to develop its jurisprudence related to the amendment of patent claims in inter partes review, the Board has repeatedly suggested that patent owners that want to make substantial amendments to the claims should consider filing a petition for ex parte reexamination of their own patents. See, e.g., Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (Jun. 11, 2013) (“If a patent owner desires a complete remodeling of its claim structure according to a different strategy, it may do so in another type of proceeding before the Office. For instance, a patent owner may file a request for ex parte reexamination, relying on the Board’s conclusion of a petitioner’s having shown reasonable likelihood of success on certain alleged grounds of unpatentability as raising a substantial new question . . . .”); Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00066, Paper 24 (Jul. 18, 2013) (“To the extent that [patent owner] perceives the limit for motions to amend to be unfair, [patent owner] is not without remedy. [patent owner] may possibly pursue such additional claims by filing a request for ex parte reexamination or by filing a reissue application.”).

The Board recently provided an additional incentive for a patent owner to attempt this approach when its patent is placed in inter partes review. Under a recent decision, amended or new claims inserted into a patent as part of a reexamination proceeding do not result in a “new patent.” Thus, the one-year bar erected by 35 U.S.C. § 315(b) continues to run from the date of an original suit against an accused infringer. Specifically, in Biodelivery Sciences Int’l, Inc. v. Monosol Rx, LLC, IPR2013-00315, Paper 31 (Nov. 13, 2013), the Petitioner was served with a complaint asserting the patent at issue on September 27, 2011. An ex parte reexamination the patent was requested on January 20, 2012, and a reexamination certificate issued on July 3, 2012. The certificate included an amendment of each of the original claims was amended (either expressly or by virtue of claim dependency) and new claims were added. The petition for inter partes review was filed on June 15, 2013 (after the one-year period provided under section 315(b)). The Board denied “the petition because it was not filed within the one-year period set forth in 35 U.s.C. § 315(b).” “We must decide whether 35 U.S.C. § 315(b) bars a petition filed more than one year after a complaint alleging infringement was served on the petition, even when the petition challenges claims amended by a reexamination certificate issued after service of the complaint. We determine that it does.”

The Petitioner argued that “issuance of the reexamination certificate effectively created a new patent . . . in which none of the claims is substantially identical to the claims of the original . . . patent.” The Petitioner further argued that this new “patent did not exist before July 3, 2012, and has no retroactive effect, due to substantial changes to all claims.” The Board rejected the Petitioner’s “argument that reexamination results in the issuance of a new patent. It does not. A reexamination certificate merely ‘incorporat[es] in the patent any proposed amended or new claim determined to be patentable.’ 35 U.S.C. § 307(a) (emphasis added). The reexamination certificate itself states: ‘The patent is hereby amended as indicated below.’ . . . Accord Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1341-42 (Fed. Cir. 2012) (‘Unlike reissue, reexamination does not result in the surrender of the original patent and the issuance of a new patent.’). The identical reference in §315(b), to . . . ‘the date on which the petitioner . . . is served with a complaint alleging infringement of the patent’ (emphasis added), indicates that the timeliness analysis is to be made with reference to ‘the patent.’”

The Board further rejected the argument that the petitioner did not have a year to evaluate the claims as amended by the reexamination certificate. “This argument is not persuasive, because [Petitioner] had its year to evaluate the claims, as discussed above. That year ended September 27, 2012. [Petitioner] itself manufactured any supposed reduction in its evaluation time by requesting ex parte reexamination.” See also Biodelivery Sciences Int’l, Inc. v. Monosol Rx, LLC, IPR2013-00316, Paper 28 (Nov. 13, 2013).

Thus, based on this decision, it would appear that a request for ex parte reexamination filed by the patent owner while the inter partes review is pending might give a patent owner more than just an ability to amend its claims more freely; it might provide a patent owner with a way to insulate amended or new claims emerging from ex parte reexamination from inter partes review as to parties that it had filed suit against. Whether this strategy might prove successful is yet to be determined. For example, it is unclear whether the petitioner might have had different arguments that it could have made to avoid the effects of section 315(b). It is also unclear whether this same result would have been reached if a third party or the patent owner had filed the request for ex parte reexamination. Finally, it is unclear whether the Patent Office can continue to exercise jurisdiction over a patent that has all of its claims cancelled by inter partes review if the later-filed ex parte reexamination is stayed pending the outcome of the inter partes review. Nonetheless, these recent decisions by the Board regarding section 315(b) might give patent owners some strategic decisions to make when their patents are placed in inter partes review by accused infringers.

Until recently, there appeared to be an inconsistency in how the PTAB was treating the question of whether patent claims were entitled to an earlier effective filing date. For example, the PTAB had held that it did not need to determine if a petitioner was correct in its argument that claims at issue were not entitled to an earlier priority date “because entitlement to a priority date for any claim is a matter for which [Patent Owner] bears the burden of proof.” Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2013-00009, Paper 10 (Mar. 28, 2013). The Board explained that since the patent owner only made a “conclusory statement” regarding the effective filing date of a claim, the claim would be treated as having the filing date of the patent at issue, and not an earlier filing date for the purposes of the institution decision. Id.

More recently, however, the Board denied certain grounds in a petition for IPR because the petitioner only provided conclusory statements regarding the effective filing date of a claim. See Hewlett-Packard Co. v. MCM Portfolio, LLC, IPR2013-00217, Paper 10 (Sept. 10, 2013). The Board noted that the petitioner “provides little explanation regarding its proposed effective filing date, basing its entire argument” on an alleged admission by the patent owner’s exclusive licensee made during an ITC investigation. The petitioner “does not explain why the actions of [patent owner’s] licensee in another proceeding would be applicable here; not does [petitioner] provide any evidence, aside from one conclusory statement by an expert . . . to support this assertion.” The Board noted that none of the priority applications were in the record in the proceeding, and the expert does not even mention the earlier filed applications cited in a certificate of correction, suggesting that he may not even have been aware of them. Therefore, the Board declined to institute inter partes review based on the intervening references. The Board may have provided an explanation of how to distinguish these decisions in Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 9 (Nov. 15, 2013). In that decision, the PTAB explained that “[i]n an inter partes review, the burden is on Petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. With respect to entitlement to earlier effective filing dates, the Patent Owner is not presumed to be entitled to earlier filing dates of ancestral applications which do not share the same disclosure. But, the issue first has to be raised by Petitioner in its petition, by identifying, specifically, the features, claims, and ancestral applications allegedly lacking § 112, first paragraph, written description and enabling disclosure support for the claims based on the identified features. Then, the Patent Owner has to make a sufficient showing of entitlement to earlier filing date or dates, in a manner that is commensurate in scope with the specific points and contentions raised by Petitioner.”

The PTAB recently clarified the instances in which it might consider a motion to limit the cross-examination of a declarant and when it might not. According to prior decisions by the PTAB, anything a declarant says in a declaration was fair game for cross-examination of that declarant in a post-issuance trial proceeding. As I explained back in October, the PTAB had previously refused to allow a party to file a motion to limit the scope of cross-examination to the grounds on which trial was instituted. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00128, Paper 34 (Sept. 16, 2013). For example, in Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 18 (May 3, 2013); Kyocera Corp. v. Softview LLC, IPR2013-00007, Paper 18 (May 3, 2013); and Kyocera Corp. v. Softview LLC, IPR2013-00007, Paper 18 (May 3, 2013), the Board noted that the witness submitting a declaration must be made “available for cross examination on all direct testimony.” A similar decision was made in Micron Tech., Inc. v. The Bd. of Trustees of the Univ. of Illinois, IPR2013-00005, Paper 21 (Apr. 15, 2013); Micron Tech., Inc. v. The Bd. of Trustees of the Univ. of Illinois, IPR2013-00006, Paper 18 (Apr. 15, 2013); Micron Tech., Inc. v. The Bd. of Trustees of the Univ. of Illinois, IPR2013-00008, Paper 27 (Apr. 15, 2013), where the Board explained that under 37 C.F.R. 42.53(d)(5)(ii), the proper scope of cross examination is the scope of direct testimony. The Board explained that testimony about grounds on which trial was not instituted “may be relevant to the state of the prior art.” Then, in October, the Board issued a decision in ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00133, the petitioner “requested that cross-examination be limited to the grounds on which trial was instituted.” The Patent Owner noted that 37 C.F.R. 42.53(d)(5)(ii) allows cross-examination into “all statements” made by the declarant, “including statements unrelated to the grounds on which trial was instituted.” The Board agreed with the petitioner this time, citing Section (I)(F) of the Office Patent Trial Practice Guide’s statement that “discovery before the Board is focused on what the parties reasonable need to respond to the grounds raised by an opponent,” 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012). “Accordingly, the Board indicated that the cross-examination is limited to statements of [the declarant] related to the grounds on which trial was instituted.”

The Board has recently distinguished ContentGuard Holdings in Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00266, Paper 27 (Nov. 26, 2013). During the initial conference call with the Board, the Petitioner sought authorization to file a motion to limit the scope of cross examination of its expert “to those portions of” the expert’s declaration “that relate to the grounds on which inter partes review was instituted. [Petitioner] cites ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00133, Paper 30 at 2 (PTAB Oct. 9, 2013), to support its request.” The Board distinguished the ZTE case because “The Board determined that references cited in the grounds not instituted on did not anticipate and/or render obvious all of the claim limitations.

“In contrast, in the instant proceeding, the Board did not institute on all grounds because of redundancy. . . . In fact, throughout the petition, [Petitioner] states that the references relate to the same or similar subject matter. . . . Thus, the grounds on which inter partes review were instituted are reasonably related to the grounds on which this panel declined to institute inter partes review due to redundancy. The cross-examination testimony already is limited to the scope of the direct testimony, see 37 C.F.R. § 42.53(d)(5)(D)(ii), and the Board declines to limit it further.”

The PTAB may have shed some light on how it will address multiple petitions attacking the same claims of the same patent by the same petitioner. Specifically, in Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19 (Nov. 21, 2013), the Board invoked . “Several months prior to filing the instant petition, [Petitioner] filed a petition on January 29, 2013, that requested inter partes review of claims 1-8 of the . . . patent. . . . On July 29, 2013, the Board granted the . . . Petition, and instituted inter partes review of claims 1-8.” The Board denied the petition, explaining that “Congress did not mandate that an inter partes review must be instituted under certain conditions. Rather, by stating that the Director—and by extension, the Board—may not institute review unless certain conditions are met, Congress made institution discretionary. In determining whether to institute an inter partes review, the Board may ‘deny some or all grounds for unpatentability for some or all of the challenged claims.’ 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).

“Our discretion is further guided by 35 U.S.C. § 325(d), which reads as follows (emphasis added) . . . In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”