In Legend3D, Inc. (Petitioner) v. Prime Focus Creative Services Canada Inc. (Patent Owner), Case IPR2016-00806, the Patent Trial and Appeal Board (Board) lifted a stay of a pending reissue application following a Final Written Decision, thereby allowing the Patent Owner another opportunity to pursue amended claims. Although the Federal Circuit recently determined that the PTAB can no longer place the burden of establishing the patentability of amended claims on the patent owner in IPR proceedings,[1] patent owners may want to consider pursuing alternative claims in a reissue proceeding, given the ex parte nature and procedural flexibility that reissue offers.

Here, the sequence of events was as follows:

  • March 28, 2016: IPR filed.
  • Dec. 29, 2016: Reissue application filed.
  • Feb. 2, 2017: Order staying reissue application.
  • Sept. 18, 2017: Final Written Decision and denial of Patent Owner’s motion to amend.
  • Dec. 8, 2017: Stay of reissue application lifted following lapse of appeal period.
  • Dec. 23, 2017: Second preliminary amendment filed in reissue application.

Based on the issuance of the Final Written Decision, and the fact that no appeal was taken, the Board considered the IPR proceeding completed (IPR2016-00806, Paper 79 at 3). The Board also noted that Patent Owner stated that its second preliminary amendment in its reissue application would present claims patentably distinct from the original patent claims (id.).[2]

The Board reasoned that, in view of the completion of the IPR, there was no longer a concern about duplicate efforts and inconsistencies between proceedings (id. at 4).  In addressing Petitioner’s arguments that the reissue application was infected by Patent Owner’s misrepresentations during the IPR, the Board noted that Patent Owner must present to the Office the complete record of the IPR proceeding, and that the Office would examine the reissue application in light of the complete record (id.).

Accordingly, this case is a good example of a patent owner keeping its options alive despite a cancelation of all claims in the IPR. Although examined in view of the IPR record and subject to the requirements of the reissue provisions, the ex parte prosecution of a reissue application provides significant flexibility and advantages to a patent owner, especially one tasked with persuading the Office that its amended claims are patentably distinct from those addressed in an IPR.

[1]See Aqua Products, Inc. v. Matal, 2015-1177 (Fed. Cir. 2017).

[2]37 C.F.R. § 42.73(d)(3)(i): Patent applicant or owner. A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim; …