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A Powerful Weapon for Hardening a Patent Portfolio

Jan. 11, 2021, 9:01 AM

Patience is a virtue when preparing a patent enforcement campaign in a competitive environment. With modest investments in money and time, a shrewd internal counsel can reduce risks and strengthen settlement positions by using an underappreciated weapon in a patent lawyer’s arsenal—reissue practice.

Great lawyers, like great generals, strategically use lesser-known weapons. In the patent wars, patent owners should consider the reissue application a weapon of choice. There are two key moments in an enforcement campaign when a patent owner should file reissues: before enforcement and after invalidity.

Although many patent owners overlook it, a reissue is one of the most powerful tools a patent owner can use to harden a portfolio. And a patent is far stronger against validity challenges once it has emerged from a reissue.

Being able to explain that the patent office examined a patent twice burnishes it in the eyes of both a judge and a jury. Additionally, as if by magic, reissues can resuscitate a wounded portfolio. But one must consider the primary drawback associated with a reissue— intervening rights.

Hardening a Portfolio Before Enforcement

A patent owner rarely knows which patent will be valuable when it issues, let alone when the owner files it. If a family does not have any remaining continuations, a reissue can strengthen a portfolio that emerges as critical to market share.

The best method a patent owner has to expand and harden most portfolios is the broadening reissue. A broadening reissue allows a patent owner to add new claim types, new embodiments, and even claims directly reading on competitors’ products. Once a patent owner files a broadening reissue, it can file additional reissue continuation and divisional applications. Reissues not only allow for new claims, but also mitigate almost all validity challenges.

A broadening reissue only has one real limitation: New claims cannot recapture matter previously surrendered (or not preserved during restriction).

The case law in this area is complicated. A wise attorney needs a thorough understanding of the patent-specific facts and case law to navigate reissues.

A patent owner can file a broadening reissue in the two years after a patent issues. The best practice calls for a patent owner to audit each patent 18 months after it issues to determine if a broadening reissue is advisable.

When it is available, a broadening reissue is usually better than a re-examination because it provides much more control and flexibility, although a re-examination is a good approach for the fastest procedure possible.

For many patent families, it might be too late for a broadening reissue. But that does not mean the patent owner should ignore reissues. Narrowing reissues can also mitigate invalidity challenges.

Finally, until an allegation in court, a supplemental examination is a useful complement to the reissue to cure one issue a reissue cannot—alleged inequitable conduct.

Resuscitating a Portfolio After Invalidation

A court, U.S. International Trade Commission (ITC), or USPTO Patent Trial and Appeal Board (PTAB) decision of invalidity does not need to be the end of the road for a patent and related patents. Rather, it is a starting point to strategically revitalize and expand a portfolio through narrowing reissue.

As a practical matter, a broadening reissue is almost never available by the time a patent has been invalidated. But a reissue can still be essential.

A decision invalidating a single patent can doom its entire family, or even an unrelated family of patents with similar claim scope. Patent owners should file a narrowing reissue, or else expect most people to assume that the invalidity infects an entire set of similar patents.

While there are challenges to a post-invalidity reissue, a patent owner must often choose between accepting invalidity and working through a complex narrowing reissue prosecution.

Narrowing Claims to Survive an Invalidity Challenge

A reissue can be a powerful tool to deploy when a patent faces a challenge at the PTAB. While the PTAB has been invalidating fewer patents in recent months, it is still a hard place for a patentee. So, what’s to be done?

A parallel reissue proceeding can be a great solution in the right circumstances. A reissue can incorporate additional claim limitations to simplify claim construction and even obtain narrower claims that read on the accused product.

In some instances, a patentee might even stop defending the patent at the PTAB and alternatively focus on the reissue proceeding.

Intervening Rights

“Intervening rights” are the primary risk confronting patent owners seeking a reissue. These accused infringer rights limit a patent owner’s ability to get damages based on claims amended in a reissue.

But intervening rights are not usually a concern for a patent owner who is not focused on damages, e.g., those asserting patents at the ITC. Understanding how the intervening rights are triggered—and avoided—is critical for any patent owner pursuing reissue.

No matter where you are in an enforcement program, a wise patent owner must deploy all of its weapons and strongly consider reissue to strengthen, expand, or resuscitate a portfolio.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

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Jason D. Eisenberg, a director and practice group leader in Sterne Kessler’s electronics practice group, provides strategic counsel from nearly 30 years of patent experience. He has rendered opinions as a litigation expert (reissue prosecution) and for patentability, invalidity, noninfringement, and other issues.

James R. Hietala is counsel in Sterne Kessler’s electronics practice group with nearly two decades of expertise in intellectual property law. He has worked as in-house counsel in charge of patent office litigation, appeals, and lobbying efforts at the USPTO and has been a private practice district court litigator on dozens of cases.

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