(3) Patent applicant or owner. A patent applicant or owner whose claim is canceled is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:
(i) A claim to substantially the same invention as the finally refused or cancelled claim;
(ii) A claim that could have been filed in response to any properly raised ground of unpatentability for a finally refused or cancelled claim; or
(iii) An amendment of a specification or of a drawing that was denied during the trial proceeding.

The implications of this new Patentee estoppel could be significant for patents which have pending continuation applications. Under proposed Rule 42.73 when one or more of the parent patent claims are cancelled in a post grant proceeding the question arises as to whether claims in the continuation applications “could have been filed in response to any properly raised ground of unpatentability” in the post grant proceeding.
Consider the situation where the parent patent has a broad, generic claim that is cancelled. If the continuation (or reissue) applications present claims narrower in scope than the broad claim which was cancelled and if one assumes that the specification is identical in relevant respect, arguably, the narrow claim could have been presented as a substitute claim in the post grant proceeding. If the Office operates under the premise the continuation application claim should be barred under Rule 42.73(d), the Patentee would be effectively forced to introduce the arrowed, continuation claims in the IPR or PGR proceeding or lose them altogether. Yet, the proposed rules do not provide a mechanism for introducing distinctions en masse outside of a “reasonable number of substitute claims.” In fact, there is a “presumption” that a reasonable number of claims are those presented in one-to-one correspondence with respect to cancelled claims.
On the other hand, where continuation claims (or those in a broadening patent reissue) are broader in one or more respect than the parent patent the Patentee may have a meritorious argument that the claim could not have been properly presented in the post grant proceeding in view of the statutory prohibition against broadening claims in such a proceeding. This may enable Patentees to circumvent the Rule 42.73 estoppel by simply ensuring that their claims are broader than the cancelled claim in at least one respect.
Yet, it seems the Office would be opening up quite a can of worms by establishing a system in which all claims of a portfolio would need to be analyzed with respect to claim scope after a post grant claim cancellation.

http://www.oblon.com/professional/scott-mckeown">Scott A. McKeown

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TO: The Honorable David J. Kappos, Under Secretary of Commerce for Intellectual

Property and Director of the United States Patent and Trademark Office

FROM: Schwegman, Lundberg and Woessner, P.A.

DATE: April 9, 2012

RE: Comments to Various Proposed Rules to Implement the America Invents Act

Via Electronic Mail

[email protected]

Dear Under Secretary Kappos:

Below are our comments on the proposed changes to implement Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions in Fed. Reg. 77(27): 3666–81 (Jan. 25, 2012).

We have the following comments on proposed rule 42.73(d)(3):

(i) is reasonable because the Office should limit recapture of substantially similar claim limitations.

(ii) is not consistent with 35 U.S.C. § 120 and the limitation to only a reasonable number of substitute claims.

(iii) seems unnecessary, unless it is tied to a substantive issue, e.g., lack of § 112 support. The patent owner should not be estopped unless the proposed amendments address the merits of the case and were not denied for some procedural issue, such as laches.

If you have any questions on our comments or would wish for us to further explain any of our comments, please feel free to contact me. Either I or another member of the Schwegman’s leadership will respond to any inquiry.

Very truly yours,

Schwegman, Lundberg and Woessner, P.A.

Lissi Mojica Tim Bianchi Michael Lynch Bradley Forrest

Stephen C. Durant Tom Reynolds Gary Speier Robin Chadwick

Kevin Greenleaf