Justice Delayed? Here’s Why Inter Partes Reexamination has been Replaced by Inter Partes Review

By Robert Asher. Chair of our Patent Office Litigation Group

Almost a decade ago, Sunstein partner Steven Saunders uncovered the Halteren international patent publication describing a flexible transducer assembly. This technology was the subject of Knowles Electronics’ US Patent No. 6,781,231(“the ’231 patent”) which was being asserted against our client in federal district court and the International Trade Commission (ITC).

Steve recognized the value of the Halteren reference as prior art that could invalidate the significant patent claims of the ’231 patent. Steve and I prepared a request for inter partes reexamination against the ’231 patent in October 2009. In less than two months, the U.S. Patent and Trademark Office (PTO) rejected the significant claims 1-4 over Halteren, thereby initiating the reexamination.

Knowles responded to the rejection by adding additional claims and arguing against the pending rejections. In our comments, we pointed out that Halteren anticipated these newly added claims as well.

Meanwhile, Knowles was asserting the ’231 patent against many competitors. The war engendered by this patent was proliferating. Two more competitors followed our lead and piled on with their own requests for inter partes reexamination. In December 2010, the PTO merged all three reexaminations and issued another comprehensive office action with rejections of the pertinent patent claims and the new claims.

After gathering comments from the patent owner and the requesters, the PTO issued another non-final rejection of the claims 1-4 and the added claims 23-27 in October 2011.

In January 2012, we filed a response, pointing out that a claim construction ruling in the co-pending ITC proceeding was not binding on the PTO, citing In re Trans Texas Holdings Corp., 498 F. 3d 1290 (Fed. Cir. 2007). We addressed Knowles’s revised attempt at further narrowing its claim through a claim construction of “package.”  After receiving all comments, the PTO issued yet another non-final rejection of the claims.

Responding to our attacks on new claims 23-27, Knowles amended the claims further to include a solder reflow capability on the solder pads of the package. We filed our comments on Knowles’s newly amended claims. We objected to the use of “solder reflow process” and “rigid” substrate in the claims as unsupported in the original patent. We reinforced the examiner’s view toward the rejection of the claims on the basis of Halteren and other prior art.

While waiting for the examiner to take action, in early 2013, the heavily litigated dispute between Knowles and our client was settled. Although over three years had elapsed since we filed the reexamination, we still did not have a final ruling.

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