Just Say No to Amending Patent Claims in an IPR with Concurrent Litigation

January 4, 2018 – Article

Just Say No to Amending Patent Claims in an IPR with Concurrent Litigation

In Aqua Prods. Inc. v Matal, 872 F.3d 1290 (Fed. Cir 2017) the Federal Circuit made it much easier for a patentee to amend claims in an IPR. Before Aqua the burden was on the patentee to prove the amended claims were patentable. A burden the PTAB made almost impossible to meet. Aqua shifted the burden to the Petitioner to prove the amended claims were unpatentable. Theoretically this makes the amendment procedure more available to the patentee. However, for patents involved in both IPRs and concurrent district court litigation (about 80% of IPRs), amending claims is a recipe for disaster.

In district court litigation, the claims that proceed to trial must be “substantially” the same as the claims that existed in the patent on the date the complaint was filed. That is, the claim scope must be the same. In cases involving certificates of correction modifying the claims issuing after filing the complaint it is well-established that such certificates are not effective in the litigation if the correction is not apparent from the face of the patent. See H-W Tech., L.C. v Overstock.Com, Inc., 758 F.3d 1329, 1334 (Fed. Cir. 2014). In an IPR amendments distinguish over prior art, this will result in the complaint being dismissed with prejudice unless at least one original patent claim remains for trial. While a dismissal of the current claim with prejudice extinguishes the current claim, can the patentee assert the amended claims in the certificate against the original defendant?

Based on a Federal Circuit decision involving a reexamined patent, if the accused product is not modified from the one involved in the original litigation, the answer is no. Claim preclusion prevents a new litigation. Senju Pharm. Co v. Apotex Inc., 746 F.3d 1344 (Fed. Cir. 2014). Senju involved a reexamined patent where the district court invalidated the original claims. Senju filed an ex parte reexamination request along with an amendment narrowing the claims. The amended claims were patentable over the prior art applied by the district court in finding invalidity of the original claims. Senju then filed a second suit asserting that Apotex’s product would infringe the reexamined claims. The district court found issue preclusion. The Federal Circuit affirmed because the:

In this case we reach the same conclusion that the Aspex court did—claims that emerge from reexamination do not in and of themselves create a new cause of action that did not exist before. We reach this conclusion because a so-called “reexamined patent” is the original patent; it has just been examined another time as indicated in its reexamination certificate. Reexamination does not involve the filing of a new patent application nor the issuance of a new patent.
746 F.3d at 1352

The Court went on to say:

Whether it is possible that a reexamination could ever result in the issuance of new patent claims that were so materially different from the original patent claims as to create a new cause of action, but at the same time were sufficiently narrow so as not to violate the rule against reexamined claims being broader than the original claims, is a question about which we need not opine— that is not the case before us. We hold that, in the absence of a clear showing that such a material difference in fact exists in a disputed patentable reexamination claim, it can be assumed that the reexamined claims will be a subset of the original claims and that no new cause of action will be created. This applies whether the judgment in the original suit was based on invalidity of the claims or simply on non-infringement.
746 F.3d at 1353

Since the reexamined claims were patentable, this should have led to the presumption the claims were materially different from the original invalid claims. Judge O’Malley dissented noting that since the claims in the first suit were invalid, this meant "that Senju had no rights at all under these claims.” [Emphasis in original] Judge O’Malley further stated that if the reexamination did give Senju rights that did not exist in time for Senju to assert them in the first action, claim preclusion should not prevent them from being asserted in the new action, agreeing with Senju’s position.

Unfortunately, dissents are not the law. Until Senju is modified or overruled, in an IPR with concurrent district court litigation, one should assume that claim amendments cannot save the case against the current defendants.