Last Thursday, the USPTO officially announced that:

1. The request for reexamination: If reexamination is requested for fewer than all of the patent claims, the Office's determination on the request (the order granting or denying reexamination) will generally be based on a review on the merits of only the claim(s) for which reexamination was requested.

2. The examination stage of a reexamination proceeding: In the examination stage of the proceeding, the Office will generally only examine claims for which 1) reexamination was requested, and b) a substantial new question of patentability (SNQ) was raised.

The MPEP prior to 8r3 had indicated that "each claim of the patent will be reexamined." As the agency admitted:

This language has resulted in a public perception that the Office is required to examine all claims of a patent, once... reexamination... is requested for at least one claim... This perception is not, however, correct, as the Office is not required to examine the remaining claims; rather the Office has the discretion to do so, or not to do so."

As backdrop, Sony was successfully sued for its Playstation video game player infringing 6,275,213 & 6,424,333, owned by Intervenor Immersion, to the tune of $82 million in royalty damages. So, only after losing, Sony filed a reexam request. Typical. And appealed. Also typical.

To make a long story short, the agency decided only to reexam non-litigated claims, letting the CAFC handle the others. So Sony sued the PTO, because it wanted the PTO to reexamine all the claims. The court ruled that the patent office had statutory discretion to not waste its resources when the court may moot whatever it decided.

In this case, there is parallel, ongoing litigation in the Federal Circuit. And importantly, AIPA’s reciprocal estoppel provisions make clear that parties challenging patent validity determinations are free to pursue inter partes review from the PTO and litigation simultaneously; however, the completion of either process will estop any parallel proceedings. See 35 U.S.C. § 317(b); 35 U.S.C. 315(c). Put more colloquially, a party can choose to run horses in both races, but the conclusion of one race automatically ends the other; a party cannot ride both horses to conclusion. Here, the PTO correctly concluded that the two “races” between the parties were at very different stages: The Federal Circuit appeal was nearing its conclusion, while the PTO’s inter partes review was just beginning. While the PTO conceded the possibility that the Federal Circuit would reverse the district court and remand for a new trial—thereby potentially effectively starting the litigation process anew—it nonetheless implicitly determined that on balance this possibility did not outweigh the good cause favoring suspension.Accordingly, the PTO concluded that it would not be prudent to continue inter partes reexamination of the litigated claims, since the Federal Circuit would likely issue a decision that would moot the PTO’s reexamination efforts. To decline to suspend the reexamination, in the PTO’s view, would risk wasting resources. As the PTO put it:

It is not in the [PTO’s] and the parties’ interests to engage resources in administrative proceedings that ultimately could be mooted by the concurrent litigation [in the Federal Circuit] which is soon to be finally resolved. That is particularly true here where the administrative proceedings have only just begun. In re Mark R. Tremblay, et al., PTO Reexamination Proceeding, (November 17, 2005).