How to Lose an IPR but Amend Your Claims in Reexam and Keep Your Patent

On August 30, 2017, the PTAB issued a Final Written Decision in M & P Golf, LLC (d/b/a Cool Clubs) v. Max Out Golf, LLC, IPR2016-00784, Paper 43 (P.T.A.B August 30, 2017), entering adverse judgement on the original patent claims because those claims no longer existed in light of patentably distinct claims obtained by the Patent Owner in a concurrent ex parte reexamination.

On March 29, 2016, M & P Golf filed an IPR petition against Claims 1-6 of Max Out Golf’s patent, which the PTAB instituted on September 6, 2016.  The patent, however, was already the subject of a pending ex parte reexamination filed by an anonymous third-party requester on October 27, 2015 and granted on November 25, 2015.  The Examiner initially rejected Claims 1-6, but ultimately allowed narrower claims upon entry of narrowing claim amendments.   

During pendency of the reexamination, M & P Golf filed a motion in the IPR to stay the reexamination proceeding in view of the instituted IPR.  The Board denied the motion because the Patent Owner had already amended the claims in the reexamination to be, as the Patent Owner admitted, narrower in scope than the original claims instituted in the IPR.  The PTO eventually issued a reexamination certificate for the amended claims.

In light of the amendments granted in reexamination, the PTAB found that the original instituted claims no longer existed, and that any decision regarding the original instituted claims would be moot and purely advisory.  Furthermore, the PTAB agreed with Patent Owner that the reexamined claims are patentably distinct from the originally instituted claims.  As such, the PTAB found that Patent Owner’s reexamination amendments were an abandonment of contest and a request for adverse judgement under 37 C.F.R. § 42.73(b).

This case provides a potential strategy for patent owners to amend claims and save a patent that is, or likely will become, subject to an IPR attack.  Although the reexamination request was filed by a third-party in this case, Patent Owners may consider filing requests on their own patents considering that the chances of amending claims in a reexamination is much higher than in an IPR.  Also, vital to the Patent Owner’s success in salvaging these claims was defeating the Petitioner’s motion to stay the reexamination so that the PTO could issue the reexamination certificate before the PTAB could reach a final written decision in the IPR on the original claims.