Razor Scooter Trips Over Reissue Statute at the ITC

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Razor Scooter Trips Over Reissue Statute at the ITC

The US International Trade Commission (“ITC”) recently discontinued CERTAIN MOTORIZED SELF-BALANCING VEHICLES, Investigation No. 337-TA-1000 by Razor USA LLC against alleged infringers relating to electric hoverboards and has denied Razor any relief. The ITC thus confirmed that an original patent will be submitted when a reissue patent is granted, even if a pending continuation of the application from the reissue application contains the claims of the original patent.

The ITC initiated Investigation No. 337-TA-1000 in May 2016. On the same day the ITC opened its investigation, Appellant Razor USA LLC requested the reissue of the asserted patent US Pat. No. 8,738,278 (“the ‘278 patent”), but later requested the PTO to investigate of the reissue request during the investigation, which she did. The investigation moved to a hearing and the ITC found no Section 337 violation. The ITC found that none of the accused products of the respondents participating at the time violated the claims made and that the technical basis of the requirements of the domestic industry was not met. Razor then appealed to the Federal Circuit Court of Appeals.

During the appeal decision, Razor requested the PTO to reissue the reissue process. In July 2018, before the Federal Circuit issued a ruling on the appeal, the PTO issued US Patent No. RE46,964 (“the RE’964 patent”) with a registration form that amended or repealed all of the original claims . The ITC then dismissed the 35 USC § 252 complaint as disputed, arguing that the original claims were abandoned after the reissue patent was granted. The ITC also argued that application of the law would remove any existing cause of action, as the reissue claims are not “substantially identical” to the original claims.

To avoid an argument that the original patent was being abandoned, Razor filed two follow-up requests for reissue prior to the grant of the RE’964 patent, including the original claims from the ‘278 patent. Razor argued against the ITC’s motion that the existence of these pending continuation motions resulted in the original claims not being abandoned, thereby avoiding disputes. Without considering the arguments of the parties, the Federal Circuit referred the case back to the ITC to determine “whether the follow-up events have called the case into question or whether the case can proceed with either the original claims or the newly issued claims, and to perform additional procedures as necessary. “

After reviewing the disclosure by the parties, the ITC closed the investigation as disputed as there were no more enforceable claims in the investigation. The ITC was of the opinion that it could no longer continue the originally submitted claims or the reissue claims that are not essentially identical to the original claims. In addition, Razor was unable to modify the complaint to include the reissue claims, as those claims will not take effect until the date of issue that occurred after the underlying investigation was completed. In its decision, the ITC rejected Razor’s argument that the original claims of the ‘278 patent had not been filed (and are therefore still enforceable) as a request to continue reissue is pending as this is inconsistent with the Reissue Act be.

Snack: Patent holders wishing to use a reissue filing to correct a patent asserted in a lawsuit need to understand PTO procedures and the legal ramifications of a reissue filing. The timing of both filing the application and granting the reissue patent can have a significant impact on a patent owner’s legal rights. For more information on reissue and review procedures at the PTO, see the USPTO’s April 2019 Notice on Change Options here.