Leahy-Smith
America Invents Act
Some Prosecution and Litigation
Perspectives
Jeffrey D. Mills
Dean M. Munyon
Austin Intellectual Property Law Association
November 15, 2011
Overview
Changes to Sections 102 and 103
 Post-Grant Procedures
 Litigation-Related Topics

Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
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Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
What is your favorite color?
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Red 342428
Blue 342429
Green 342430
Yellow 342431
Other 342432
Changes to 102 and 103
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Sec. 3 of AIA
Section 102 rewritten
First-to-file
Invention date no longer relevant inquiry
 No more Rule 131 declarations
 Interferences eliminated
 35 USC 102(g), 104 repealed
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Grace Period
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Uncertainty
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
“Effective Filing Date” (EFD)
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Changes apply to applications with claims having
“effective filing date” on or after March 16, 2013.
EFD of claimed invention is either:
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Date of Priority Claim (e.g., filing date of parent application
that discloses claimed invention); or
Actual Filing Date.
Defined in Sec. 100(i) for “claimed invention.”
Defined in Sec. 102(d) (“effectively filed”) for
patent/application prior art under 102(a)(2).
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Section 100(i): EFD for Claimed
Invention
(i)(1) The term “effective filing date” for a claimed
invention in a patent or application for patent means–
(A) if subparagraph (B) does not apply, the actual filing
date of the patent or the application for the patent
containing a claim to the invention; or
(B) the filing date of the earliest application for which
the patent or application is entitled, as to such
invention, to a right of priority under section 119,
365(a), or 365(b) or to the benefit of an earlier filing
date under section 120, 121, or 365(c).
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Question 1

Which of the following does the AIA change the
most from a prior art perspective?
(A) German national application with PCT
application published in English and designating
U.S. 341366
 (B) Offer for sale in Canada
341367
 (C) Japanese national application with no
international or U.S. application 341368
 (D) Publication by inventor within 1 year of filing
341369

Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Two Classes of Prior Art under 35
USC 102
Section 102(a)(1): Certain events before EFD of
claimed invention. Has features similar to
former sections 102(a), (b), and (d). Subject to
exceptions in Section 102(b)(1).
Section 102(a)(2): Patent/Application Prior Art.
Has features similar to former section 102(e).
Subject to exceptions in Section 102(b)(2).
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 102(a)(1)

Claimed invention is not novel if:
Patented
 Described in Printed Publication
 In Public Use
 On Sale
 Otherwise Available to Public

before the EFD. Section 102(b)(1) lists certain
exceptions.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 102(a)(1)
(a) Novelty; Prior Art- A person shall be entitled
to a patent unless-(1) the claimed invention was patented,
described in a printed publication, or in public
use, on sale, or otherwise available to the public
before the effective filing date of the claimed
invention….
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 102(a)(1): Catchall provision
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
The phrase “otherwise available to the public” apparently
means something other than patented, described in a printed
publication, in public use, or on sale, but is not defined.
What else does it cover?
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Publicly known information from former 102(a)?
Gaps as to whether something would be considered a “printed
publication”?
Borderline public use cases?
In isolation, “otherwise available to the public” could be read
to suggest that the other enumerated events in 102(a)(1) also
require public availability. Such a reading may be unlikely
since prior case law did not have this requirement (e.g., secret
commercial use).
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Effect of 35 USC 102(a)(1)

102(a)(1) is an expansion of available prior art:
Public use and on sale activities outside U.S. now
constitute prior art.
 Determination of prior art at EFD rather than date
of invention, as in former 102(a).
 102(a)(1) does not differentiate as to the “source” of
the event (e.g., whether the “public use” was by the
inventor or by another).
 Catchall provision increases what can be considered
prior art, but by how much?

Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Patent/Application Prior Art: 35 USC
102(a)(2)
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Claimed invention not novel if described in
U.S. patent;
 U.S. published application; or
 International application designating the U.S.
(“deemed published” application)


that
Names “another inventor”; and
 Is effectively filed (35 USC 102(d)) before the EFD
of the claimed invention.

Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 102(a)(2)
(a) Novelty; Prior Art- A person shall be entitled to a
patent unless-***
(2) the claimed invention was described in a patent
issued under section 151, or in an application for patent
published or deemed published under section 122(b), in
which the patent or application, as the case may be,
names another inventor and was effectively filed before
the effective filing date of the claimed invention.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 102(d)
(d) Patents and Published Applications Effective as Prior Art- For
purposes of determining whether a patent or application for
patent is prior art to a claimed invention under subsection (a)(2),
such patent or application shall be considered to have been
effectively filed, with respect to any subject matter described in
the patent or application-(1) if paragraph (2) does not apply, as of the actual filing date of
the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a
right of priority under section 119, 365(a), or 365(b), or to claim
the benefit of an earlier filing date under section 120, 121, or
365(c), based upon 1 or more prior filed applications for patent,
as of the filing date of the earliest such application that describes
the subject matter.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Hilmer Doctrine Abolished

Previously, there were detailed rules about a reference’s
effective date under 35 USC 102(e). See MPEP
706.02(f)(1). Under the Hilmer doctrine, for example, the
102(e) date of an application claiming priority to a foreign
national application is its U.S. filing date.
1 year or less
Inventive
Entity #1
Inventive
Entity #2
Japanese
Application
Filed
U.S. Application Filed
with Priority Claim
Under 35 USC 119
U.S.
Application
Filed
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Publication
Effective Date under former 102(e);
application of Entity #1 is not prior
art under 102(e) to application of
Entity #2
Hilmer Doctrine Abolished

Under the new law, a U.S. application claiming
priority to a foreign application under 35 USC 119
can be considered to be effectively filed under
102(a)(2) as of the foreign filing date.
1 year or less
Inventive
Entity #1
Japanese
Application
Filed
Inventive
Entity #2 Effective Date
under new
102(a)(2)
U.S. Application Filed
with Priority Claim
Under 35 USC 119
U.S.
Application
Filed
Publication
Application of Entity #1 is 102(a)(2) prior
art to that of Entity #2
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Effect of 35 USC 102(a)(2)
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102(a)(2) increases the scope of patent/application prior art
by allowing certain patents/applications to have an earlier
effective date (in addition to the scenario outlined in the
preceding slides, 102(a)(2) also removes the requirement
that international applications designating the U.S. must be
published in English to be effective as prior art).
102(a)(2) does not draw in all patent-related prior art. For
example, if there is a foreign national application, but no
subsequent patented or published U.S. national application
or an international application designating the U.S.,
102(a)(2) does not appear to apply.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 102(b) Disclosures:
Exceptions to 102(a) Art
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102(b)(1) provides exceptions to 102(a)(1) art;
includes certain “disclosures” made a year or less
before EFD of claimed invention.
102(b)(2) provides exceptions to 102(a)(2) art;
includes certain “disclosures” appearing in
patents and applications.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 102(b)(1) Exceptions
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A “disclosure” 1 year or less before the EFD of a claimed
invention is not prior art under 102(a)(1) if:
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Disclosure made by an inventor *: 102(b)(1)(A)
The subject matter of the disclosure was previously publicly
disclosed by an inventor *: 102(b)(1)(B)
 Previous public disclosure will be 102(a)(1) art unless
102(b)(1)(A) applies (public disclosure within a year of EFD of
claimed invention).
*Or another who obtained the subject matter disclosed from
an inventor directly or indirectly
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 102(b)(1)
(b) Exceptions(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE
EFFECTIVE FILING DATE OF THE CLAIMED
INVENTION- A disclosure made 1 year or less before the
effective filing date of a claimed invention shall not be prior art
to the claimed invention under subsection (a)(1) if-(A) the disclosure was made by the inventor or joint
inventor or by another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint
inventor; or
(B) the subject matter disclosed had, before such disclosure,
been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 102(b)(2) exceptions
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A disclosure in a patent/application is not prior art
under 102(a)(2) if:
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The subject matter disclosed by was obtained directly or
indirectly from an inventor: 102(b)(2)(A).
The subject matter disclosed, before its EFD under 102(a)(2),
was previously publicly disclosed by an inventor or another
who obtained the subject matter disclosed from an inventor:
102(b)(2)(B).
Disclosed subject matter and claimed invention commonly
owned/subject to assignment not later than EFD:
102(b)(2)(C).
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 102(b)(2)
(2) DISCLOSURES APPEARING IN APPLICATIONS
AND PATENTS- A disclosure shall not be prior art to a
claimed invention under subsection (a)(2) if-(A) the subject matter disclosed was obtained directly or
indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such
subject matter was effectively filed under subsection (a)(2),
been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly
or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed
invention, not later than the effective filing date of the
claimed invention, were owned by the same person or
subject to an obligation of assignment to the same person.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Example of 102(b) Exceptions
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1/1/15: A publishes paper describing X (public disclosure)
2/1/15: B publishes paper describing X (not obtained from A)
10/1/15: B files patent application describing X; application later publishes (B’s
EFD)
12/1/15: A files application claiming X (A’s EFD)
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For B’s application:
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A’s paper is 102(a)(1) art; no 102(b)(1) exceptions apply
B’s application will be rejected based on A’s paper
For A’s application:
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A’s paper is 102(a)(1) art; exempted under 102(b)(1)(A)
B’s paper is 102(a)(1) art; exempted under 102(b)(1)(B)
B’s application is 102(a)(2) art; exempted under 102(b)(2)(B)
A’s application will not be rejected based on its paper, B’s paper, or B’s application
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Example of 35 USC 102(b)(2)(C)
Exception
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Scenario:
 Application #1: discloses X
 Application #2: commonly-owned, filed six months later
with different inventive entity, claims X
Previously, disclosure of X in application #1 would prevent
patenting of X in application #2.
Because of 102(b)(2)(C), application #1 is not prior art to
application #2 under 102(a)(2).
102(c) extends this same protection to joint research
agreements.
These provisions may be beneficial to entities with large
patent portfolios.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Answer to Question 1

Which of the following does the AIA change the most from
a prior art perspective?
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(a) German national application with PCT application published in
English and designating U.S.-now prior art under 102(a)(2) and
102(d) as of German filing date.
(b) Offer for sale in Canada-Under 35 USC 102(a)(1), now prior art
where previously the offer for sale had to be in the U.S.
(c) Japanese national application with no international or U.S.
application-102(a)(2) does not apply if there is no corresponding
U.S. or PCT application designating the U.S.
(d) Publication by inventor within 1 year of filing-now prior art
under 102(a)(1) but exempted under 102(b)(1)(A).
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
“Disclosures” in 102(b)
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What is a “disclosure”?
The answer affects the applicability of 102(b)(1)
in the first instance, and thus the scope of the
grace period.
This term is not defined in the AIA.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Interpretations of “Disclosures”
Under 102(b)(1)
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One end of spectrum: “disclosures” include all listed
events in 102(a)(1).
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Arguments that may favor this interpretation:
 Policy: continuation of established expectations
 Textual: inclusion of “publicly disclosed” in statute may imply
broader reading of “disclosure”
Would create grace period similar to existing grace period.
Other end of spectrum: “disclosures” only include such
activities as publications and public presentations, not
public uses or sales.


Arguments that may favor this interpretation:
 Legislative history
Would create much more limited grace period.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
“Public Disclosures”
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Publications and public presentations are almost
certainly examples of public disclosure under
102(b)(1)(B) and 102(b)(2)(B).
Does the term include some public uses or sales?
Public disclosures under 102 have the dual effect of:

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Creating prior art against other parties.
Eliminating prior art of other parties as to the inventor.
What is the scope of the first to publicly disclose
protection provided by 102(b)(1)(B) and 102(b)(2)(B)?
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
First-to-File Comments
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Currently have a de facto first-to-file system
since interferences and Rule 131 declarations are
rare.
Continued emphasis on turnaround from receipt
of disclosure to filing of application.
Increased use of provisional filings in certain
situations.
Larger issues exist with scope of grace period.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Grace Period Comments
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Great uncertainty in advising clients regarding grace
period (e.g., whether public use and sale/offer for sale
by inventor within 1 year of filing are exempted as
“disclosures” under 102(b)(1)(A)).
This uncertainty may require IDS of such pre-filing
activities to PTO while law is clarified.
These effects are magnified for smaller clients.
Increased filings through March 15, 2013 to avoid new
regime (e.g., on sale activity on March 1, 2013).
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 103

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Under previous version of 35 USC 103,
obviousness assessed “at the time the invention
was made.”
New 103 assesses obviousness as of the
“effective filing date of the claimed invention.”
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 103

A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not
identically disclosed as set forth in section 102, if the
differences between the claimed invention and the prior
art are such that the claimed invention as a whole
would have been obvious before the effective filing
date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention
pertains. Patentability shall not be negated by the
manner in which the invention was made.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Third-Party Prior Art Submissions
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Adds subsection (e) to 35 USC 122, allowing any party
to submit printed prior art in a patent application.
Submissions can be made beginning September 16,
2012, in any pending application as long as timing
requirements of 122(e)(1)(A) and (B) are fulfilled.
Unlike current 37 CFR 1.99, submission must “set
forth a concise description of the asserted relevance of
each submitted document.”
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 122(e) Submission Timing


Submissions must be submitted before notice of
allowance.
Prior to notice of allowance, art submission can
be submitted up to:
6 months after publication or
 Date of first rejection

whichever comes later.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
35 USC 122(e) Submission Timing
Examples
Publication
Office
Action
rejection
Publication +
6 mos.
Notice of
allowance
Last third-party
submission
date
Publication
Publication +
6 mos.
Office
Action
rejection
Notice of
allowance
Last third-party
submission
date
Publication
Notice of
allowance
Publication +
6 mos.
Last third-party
submission
date
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Post-Grant Proceedings
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Supplemental Examination: AIA Sec. 12
Ex Parte Reexamination: AIA Sec 6(h)
Inter Partes Reexamination: AIA Sec. 6(c)
Inter Partes Review: AIA Sec. 6(a)
Post-Grant Review: AIA Sec. 6(d)
Transitional Post-Grant Review for Business
Method Patents: AIA Sec. 18
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Supplemental Examination
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Basis: Any information
AIA:
New (35 USC 257)
 Available on September 16, 2012 for any current or
future patent.
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Standard: Substantial New Question (SNQ) of
Patentability
Availability: Any time after issuance
Estoppel: None
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Supplemental Examination


Provides basis for patent owner to request that the
PTO “consider, reconsider, or correct information
believed to be relevant” to a patent. 35 USC 257(a).
Unlike patent owner-initiated ex parte reexamination,
supplemental examination is not limited to patents and
printed publications. For example, may be based on:



Information relating to a potential on-sale bar
Information relating to a pending application.
Request for supplemental examination to be decided
within 3 months; if substantial new question of
patentability raised, ex parte reexamination ordered. 35
USC 257(a), (b).
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Effect of Supplemental Examination


Patent will not be held unenforceable on the
basis of information presented during a
supplemental examination. 35 USC 257(c)(1).
35 USC 257(c)(2) lists exceptions to the above
rule. For example, 257(c)(1) does not apply
when a supplemental examination not
completed by date a patent enforcement action
is brought in the ITC or district court.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Supplemental Examination and
Litigation

In view of Therasense materiality standard,
potentially useful when:
Prior art reference that does not meet “but for”
materiality standard
 Potential affirmative misrepresentation made to
PTO that would not impact issuance of patent
claims (may be material even though “but for”
standard not met).

Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Ex Parte Reexamination
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Basis: Printed Patents and Publications
AIA: Removes option to seek district court
review (effective September 16, 2011).
Procedure is otherwise unchanged.
Standard: Substantial New Question of
Patentability (SNQ)
Availability: Any time after issuance
Estoppel: None
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Inter Partes Reexamination
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Basis: Printed Patents and Publications
AIA: Eliminates inter partes reexamination as of September 16,
2012; standard for instituting changed in the interim
Standard:
 Request filed prior to September 16, 2011-SNQ.
 Request filed between September 16, 2011 and September 15,
2012-Reasonable likelihood that the requester will prevail
with respect to at least one of the claims challenged in the
request.
Availability: Any time after issuance
Estoppel: In civil action, as to any ground that was raised or
could have been raised in inter partes reexamination
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Question 2
Which of the following components of inter partes
review and post-grant review are the same under
the AIA?
(a) Bases for invalidity challenges 341398
(b) Standard used by PTO in granting request for
review 341399
(c) Timing of Request 341400
(d) Estoppel Standard 341401
(e) None of the above 341402
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Inter Partes Review


Basis: 102/103 Grounds Based on Printed Patents and
Publications
AIA: New (35 USC 311-319)



Effective September 16, 2012
Standard: Reasonable likelihood that the requester will prevail
with respect to at least one of the claims challenged in the
request. Takes patent owner preliminary response into account.
35 USC 314(a).
Availability-35 USC 311(c):

After later of



Expiration of 9-month period after grant/reissuance
If PGR is instituted, at its termination.
Also, must be filed within one year of being sued for infringement of the
patent.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Inter Partes Review

Estoppel-35 USC 315(e):
Attaches upon “final written decision” on a claim
(see 35 USC 318(a)).
 Applies to PTO, district court, and ITC proceedings.
 Raised or reasonably could have raised standard.
 Applies to real party in interest/privy of petitioner.

Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Inter Partes Review
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After petition, patent owner permitted preliminary
response.
Petition to be decided by Office within 3 months of
preliminary response (or deadline for filing such response).
Heard by Patent Trial and Appeal Board (PTAB).
Settlement permitted if no merits decision reached.
Final determination within 1 year (additional 6 months for
“good cause”).
Appeal to Federal Circuit.
Intervening rights same as those for reissues under 35 USC
252.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Inter Partes Review



Filing of declaratory judgment action bars inter partes review by DJ
plaintiff (counterclaim does not create bar).
Provisions for automatic stay of subsequent civil action against
patent by petitioner.
Regulations forthcoming on a number of topics, including:



Discovery (including deposition of witnesses submitting affidavits or
declarations).
Protective Orders.
Amendments



One motion to amend to cancel and/or propose reasonable number
of substitute claims.
Additional joint motions to amend to advance settlement may be
granted.
No broadening of claims.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Post-Grant Review


Basis:
 Invalidity under 101, 102, 103, 112 (except best mode), 251. 35
USC 321(b).
 “Novel or unsettled legal question that is important to other
patents or patent applications.” 35 USC 324(b).
AIA: New (35 USC 321-329)
 “Regular” PGR: available for patents filed on or after March
16, 2013.
 Transitional program: available for certain business method
patents in litigation or under threat of litigation beginning
September 16, 2012. Program runs for 8 years and is available
for any covered patent.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Post-Grant Review



Standard: If information in petition is not rebutted, more
likely than not that at least 1 of the claims challenged in
the petition is unpatentable. 35 USC 324(a).
Availability-Must be filed within 9 months of
grant/reissue. 35 USC 321(c).
Estoppel-35 USC 325(e):




Attaches upon “final written decision” on a claim (see 35
USC 328(a)).
Applies to PTO, district court, and ITC proceedings.
Raised or reasonably could have raised standard.
Applies to real party in interest/privy of petitioner.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Post-Grant Review




Discovery to be limited to evidence directly related to
factual assertions advanced by either party in the
proceeding (regulations forthcoming).
No PGR for claims not broadened during reissue
where original patent not otherwise eligible for PGR.
If patent infringement action filed within 3 months of
grant, motion for preliminary injunction cannot be
stayed based on PGR request.
While estoppel standard in PGR is the same as inter
partes review, potential scope of estoppel is much
greater than in inter partes review since there are more
grounds for challenging validity in PGR.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Post-Grant Review Similarities to
Inter Partes Review









Petition/Preliminary Response Period.
Filing of declaratory judgment acts as bar to PGR (counterclaim
OK).
Automatic stay provisions for subsequent civil action against
patent by petitioner.
Heard by PTAB.
Amendment procedure.
Settlement.
Final determination time period.
Appeal.
Intervening rights.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Answer to Question 2
Which of the following components of inter partes review and post-grant review
are the same under the AIA?
(a) Bases for invalidity challenges
Inter partes review: 102, 103
PGR: 101, 102, 103, 112 (no best mode), 251; novel legal question.
(b) Standard used by PTO in granting request for review
Inter partes review-Reasonable likelihood petitioner will prevail,
considering preliminary response if any.
PGR-More likely than not at least one challenged claim is unpatentable,
considering petition but not preliminary response.
(c) Timing of Request
Inter partes review-After PGR or PGR window concludes; within one year
of suit.
PGR-During 9-month window after grant/reissue.
(d) Estoppel standard-Same; Raised or reasonably could have raised.
(e) None of the above
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Transitional Post-Grant Review for
Business Method Patents




Basis:
 Applies to “covered business method patents,” including those already
patented as of effective date.
 For challenges based on old 102/103, limitations on what prior art may be
used. Sec. 18(a) (1)(C).
 For challenges under new AIA provisions, same limitations as PGR.
AIA:
 New (Section 18 of AIA)
 Effective September 16, 2012
Standard: Same as PGR.
Availability:
 Sunsets 8 years after effective date.
 If PGR applicable, not available during PGR window.
 Petitioner or real party in interest or privy must have been sued or “charged”
with infringement of patent.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Transitional Post-Grant Review for
Business Method Patents

Estoppel-Upon “final written decision,” attaches
For PTO proceedings, for issues raised or that could
reasonably have been raised.
 For civil action/ITC proceedings, for issues raised.
 Unlike inter partes review and standard PGR, estoppel
does not apply to petitioner’s privy.

Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
What is a “Covered Business Method
Patent”?




Sec. 18(d)(1): A patent that claims a method or
corresponding apparatus for performing data
processing or other operations used in the practice,
administration, or management of a financial product
or service.
The term does not include “patents for technological
inventions.”
Clarifying regulations to be issued by Director. Sec.
18(d)(2).
Patents in Class/Subclass 705/39 seem most vulnerable
to being classified as covered patents.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Transitional Post-Grant Review:
Miscellaneous Provisions



Lists factors for deciding stay in civil action
relating to patents having transitional
procedures. Sec. 18(b).
Automated teller machine does not constitute
regular and established place of business for
purposes of venue statute. Sec. 18(c).
Not to be interpreted as affecting categories of
patentable subject matter. Sec. 18(e).
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Question 3
What will be the likely effect of the new post-grant
proceedings on patent litigation strategy?





A. Third party prior art submissions will likely be used
in some cases to avoid patent litigation. 341634
B. Use of inter partes and post-grant review
proceedings will increase, at least for business method
patents. 341635
C. Ex parte reexamination is likely to remain the
primary post-grant proceeding used concurrently with
patent litigation. 341636
D. None of the above 341637
E. All of the above 341638
Question 3 - Answer


E. All of the Above.
A. Third party prior art submissions will likely be used in some cases to avoid
patent litigation.




B. Use of the Inter partes and post-grant review proceedings will likely
increase, at least for business method patents.




No estoppel or threshold
Useful where third party is practicing prior art
But requires knowledge of patent publication
Concern for both is estoppel on what could have been raised
Especial concern for PGR within 9 months because of broad scope
Estoppel only on what is raised for transitional business method patent PGR
C. Ex parte reexamination is likely to remain the primary post-grant
proceeding used concurrently with patent litigation



No Estoppel
But Inter partes has been increasingly used
Court vs PTO as preferred forum for validity regardless of estoppel effect?
Prior Art
Ex
submission Parte
(§122)
Post Grant
Inter
Partes
Timing
6 mos of
publication or
date of first
rejection
No limit
Within 9 months
of issuance
After PGR or
within 1 yr of
infringement
suit
Standard
No threshold
standard
SNQ
Reasonable
likelihood of
prevailing
Reasonable
likelihood of
prevailing
Estoppel
None
None
Raised or could
have raised*
Raised or
could have
raised
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Ex Parte vs Inter Partes
Year
Ex Parte
Inter Partes % Inter Partes
2006
511
70
12.0%
2007
643
126
16.4%
2008
680
168
19.8%
2009
658
258
28.2%
2010
780
281
26.5%
2011
759
374
33.0%
Impact of AIA on Patent litigation





Effects on Patent Marking and False Marking
Suits (§§287, 292)
Eliminates Best Mode Defense (§282)
Limits on Patent Infringement Defendants
(§299)
Limits Effect of Not obtaining Advice of
Counsel (§298)
Expands Prior Use Defense (§273)
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
AIA Ends Private Qui Tam
False Marking Suits

What: 35 U.S.C. §292 allowed any private party to file an action for
false patent marking and to recover a penalty of up to $500 per offense

Amendment eliminates right of private party to recover penalty for false
patent marking

Private parties can sue only if a “competitive injury” is proved and
can only obtain damages “adequate to compensate for the injury”

U.S. Government can still sue and seek up to $500 penalty

When: Applies immediately to “all cases, without exception, that are
pending on, or commenced on or after,” Sept. 16, 2011.

Implications: Virtually all pending false marking suits will be subject to
dismissal.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
67
Virtual Patent Marking

What: §287 requires marking to recover pre-lawsuit
damages unless infringer has notice; amendment allows for
virtual patent marking

Fix the word patent or “pat.” with an internet address free of
charge that associates the patented article with the number of
the patent

When: applies to “all cases, without exception, that are
pending on, or commenced on or after” Sept. 16, 2011.

Implications: Amendment makes it easier to provide marking
and to update marking by allowing one reference to a web
site that can be modified, edited to add/delete Patent #s.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Best Mode Defense Eliminated

What: Prior to AIA, failure to disclose best mode was a
validity defense in patent infringement action; could also
result in unenforceability for inequitable conduct

AIA amends § 282 to eliminate the “best mode” defense:



“Failure to disclose the best mode shall not be a basis on which
any claim of a patent may be canceled or held invalid or
otherwise unenforceable”
When: Effective immediately and applies to all
proceedings filed on or after Sept. 16, 2011.
Implications: “Best mode” is dead as a defense in patent
litigation except for suits filed before Sept. 16.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
AIA Limits Joinder of Defendants
in Patent Litigation
 What:
New 35 U.S.C. §299 limits joinder of accused
infringers (other than Hatch-Waxman)
 When: Applies to all new actions filed on or after Sept. 16,
2011
 Accused infringers can be joined in one action or
consolidated for trial only if:
(1) allegations “aris[e] out of the same transaction,
occurrence, or series of transactions or occurrences
relating to the making, using, importing into the
United States, offering for sale, or selling of the same
accused product or process,” and
(2) “questions of fact common to all defendants or
counterclaim defendants will arise in the action.”
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Joinder Narrower than FRCP 20(a)(2)

§299 narrower than Joinder Rule FRCP
20(a)(2) because the common legal question
of infringement is not sufficient for joinder.
“ALLEGATIONS INSUFFICIENT FOR JOINDER.
[A]ccused infringers may not be joined in one action
as defendants or counterclaim defendants, or have
their actions consolidated for trial, based solely on
allegations that they have each infringed the patent or
patents in suit.” (§ 299(b))
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Question 4
What impact has the new joinder law had on patent
infringement litigation thus far?






A. The number of defendants in each patent case has
significantly decreased. 341208
B. The number of patent cases filed has significantly
decreased. 341209
C. The number of patent cases filed has significantly
increased. 341210
D. Both A and C 341287
E. Both A and B 341288
F. No Significant Effect 341289
Impact of New Joinder


Answer A. Based on anecdotal evidence.
45 Days Before AIA, patent cases filed in Delaware, ED
TX, ND Cal, CD Cal, DNJ, NDILL




265 cases filed
2272 total parties
~8.6 parties per case
45 Days After AIA,



248 patent cases filed
848 total parties
~3.4 parties per case
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
73
Protections When Advice of Counsel
Not Sought

What: New 35 U.S.C. §298 added:
“The failure of an infringer to obtain the advice of
counsel with respect to any allegedly infringed patent, or
the failure of the infringer to present such advice to the
court or jury, may not be used to prove that the accused
infringer willfully infringed the patent or that the
infringer intended to induce infringement of the patent.”

When: Effective September 16, 2012
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
74
Protections When Advice of Counsel
Not Sought

Implications for Willful Infringement:

Codifies in part Federal Circuit’s en banc ruling in In re Seagate
Technology, 497 F.3d 1360 (Fed. Cir. 2007)

Will either have no impact or make it marginally harder to prove
willful infringement

Implications for intent to induce infringement: Changes law by
overruling Broadcom v. Qualcomm, 543 F.3d 683 (Fed. Cir. 2008)

§298 will likely become standard jury instruction in patent cases
where willful infringement or induced infringement is alleged.
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
75
Prior Use Defense
to Patent Infringement
What: AIA amends scope of prior defense
in 35 U.S.C. § 273.
 When: Applies to any patent issued on or
after Sept. 16, 2011



Before AIA, defense limited to business method
patents
AIA expands prior user rights defense to any
“process, or … a machine, manufacture, or
composition of matter used in a manufacturing or
other commercial process.”
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
Prior Use Defense (cont.)


Retains same proof standard as patent invalidity “clear
and convincing evidence.” (§ 273(b))
Defense requires establishing prior commercial use:



Commercially used subject matter either in connection with (1) an internal
commercial use or (2) an actual arm’s length sale or commercial transfer of
“a useful end result of such commercial use.”
Commercial use occurred at least 1 year before earlier of (1) the patent
application’s effective filing date or (2) the date the invention was disclosed
to the public.
Some activities defined as commercial use e.g., regulatory
review activities (35 USC §156(g)) or Nonprofit lab use
by nonprofit entity for noncommercial uses. (§ 273(b))
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
77
Prior Use Defense (cont.)

Lots of Limits on Prior Use Defense (§273(e))






Defense is personal to the person who performed or directed
the commercial use.
Defense cannot be transferred except to patent owner or as
part of transfer of entire enterprise or business line
After transfer, defense is limited to site of activity before later
of effective filing date or transfer date
Defense not available where prior commercial use was derived
from the patentee or persons in privity with the patentee.
Abandonment of the use eliminates the defense.
Assertion of defense does not invalidate patent (§
273(g))
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
78
Prior Use Defense (cont.)

Before AIA, § 273(e) not widely used:
Only business method patents
 Same clear and convincing standard as invalidity
under 35 U.S.C. §102(f), (g).


Amended § 273(e) likely to be more widely
used:
Not limited to “business method patents” can broadly
apply to any “commercial use”
 Invalidity based on 35 U.S.C. §102(f), (g) no longer
available after March 16, 2013.

Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011
79
Questions?

Jeffrey D. Mills and Dean
Munyon - AIA Presentation -Austin IPLA -- November 15,
2011
Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011