Strategic Considerations of Post Issuance Patentability Review

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STRATEGIC CONSIDERATIONS OF POST
ISSUANCE PATENTABILITY REVIEW:
THE NEW, OLD, AND NO LONGER
Presented By:
Todd R. Walters, Esq.
BUCHANAN, INGERSOLL & ROONEY PC
1737 King Street, Suite 500
Alexandria, VA 22314
[email protected]
September 25, 2012
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The New




Post-grant review (“PGR”)
Inter partes review (“IPR”)
Derivation proceedings
Supplemental examination
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The Old



Reissue
Ex parte Reexamination
Interferences/Derivation proceedings (claims having an
effective filing date prior to March 16, 2013)
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The No Longer

Inter Partes Reexamination
(eliminated September 16, 2012)

Interferences (claims having an effective filing date on or
after March 16, 2013)
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Know the Law
 Understanding Options for Post Grant Review Starts with
Knowing the Law
□ Some options apply only to cases filed on or after
March 16, 2013
□ Other Options apply to all cases
□ Old Law/New Law—What standard applies?
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New Prior Art Provisions
Apply to Applications and Patents
 Applies to any application for patent, and to any patent issuing
thereon
□ That contains or that contained at any time a claim to
invention that has an effective date on or after March 16,
2013
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New Prior Art Provisions
Apply to Applications and Patents
Claiming Priority
 A specific reference under 120, 121 or 365(c) of Title 35 to
any patent or application
□ That contains or that contained at any time a claim to an
invention that has an effective date on or after March 16,
2013
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Filing Strategies
 Informal survey suggests filing new applications prior to
March 16, 2013
 Most common reasons
□ AIA expands available prior art to include foreign
applications as of filing date in foreign country
□ AIA expands on sale bar to activities in foreign countries
□ AIA removes swear behind options
□ AIA subjects claims to PGR (IPR available for all claims)
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POST-GRANT REVIEW
(PGR)
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Post-Grant Review (PGR) Procedure
Petition
Filed
PO Preliminary
Response
3 months
Decision
on Petition
No more than
3 months
Petitioner Reply
PO Reply
PO Resp. & to PO Response
to
Opposition
& Opposition to
Motion to
Amend Claims Amendment to Amendment
3 months
PO
Discovery
Period
3 months
1 month
Petitioner
Discovery
Period
PO
Discovery
Period
Oral
Hearing
Final Written
Decision*
Hearing set
Observations
& Motions to
Exclude Evidence
No more than 12 months
*six month extension
9
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Post-Grant Review (PGR)
THRESHOLD
 More likely than not that at least one challenged claim
is unpatentable
PTO BRANCH
 Patent Trial and Appeal Board (PTAB)
IDENTIFICATION OF REAL PARTY IN INTEREST
 All Real Parties in Interest must be identified
ESTOPPEL
 After final PTAB decision, the Real Party in Interest (RPI) is
estopped from challenging its patent in the USPTO, ITC,
or District Court on ANY ground that the RPI raised or could
have reasonably raised during PGR
10
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Post-Grant Review (PGR)
WHO CAN INITIATE?
 Third Party
QUALIFICATION*
 Any patent having a claim with an effective filing
date on or after March 16, 2013
TIMING
 Within 9 months after issuance of patent or reissue
GROUNDS FOR FILING
 Any ground except failure to comply with best mode
requirement
*Business Method Patents
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Post-Grant Review (PGR)
PTO FILING FEES
 $35,800 Petition Fee (for up to 20 claims)
 $800 for each claim in excess of 20
APPEALS COURT
 Federal Circuit
SETTLEMENT
 Yes
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Post-Grant Review (PGR)
PGR Petition can only be filed within 9 months
of issue date of patent or reissue.
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Interim Procedures for Business Method Patents
WHO CAN INITIATE?
 Third Party sued or charged with infringement
QUALIFICATION
 Only “a covered business method patent”
TIMING
 Only between September 16, 2012 and September 16, 2020
GROUNDS FOR FILING
 §§ 102/103 based on patents and publications
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INTER PARTES REVIEW
(IPR)
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Inter Partes Review (IPR) Procedure
Petition
Filed
PO Preliminary
Response
3 months
Decision
on Petition
No more than
3 months
Petitioner Reply
PO Reply
PO Resp. & to PO Response
to
Opposition
& Opposition to
Motion to
Amend Claims Amendment to Amendment
3 months
PO
Discovery
Period
3 months
1 month
Petitioner
Discovery
Period
PO
Discovery
Period
Oral
Hearing
Final Written
Decision*
Hearing set
Observations
& Motions to
Exclude Evidence
No more than 12 months
*six month extension
16
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Inter Partes Review (IPR)
WHO CAN INITIATE?
 Third Party
QUALIFICATION
 Any patent
TIMING
 The later of 9 months after issuance of patent or reissue OR
 After termination of Post-Grant Review
GROUNDS FOR FILING
 §§ 102/103 based on patents and publications
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Inter Partes Review (IPR)
THRESHOLD
 A reasonable likelihood that the petitioner would prevail
with respect to at least one challenged claim
IDENTIFICATION OF REAL PARTY IN INTEREST
 All Real Parties in Interest must be identified
ESTOPPEL
 After final PTAB decision, the Real Party in Interest (RPI) is
estopped from challenging its patent in the USPTO, ITC,
or District Court on ANY ground that the RPI raised or could
have reasonably raised during IPR
18
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Inter Partes Review (IPR)
PTO FILING FEES
 $27,200 Petition Fee (for up to 20 claims)
 $600 for each claim in excess of 20
APPEALS COURT
 Federal Circuit
SETTLEMENT
 Yes
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Inter Partes Review (IPR)
IPR Petition can only be filed 9 months after issue date of patent
or reissue OR termination of PGR, whichever is later.
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Inter Partes Review (IPR)
IPR Petition must be filed within 1 year of service of
Complaint alleging infringement.
IPR Petition may not be filed if a civil action challenging the validity of a claim is filed.
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Compare With Litigation
 Burden of Proof
□ Preponderance of Evidence vs. Clear and Convincing Evidence
 Claim Construction
□ Broadest Reasonable Construction vs. Construction That Upholds
Validity (file history estoppel)
 Decision Maker
□ Technically Trained and Familiar With Patent Law vs. Judge/Jury
 Timing
□ One Year (with short extension) vs. Multiple Years
 Cost
□ Tens of Thousands Up to Several Million vs. Several Million and Up
 Discovery
□ Limited vs. Broad
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Compare With Reexamination
 Burden of Proof
□ Preponderance of Evidence
 Claim Construction
□ Broadest Reasonable Construction
 Decision Maker
□ Panel of Three APJs vs. Examiner
 Timing
□ One Year (with short extension) vs. Multiple Years
 Cost
□ Tens of Thousands Up to Several Million vs. Tens of Thousands
 Participation
□ Full vs. Limited
23
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PGR/IPR Relationship to Civil Action
 PRG/IPR barred by previously filed civil action
□ PRG/IPR Petitions barred if petitioner has already filed a
civil action challenging validity of a claim of the patent
□ IPR Petition barred if filed more than one year after being
served with complaint
 Counterclaims
□ Do not constitute a civil action challenging the validity of a
claim
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PGR/IPR Relationship to Civil Action
 Civil action stayed by PRG/IPR
□ Civil action filed after PRG/IPR Petition is automatically
stayed until:
A. Patent owner moves court to lift stay;
B. Patent owner files a civil action or counterclaim
alleging petitioner has infringed the patent; or
C. Petitioner moves the court to dismiss the action.
25
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Preliminary Injunctions
 If a civil action alleging infringement of a patent is filed within
3 months after the date on which the patent is granted, the
court may not stay its consideration of the patent owner’s
motion for a preliminary injunction on the basis of PRG.
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SUPPLEMENTAL
EXAMINATION
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Supplemental Examination
WHO CAN INITIATE?
 Patent Owner
QUALIFICATION
 Any patent OR
 Any information believed to be relevant to the patent
(Declarations, public sale before critical date,
submission of litigation papers, incorrect entity
status claimed)
TIMING
 Before patent expires
GROUNDS FOR FILING
 Any information relevant to patentability
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Supplemental Examination
THRESHOLD
 Substantial new question of patentability
ESTOPPEL
 Patent is prevented from being held unenforceable in a
court proceeding on the basis of conduct relating to
information that had not been considered or was
incorrect, if submitted or corrected during Supplemental
Examination
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Supplemental Examination
PTO FILING FEE
 $5,140
EFFECT OF CONCURRENT PROCEEDING
 Patent is not unenforceable on basis of information
that was considered, reconsidered or corrected
during Supplemental Examination
APPEALS COURT
 Patent Trial and Appeal Board (PTAB)
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Summary
Proceeding
Reissue
Inter Partes
Reexam
Ex Parte
Reexam
Inter Partes
Review
Applicability
Effective
Date
Timing
Threshold
Estoppel
Possibility of
Settlement
Patent owners
to correct
errors in their
patents
Any third party
to challenge
patentability
based on
patents and
publications
Historic
Before patent
expiration date
N/A
N/A
N/A
11/29/199909/15/2012
Before patent
expires or 6
months after
expiration
Any ground raised
or could have
been raised
during
reexamination
N/A
Any person to
challenge
patentability
based on
patents and
publications
Third party to
challenge
patentability
based on
patents and
publications
Historic
Before patent
expires or 6
months after
expiration
SNQ before
09/16/2011 or
after IF reasonable
likelihood that
petitioner would
prevail on at least
1 claim
SNQ
None
No
09/16/2012
9 months after
issuance of
patent or
reissue OR
after
termination of
PGR
Reasonable
likelihood that
petitioner would
prevail with
respect to at least
1 claim
Any ground raised
or could have
been reasonably
raised during IPR
Yes
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Summary
Proceeding
Post-Grant
Review
Supplemental
Examination
PGR for
business
method patents
Applicability
Third party to
challenge
patentability on
any ground
except failure to
comply with best
mode
requirement
Patent owner to
submit
information
relevant to
patentability
Third party to
challenge
patentability on
patents and
publications
(requires petitioner to
be sued for or
charged with
infringement of
covered business
method patent)
Effective
Date
Timing
Threshold
Estoppel
Possibility of
Settlement
09/16/2012
Within 9
months after
issuance of
patent or
reissue
More likely
than not that at
least 1
challenged
claim is
unpatentable
Any ground
raised or could
have been
reasonably raised
during PGR
Yes
09/16/2012
Before patent
expires
SNQ
None
N/A
09/16/201209/16/2020
Before patent
expiration
More likely
than not that at
least 1
challenged
claim is
unpatentable
Any ground
raised or could
have been
reasonably raised
during PGR
Yes
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Summary
Proceeding
Derivation
Applicability
Inventor to
challenge
patentability of
an earlier
application by
showing that the
invention was
derived from the
inventor of the
later application
Effective
Date
Timing
03/16/2012 Within 1 year
of publication
of a claim to
the derived
invention
Threshold
Estoppel
Possibility of
Settlement
Claim same or
substantially same
invention within 1
year of first
publication of
claim
N/A
Yes
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Questions?
34
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