Post-Grant Review Proceedings

Post-Grant Review Proceedings
at the USPTO
under the America Invents Act

Kevin Laurence
Stoel Rives LLP
1

Presentation by Kevin Laurence
September 27, 2011, Webinar by Strafford Publications
for Strafford Publications, September 28, 2011

Outline of Discussion on Post-
Post-
Grant Review Proceedings
• Possible popularity of post-grant review (PGR)
and inter partes review (IPR) proceedings
• Some “nuts and bolts” of PGR
• Interim (business method) proceedings
• Comparison of PGR proceedings with its model,
EPO oppositions
• Strategy considerations for contested
proceedings including reexam, PGR and IPR 2


Popularity – 3rd Time Is the Charm
EPX in ’80; EPX, IPX in ’99; EPX, IPR and PGR in ‘11

5%
opposed/year

?%
reviewed/year

0.5%
reexamined/year 3


Cooperation between Litigators
and Reexam/Review Counsel

vs.

Reexam/Review Litigators
Counsel

4


Status Quo Validity Battlefields

Prior Art
Other Basis
(§§ 102, 103, or
x2 Patenting)
(§ 101,112)

Printed Not Printed
Publication Publication

Application Application
Filed Before Filed On or
11/29/99 After 11/29/99

Ex Parte Inter Partes
Litigation
Reexam Reexam
5


Grounds for Post-Grant Review
Post-
(PGR) Proceedings
PGR inter partes review
• Patentability challenge = same & ex parte reexam
as in litigation
• validity challenges
– Subject matter, utility - § 101
under § 102, § 103
– Novelty - § 102 based on printed
– Nonobviousness - § 103 prior art publications
– Definiteness, enablement, written and based on
description - § 112 double patenting
– Double patenting
– Not best mode
6


Grounds for Post-Grant Review
Post-
(PGR) Proceedings - continued
• Petition may also be based on a novel
or unsettled legal question that is
important to other patents/ applications
– Not available for IPR
– Mainly redundant with grounds based
on those permitted in litigation but also
provides a basis for other grounds such
as prosecution laches. 7


Comparison of Threshold Criteria
Proceeding Criteria to Initiate Commissioner Stoll
Ex Parte Substantial new question
Reexam of patentability (SNQP)

More likely than not that at least one Considers this to
Post-Grant
challenged claim is unpatentable. require at least 51%
Review
chance of success.

Considers this to
A reasonable likelihood that the petitioner
Inter Partes require only 50%
would prevail with respect to at least one
Review chance of success.
challenged claim.
(Correct?)
8


Exception to Thresholds for
EPX, PGR and IPR - § 325(d)
• A request for EPX or a petition for
PGR or IPR may be rejected if “the
same or substantially the same prior
art or arguments have been
previously presented to the Office.”

9


Availability and Effective Date
of Review Proceedings
post-grant review transitional proceeding inter partes
proceeding for business methods review
proceeding
Not later than 9 On 2012-09-16, IPR will On 2012-09-16,
months after be available for a party IPR will begin to be
issuance of patent or sued for infringement. available if more
broadening reissue However, see next slide than 9 months
but see data regarding implications after issuance.
regarding practical for a patent that is
effective date on available for regular
next slide. PGR. 10


Effective Date for Post-Grant
Post-
Review (PGR) Proceedings
PGR transitional proceeding for
business methods
Under AIA § 6(f)(2)(A), the effective date is 2012-09-16 for a patent
2012-09-16 but AIA § 3(n)(1) limits issued before, on, or after
consideration to patents with a priority date 2012-09-16. However, it is
on or after 2013-03-16. So with average unavailable for 9 month
pendency, a PGR proceeding will not be period when a patent is
implemented until 2014-5? available for regular PGR.

• PTAB will have years to benefit from simpler issues of
IPR and small number of transitional proceedings before
seeing PGR proceedings.
11


Avoid Paralysis from Too Many Options for Weed
Killers at the Supermarket of Post-Grant Tools
Post-

12


Battlefields after PGR and IPR available
Prior Art Other Basis
(§§102, 103, or (§§101,112 –
x2 Patenting) (best mode))

Printed Not Printed
Publication Publication

Inside Outside Outside Inside
Initial 9-Mo. Initial 9-Mo, Initial 9-Mo, Initial 9-Mo.
Window Window Window Window

Ex Parte Inter Partes Post-Grant
Litigation 13
Reexam Review (IPR) Review (PGR)


Post-Grant Review Estoppel
Post-
Another PTO Patentability
Arguments Raised
Review Proceeding
or Reasonably Could
Petition Have Raised in PGR

Final Written Decision: 14
Challenge Failed


Post-Grant Review Estoppel (cont.)
Post-
Court or ITC Patentability
Review Litigation Arguments Raised
Petition or Reasonably
Could Have Raised
in PGR

Final Written Decision: 15
Challenge Failed


Estoppel

• Estoppel = “raised or reasonably could
have raised” same as IPR but since
PGR has broader basis the estoppel
implications are greater for PGR.
• What happens if Federal Circuit
reverses PTAB?
16


Estoppel - continued
• Like IPR, issues raised in litigation or that could
have been raised in litigation can still be relied on
for PGR, IPR or ex parte reexam; however, as a
practical matter, losing in litigation will almost
always mean that the nine-month window for PGR
will have passed, the one year bar (docket a
reminder) will also have passed that prevents
initiation of IPR after being sued for infringement,
and ex parte reexamination will be the only
available option for a challenge at the PTO. 17


DJ Actions, Infringement, Automatic
Stays and Preliminary Injunction
• Like IPR, file DJ action on or after petitioning
for review, then DJ action will be automatically
stayed until owner moves to lift stay or
counterclaims with infringement claim or
petitioner moves for dismissal.
• PGR cannot be used to stay consideration of
patent owner’s motion for preliminary injunction
when infringement action filed within 3 months
of issuance. 18


Regulations for PRG Procedure by 2012-09-16
2012-09-
Petition

Preliminary Limited
Response Discovery
Motion to Amend
Petitioner
Review
3 mo. Participation?
?
Oral Hearing Written
YES Settlement
Agreement
Notice of Review
12 mo. Final Written
Decision
(+ 6 mo.)
Response
Appeal Appeal

19
Certificate


Regulations in PGR

• May be modeled after the motion practice in
interferences as described at 37 CFR §§ 41.100-158,
referred to as Part 41, Subpart D - Contested Cases.
• Discovery limited to evidence directly related to factual
assertions advanced by either party
• Patent owner may file one motion (joint request also):
– Cancel or amend (without broadening) any challenged claim
– Propose a reasonable number of substitute claims
• Final determination in one year; extendible by not more
than 6 months for good cause 20


Merger (Consolidation) or Suspension
Factors PGR IPR EPX Analysis
Threshold More likely than Reasonable SNQP Not a
not that a claim is likelihood of prevail- barrier after
unpatentable ing regarding a claim instituted
Basis All litigation bases printed prior art publications
Amendment Likely more limited than reexam resp. to Factors
rejection support
Discovery Limited compared to litigation None suspension
of reexam
Speed 12-18 months 2 years until review
Organization PTAB CRU complete
Settlement May Stop Proceeding No impact

• Reexam requested prior to PGR or IPR is not estopped but
should be suspended based on above analysis. 21


Transitional Proceeding for
Challenging Business Methods
• “Business method patent” means “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, except that
the term does not include patents for
technological inventions.” 22


under § 102 or § 103
• Challenging a patent in effect before 2013-
03-16 may be supported by:
– the old version of § 102(a); or
– a version of prior art that falls within § 102(a) as
limited to the U.S. and an odd version of § 102(b)
that refers to a “disclosure.” This version permits
raising actual reductions that are known or used by
others in US and public use or sale of the claimed
invention in the US under the current patent law.
23


Transitional Proceedings for
• Estopppel limited to just grounds that were
raised.
• Typical stay factors enumerated but may
encourage courts to stay litigation,
particularly since:
– Interlocutory appeal permitted
• Will sunset 8 years after effective date.
24


EPO Oppositions & Post-Grant
Post-
Review: Similarities
Opposition Post-Grant Review Proceedings
Any basis of challenge available Any basis of challenge available (except
(except lack of clarity and unity) best mode)
9-month window to initiate
Limited rights to make claim amendments (no broadening)
oral hearings
intervention after 9-month window, joinder permitted
even during appeal
parallel national court proceedings parallel litigation regarding infringement and
regarding infringement patentability (when counterclaimed)
Proceeding may continue despite settlement
25


Post-
Review: Differences
Straw men permitted No strawmen - real-party-in-interest
must be identified
2-4 years 12 -18 months
Opposition Division (3 examiners PTAB (3 administrative patent judges
including one who granted patent) (APJs))
Appeals are made to the Boards of Appeals are made to the Federal
Appeal; no estoppel so patent can still Circuit
be revoked by national court
cost = €6000-€50,000 ($8,000- cost = more than $40,000-170,000 for
$70,000) inter partes reexam before appeal

26


Post-
Review: Differences continued.
No threshold (just state grounds, facts, Information demonstrates that it is
etc) more likely than not that at least 1
claim is unpatentable
No prosecution history estoppel Prosecution history estoppel
No legal estoppel Estopped, with respect to a challenged
claim, from raising any ground in
court, inter partes review or ex parte
reexamination that the petitioner
raised or could have raised
Claim interpretation at EPO does not Need for consistent characterizations
control infringement litigation at PTO and parallel litigation
27


Kill, Wound, and Miss – What Will be
the Results of PGR and IPR?
U.S. EPX U.S. IPX EPO Opp’n

Kill Miss
Miss
Miss
Kill Kill

Wound
Wound Wound

Kill = All claims cancelled
Wound = Claims amended
Miss = All claims confirmed 28


Speculation on Technologies in Post-
Post-
Grant Review and Inter Partes Review
• Cases involving information technology
predominate in reexamination and can be
expected to predominate in inter partes review
proceedings.
• Chemicals, life sciences, and mechanical
inventions will be represented in post-grant
review proceedings with larger percentages than
in inter partes review but perhaps not as
significantly as in EPO oppositions. 29


PGR Will Likely Be Less
Popular than IPR
• Short window relative to IPR
• Small number of conflicts that are sufficiently mature
upon issuance to merit action
– Especially useful for attacking a continuing patent
when litigating parent.
• Broader basis = broader estoppel than IPR
• Systems need to be developed for identifying patents
to be challenged
– Like EPO system at
30
http://www.epo.org/searching/free/register-alert.html

Distinctions that Influence
Outcome
Factors Post-Grant Inter Partes Ex Parte Litigation
Review Review Reexam
Burden of Proof Clear and
Preponderance of Evidence Convincing Evidence
Presumption of No Yes
Validity
Claim scope Broadest reasonable interpretation (Suitco) Narrow
construction
(Phillips)
Complexity and Any basis other than Many references but -Fewer references
nature of attack best mode limited to printed -Any basis but best
publications mode
Decision maker PTAB CRU average juror
31


Factors Favoring Reexamination
• Consider ex parte reexamination when:
– the prior art attack is simple, particularly an
attack under § 102, such that interaction with the
PTO seems unnecessary, and
– the specification lacks “fall-back” positions that
permits amendments resulting in infringement.
• Anonymity is desired.
• No estoppel.
32


A Few Factors for Use of Review
Proceedings
• Complex attack under § 103 will be preferable
at the PTAB relative to district court so that
large number of combinations is possible
• Ability to counter patent owner will encourage
use of review proceedings relative to ex parte
reexamination as began to occur with inter
partes reexamination.
• Estoppel implications improved.
33


Plenty of Time to Get Ready for PGR, But Start Your
Engines for IPR to Avoid Getting Left Behind in
“Radiator Springs” When the New Route Opens

34


Further discussion is welcome at the
following LinkedIn group:

Patent Reexamination & Review Practice
http://www.linkedin.com/groups?gid=2785699&sh
aredKey=01BEF1317D1B&trk=anetsrch_name&g
oback=%2Eanh_2458260_1317025003317_1

35


Thank you!
Kevin B. Laurence ● Stoel Rives LLP
kblaurence@stoel.com
801-578-
801-578-6932

36

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