More Related Content Similar to Sense and Sensibility: The Pros and Cons of New Alternatives To Patent Litigation (20) More from Armstrong Teasdale (20) Sense and Sensibility: The Pros and Cons of New Alternatives To Patent Litigation2. © 2013 Armstrong Teasdale
LLP
© 2013 Armstrong Teasdale
LLP
Jennifer Hoekel
September 25, 2013
Alternatives to Patent
Litigation
3. © 2013 Armstrong Teasdale
LLP
Post-Issuance PTO Proceedings
Available to Challengers
Ex Parte Reexamination
Inter Partes Review (IPR)
Post-Grant Review (PGR)
Covered Business Method (CBM) Patents
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4. © 2013 Armstrong Teasdale
LLP
Which PTO Decision Making Body?
Ex Parte Examination:
• Central reexamination unit (CRU).
Inter Partes Review, Post Grant Review, Covered
Business Method Patents:
• Patent Trial and Appeals Board (PTAB).
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5. © 2013 Armstrong Teasdale
LLP
When is a Challenge Allowed?
Ex Parte Reexamination
• Any time during the enforceable life of a patent.
Inter Partes Review
• Nine months after the patent issues or after PGR final
decision or
• Within one year of filing infringement action.
Post-Grant Review
• Within nine months after a patent issues.
Covered Business Method Patents
• Within nine months after a patent issues, for first to file.
• Anytime for others but limited prior art
• Not available after August 14, 2020.
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6. © 2013 Armstrong Teasdale
LLP
Which Types of Patents Can be
Challenged?
Ex Parte Reexamination
• All patents.
Inter Partes Review
• All patents.
Post-Grant Review:
• With some exceptions, requires at least one claim
have an effective date after March 15, 2013.
Covered Business Method Patents
• Method/apparatus for operations concerning financial
products/services, without any technological
inventions.6
7. © 2013 Armstrong Teasdale
LLP
Grounds for Invalidity or Challenge
Ex Parte Reexamination
• Sections 102 and 103, based on patents and printed
publications only.
Inter Partes Review
• Sections 102 and 103, based on patents and printed
publications only.
Post Grant Review
• Sections 101, 102, 103 and 112. Challenge under 102 and
103 may be based on prior public knowledge including
prior use or sale.
Covered Business Method Patents
• Sections 101, 102, 103 and 112. Challenge under 102 and
103 may be based on prior public knowledge including
prior use or sale.
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LLP
Patent Challenges & Discovery
Ex Parte Reexamination
• No discovery.
Inter Partes Review
• Discovery allowed.
Post-Grant Review
• Discovery allowed.
Covered Business Method Patents
• Discovery allowed.
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LLP
Standards to Initiate
Ex Parte Reexamination
• Substantial new question of patentability.
Inter Partes Review
• Reasonable likelihood that at least one claim is
invalid.
Post-Grant Review
• More likely than not that at least one claim is invalid.
Covered Business Method Patents
• More likely than not that at least one claim is invalid.
Showing Invalidity in All Cases = Preponderance of
the Evidence9
10. © 2013 Armstrong Teasdale
LLP
Allowability of Amendments
Ex Parte Reexamination
• Yes, but cannot broaden the scope of the patent.
Inter Partes Review
• Yes.
Post-Grant Review
• Yes.
Covered Business Method Patents
• Yes.
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11. © 2013 Armstrong Teasdale
LLP
Estoppel & Challenger Anonymity
Ex Parte Reexamination
• Estoppel = NO.
• Challenger Anonymity = YES.
Inter Partes Review
• Estoppel = YES, statutory allowance.
• Challenger Anonymity = NO.
Post-Grant Review
• Estoppel = YES, statutory allowance.
• Challenger Anonymity = NO.
Covered Business Method Patents
• Estoppel = YES, with some limits.
• Challenger Anonymity = NO.
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12. © 2013 Armstrong Teasdale
LLP
Availability of Appeal
Ex Parte Reexamination
• NO - Patentee only.
Inter Partes Review
• YES - Direct appeal to Fed Cir.
Post-Grant Review
• YES - Direct appeal to Fed Cir.
Covered Business Method Patents
• YES - Direct Appeal to Fed Cir.
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13. © 2013 Armstrong Teasdale
LLP
Challenger’s Advantages
and Disadvantages to Reexam
Advantages
• Cheaper
• Anonymity
• No estoppel
• Possible litigation stay
Disadvantages
• Slower
• No participation other
than by patentee
• No discovery
• Claim amendments
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14. © 2013 Armstrong Teasdale
LLP
Challenger’s Advantages
and Disadvantages to IPR
Advantages
• Lower burden
• Fast
• Litigation stay likely
• Discovery/Adversarial
• Amendments can give
intervening rights
• Preserve some
defenses
Disadvantages
• Expensive
• One chance
• No anonymity
• Amendments could
strengthen patent
• Stronger patent
possible
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15. © 2013 Armstrong Teasdale
LLP
Challenger’s Advantages
and Disadvantages to PGR
Advantages
• Lower burden
• All statutory bases
available
• Fast
• Litigation stay likely
• Discovery/Adversarial
Disadvantages
• Broad estoppel
• Expensive
• One chance
• No anonymity
• Amendments could
strengthen patent
• Stronger patent
possible
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16. © 2013 Armstrong Teasdale
LLP
Challenger’s Advantages
and Disadvantages to CBM
Advantages
• Lower burden
• All statutory bases
available
• Fast
• Litigation stay likely
• Discovery/Adversarial
Disadvantages
• Estoppel (narrower
than IPR and PGR)
• Expensive
• One chance
• No anonymity
• Amendments could
strengthen patent
• Stronger patent
possible
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17. © 2013 Armstrong Teasdale
LLP
Post Issuance PTO Proceedings
Available to Patent Holders
Ex Parte Reexamination
Supplemental Examination
Reissue
Certificate of Correction
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18. © 2013 Armstrong Teasdale
LLP
Which PTO Decision Making Body?
Ex Parte Reexamination
• Central reexamination unit (CRU).
Supplemental Examination
• Central reexamination unit (CRU).
Reissue
• Examiner.
Certificate of Correction
• Supervisory examiner (except that Certificate of
Corrections Branch may handle errors that are clearly
minor, clerical or topographical).
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19. © 2013 Armstrong Teasdale
LLP
When is a Challenge Allowed?
Ex Parte Reexamination
• Any time during the enforceable life of a patent.
Supplemental Examination
• Any time during the enforceable life of any patent that
was enforceable on or after September 16, 2012.
Reissue
• Any time during the enforceable life of a patent.
Certificate of Correction
• Any time during the enforceable life of a patent.
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20. © 2013 Armstrong Teasdale
LLP
Grounds for Invalidity or Challenge
Ex Parte Reexamination
• Sections 102 and 103, based on patents and printed publications
only.
Supplemental Examination
• Sections 101, 102, 103 and 112. Any type of written information
“believed to be relevant to the patent.”
Reissue
• Sections 101, 102, 103 and 112. Patents, printed publications,
defects related to subject matter eligibility, utility, written
description, enablement and clarity.
Certificate of Correction
• Clerical or typographical mistakes or mistakes of “minor
character” by the applicant.
• Any mistake by PTO “clearly disclosed” in PTO records.
• Mistakes concerning inventorship.20
21. © 2013 Armstrong Teasdale
LLP
Standards to Initiate
Ex Parte Reexamination
• Substantial new question of patentability.
Supplemental Examination
• Substantial new question of patentability.
Reissue
• Admission of defect in patent by patent owner.
Certificate of Correction
• Discretionary. Proof of facts required to correct
inventorship.
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22. © 2013 Armstrong Teasdale
LLP
Allowability of Amendments
Ex Parte Reexamination
• YES – claims can be narrowed but not broadened.
Supplemental Examination
• No amendments during supplemental examination itself. If
ex parte reexamination is ordered, amendments allowed
but cannot broaden.
Reissue
• YES – claims can be narrowed anytime, or broadened if at
least one change that broadens claims is applied for within
2 years of grant of original patent.
Certificate of Correction
• YES – but cannot add new matter or make changes that
require reexamination.
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23. © 2013 Armstrong Teasdale
LLP
Availability of Appeal
Ex Parte Reexamination
• YES – examiner’s final rejection of any claims may be
appealed to PTAB;
• Adverse decisions of PTAB are appealed to the Fed Cir.
Supplemental Examination
• Denial is final and not appealable, but may petition Director
under 37 CFR 1.181.
Reissue
• Appeal to PTAB.
• Adverse decisions of PTAB are appealed to Fed Cir.
Certificate of Correction
• Petition to Technology Center Director under 37 CFR
1.181.
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24. © 2013 Armstrong Teasdale
LLP
Patentee’s Advantages
and Disadvantages to Reexam
Advantages
• Cheaper
• Preemptive
• Examiner Interviews
• No third party
involvement
Disadvantages
• Slower
• Narrowing or rejecting
of claims
• Once started, it cannot
be stopped unilaterally
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25. © 2013 Armstrong Teasdale
LLP
Patentee’s Advantages and
Disadvantages
to Supplemental Examination
Advantages
• Broad range of prior
art available
• Inoculate against fraud
allegations
• Art becomes of record
Disadvantages
• Narrowing or rejecting
of claims possible
• Slightly more
expensive upfront
• No statements allowed
other than explanation
of relevance
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26. © 2013 Armstrong Teasdale
LLP
Patentee’s Advantages
and Disadvantages to Reissue
Advantages
• Cheaper
• Broaden claims within
2 yrs of issue
• Narrow anytime
Disadvantages
• Admit defect
• Slow
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27. © 2013 Armstrong Teasdale
LLP
Advantages and Disadvantages to
Certificate of Correction
Advantages
• Cheap or free
• Do not need to allege
that there was no
deceptive intent
• Fast
Disadvantages
• Must be clerical or a
mistake of “minor
character”
• Must be a mistake
made in good faith
• Only for later-arising
suits (will not help in a
current lawsuit)
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28. © 2013 Armstrong Teasdale
LLP
Best Practices
Follow the Rules:
• Non compliant submissions are often sent back.
• PTAB will follow rules closely to keep reviews within one
year as required.
Choose Your Battles Wisely:
• Narrow your arguments to increase chances of success.
Make Petitions Thorough Up Front:
• It is difficult to supplement later in the process.
Make Claim Construction Work for You:
• Good idea to make your case on claim construction from
outset.
Put Together a Winning Team:
• Include a mix of litigators and prosecutors to achieve
success.
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29. © 2013 Armstrong Teasdale
LLP
Contact
Jennifer Hoekel
314.621.5070
jhoekel@armstrongteasdale.com
CLE and HRCI Confirmation Code: JH0912
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