Sense and Sensibility: The Pros and Cons of New Alternatives To Patent Litigation
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Sense and Sensibility: The Pros and Cons of New Alternatives To Patent Litigation

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The 2011 America Invents Act provides U.S. patent owners and potential patent challengers with new options for review of issued patents. Challengers now have four administrative routes for ...

The 2011 America Invents Act provides U.S. patent owners and potential patent challengers with new options for review of issued patents. Challengers now have four administrative routes for invalidating issued patents and patent owners have four avenues for correcting an issued patent or preemptively addressing prior art before enforcement. Armstrong Teasdale Intellectual Property and Litigation Partner Jennifer Hoekel outlines post-issuance proceedings and the pros and cons of each in this presentation.

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Sense and Sensibility: The Pros and Cons of New Alternatives To Patent Litigation Sense and Sensibility: The Pros and Cons of New Alternatives To Patent Litigation Presentation Transcript

  • © 2013 Armstrong Teasdale LLP 1
  • © 2013 Armstrong Teasdale LLP © 2013 Armstrong Teasdale LLP Jennifer Hoekel September 25, 2013 Alternatives to Patent Litigation
  • © 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 3
  • © 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). 4
  • © 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. 5
  • © 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
  • © 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. 7
  • © 2013 Armstrong Teasdale 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. 8
  • © 2013 Armstrong Teasdale 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
  • © 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. 10
  • © 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. 11
  • © 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. 12
  • © 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 13
  • © 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 14
  • © 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 15
  • © 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 16
  • © 2013 Armstrong Teasdale LLP Post Issuance PTO Proceedings Available to Patent Holders  Ex Parte Reexamination  Supplemental Examination  Reissue  Certificate of Correction 17
  • © 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). 18
  • © 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. 19
  • © 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
  • © 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. 21
  • © 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. 22
  • © 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. 23
  • © 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 24
  • © 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 25
  • © 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 26
  • © 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) 27
  • © 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. 28
  • © 2013 Armstrong Teasdale LLP Contact Jennifer Hoekel 314.621.5070 jhoekel@armstrongteasdale.com CLE and HRCI Confirmation Code: JH0912 29