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Post-Grant Review Proceedings
Post-Grant Review Proceedings
Post-Grant Review Proceedings
Post-Grant Review Proceedings
Post-Grant Review Proceedings
Post-Grant Review Proceedings
Post-Grant Review Proceedings
Post-Grant Review Proceedings
Post-Grant Review Proceedings
Post-Grant Review Proceedings
Post-Grant Review Proceedings
Post-Grant Review Proceedings
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Post-Grant Review Proceedings
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Post-Grant Review Proceedings
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Post-Grant Review Proceedings

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Slides from webinar on September 27, 2011 for Strafford Publications

Slides from webinar on September 27, 2011 for Strafford Publications

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  • 1. Post-Grant Review Proceedings at the USPTO under the America Invents Act Kevin Laurence Stoel Rives LLP 1Presentation by Kevin Laurence September 27, 2011, Webinar by Strafford Publicationsfor Strafford Publications, September 28, 2011
  • 2. 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 2Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 3. Popularity – 3rd Time Is the CharmEPX in ’80; EPX, IPX in ’99; EPX, IPR and PGR in ‘11 5% opposed/year ?% reviewed/year 0.5% reexamined/year 3Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 4. Cooperation between Litigatorsand Reexam/Review Counsel vs. Reexam/Review Litigators Counsel 4Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 5. 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 5Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 6. 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 6Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 7. 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. 7Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 8. Comparison of Threshold CriteriaProceeding Criteria to Initiate Commissioner StollEx Parte Substantial new questionReexam of patentability (SNQP) More likely than not that at least one Considers this toPost-Grant challenged claim is unpatentable. require at least 51%Review chance of success. Considers this to A reasonable likelihood that the petitionerInter Partes require only 50% would prevail with respect to at least oneReview chance of success. challenged claim. (Correct?) 8Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 9. Exception to Thresholds forEPX, 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.” 9Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 10. Availability and Effective Date of Review Proceedingspost-grant review transitional proceeding inter partesproceeding for business methods review proceedingNot later than 9 On 2012-09-16, IPR will On 2012-09-16,months after be available for a party IPR will begin to beissuance of patent or sued for infringement. available if morebroadening reissue However, see next slide than 9 monthsbut see data regarding implications after issuance.regarding practical for a patent that iseffective date on available for regularnext slide. PGR. 10Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 11. Effective Date for Post-Grant Post- Review (PGR) ProceedingsPGR transitional proceeding for business methodsUnder AIA § 6(f)(2)(A), the effective date is 2012-09-16 for a patent2012-09-16 but AIA § 3(n)(1) limits issued before, on, or afterconsideration to patents with a priority date 2012-09-16. However, it ison or after 2013-03-16. So with average unavailable for 9 monthpendency, a PGR proceeding will not be period when a patent isimplemented 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. 11Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 12. Avoid Paralysis from Too Many Options for WeedKillers at the Supermarket of Post-Grant Tools Post- 12Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 13. 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) Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
  • 14. Post-Grant Review EstoppelPost- Another PTO Patentability Arguments Raised Review Proceeding or Reasonably Could Petition Have Raised in PGR Final Written Decision: 14 Challenge FailedPresentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 15. 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 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
  • 16. 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? 16Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 17. 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 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
  • 18. DJ Actions, Infringement, AutomaticStays 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. 18Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 19. Regulations for PRG Procedure by 2012-09-16 2012-09- Petition Preliminary Limited Response Discovery Motion to Amend Petitioner Review3 mo. Participation? ? Oral Hearing Written YES Settlement Agreement Notice of Review 12 mo. Final Written Decision (+ 6 mo.) Response Appeal Appeal 19 CertificatePresentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 20. 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 20Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 21. Merger (Consolidation) or SuspensionFactors PGR IPR EPX AnalysisThreshold More likely than Reasonable SNQP Not a not that a claim is likelihood of prevail- barrier after unpatentable ing regarding a claim institutedBasis All litigation bases printed prior art publicationsAmendment Likely more limited than reexam resp. to Factors rejection supportDiscovery Limited compared to litigation None suspension of reexamSpeed 12-18 months 2 years until reviewOrganization PTAB CRU completeSettlement May Stop Proceeding No impact • Reexam requested prior to PGR or IPR is not estopped but should be suspended based on above analysis. 21 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
  • 22. Transitional Proceeding forChallenging 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.” 22Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 23. Challenging Business Methods 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. 23Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 24. Transitional Proceedings forChallenging Business Methods• 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. 24Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 25. EPO Oppositions & Post-Grant Post-Review: SimilaritiesOpposition Post-Grant Review ProceedingsAny 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 hearingsintervention after 9-month window, joinder permittedeven during appealparallel national court proceedings parallel litigation regarding infringement andregarding infringement patentability (when counterclaimed) Proceeding may continue despite settlement 25Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 26. EPO Oppositions & Post-Grant Post-Review: DifferencesOpposition Post-Grant Review ProceedingsStraw men permitted No strawmen - real-party-in-interest must be identified2-4 years 12 -18 monthsOpposition Division (3 examiners PTAB (3 administrative patent judgesincluding one who granted patent) (APJs))Appeals are made to the Boards of Appeals are made to the FederalAppeal; no estoppel so patent can still Circuitbe revoked by national courtcost = €6000-€50,000 ($8,000- cost = more than $40,000-170,000 for$70,000) inter partes reexam before appeal 26Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 27. EPO Oppositions & Post-Grant Post-Review: Differences continued.Opposition Post-Grant Review ProceedingsNo threshold (just state grounds, facts, Information demonstrates that it isetc) more likely than not that at least 1 claim is unpatentableNo prosecution history estoppel Prosecution history estoppelNo 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 raisedClaim interpretation at EPO does not Need for consistent characterizationscontrol infringement litigation at PTO and parallel litigation 27Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 28. Kill, Wound, and Miss – What Will bethe 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 28Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 29. 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. 29Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 30. 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 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
  • 31. Distinctions that InfluenceOutcomeFactors Post-Grant Inter Partes Ex Parte Litigation Review Review ReexamBurden of Proof Clear and Preponderance of Evidence Convincing EvidencePresumption of No YesValidityClaim scope Broadest reasonable interpretation (Suitco) Narrow construction (Phillips)Complexity and Any basis other than Many references but -Fewer referencesnature of attack best mode limited to printed -Any basis but best publications modeDecision maker PTAB CRU average juror 31Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 32. 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. 32Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 33. A Few Factors for Use of ReviewProceedings• 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. 33Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 34. Plenty of Time to Get Ready for PGR, But Start YourEngines for IPR to Avoid Getting Left Behind in“Radiator Springs” When the New Route Opens 34 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
  • 35. 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 35Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011
  • 36. Thank you! Kevin B. Laurence ● Stoel Rives LLP kblaurence@stoel.com 801-578- 801-578-6932 36Presentation by Kevin Laurence Presentation by Kevin Laurencefor Strafford Publications, September 28, 2011 for Strafford Publications, September 28, 201170906630

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