The presentation discusses different techniques for using US Patent and Trademark Office (USPTO) invalidity proceedings to invalidate issued patents. The presentation specifically discusses the new procedures available under the America Invents Act (AIA). Topics include Post-Grant Review (PGR) and Inter Partes Review (IPR) and cover business method review (CBM) programs. Deadlines as well as specific scheduling orders for these programs are discussed as well as how best to use the new programs at the USPTO.

1. Speeding It Up at
the USPTO
July 2013
July 23, 2013

2. Speeding Up Invalidity

3. Patent Office Invalidity Proceedings
• Post-Grant Review (PGR)
• Inter Partes Review (IPR)
• Covered Business Method Review (CBM)
• (Derivation Proceedings– not going to
discuss)

4. Patent Office Invalidity Proceedings
PGR IPR
≤ 9 Months
From Issue
>9 Months OR
After PGR

5. GAP!
Patent Office Invalidity Proceedings
PGR IPR
≤ 9 Months
From Issue
>9 Months OR
After PGR
IPR
Technical
Amendment
to AIA Fixed

6. Patent Office Invalidity Proceedings
• Old news-- why are you now mentioning?
– Implementation of concrete rules, guidelines,
and practices has now occurred.
– After the initial knee-jerk reaction against these
proceedings when the AIA was implemented,
opinion is now changing to look favorably upon
these proceedings.

7. Advantages Over Federal Court
• Lower Evidentiary Standard for Invalidity
– USPTO- preponderance of the evidence
– Court- clear and convincing
• Claim Interpretation More Favorable
– USPTO- broadest reasonable interpretation
– Court- patent owner in a Markman hearing can
ask for a narrower interpretation to avoid prior art
• 3-judge panel are all experienced patent
attorneys

8. Advantages Over Federal Court
• Less expensive
– Cost is 10% of a federal lawsuit
– Will likely stay a co-pending federal lawsuit
• Fast
– Completed in 18 months after filing petition
– Discovery is automatic
– Patent owner’s first 60-page response is due in 3
months with no extensions!

9. The Default Timeline for IPR, PGR, and CBM
Date Event
Petition filed
3 months later Patentee’s Preliminary Response (optional)
3 months later Decision on Petition (by claim and by grounds); and
Patentee’s 3-month discovery period begins
3 months later
(Due Date1:)*
Patentee’s Response & Motion to Amend Claims is
due; and Petition’s 3-month discovery period begins.
3 months later
(Due Date 2:)*
Petition’s Reply to Response and Opposition to
Motion to Amend Claims is due, and Patentee’s 1-
month discovery period begins.
1 month later
(Due Date 3:)*
Patentee’s Reply to Motion to amend, and the period
for Observations & Motions to Exclude Evidence
begins.
3 weeks later
(Due Date 4:)*
Petitioner’s motion for observation regarding cross-
exam of reply witness due. Request for oral
argument due.

10. The Default Timeline for IPR, PGR, and CBM
Date Event
2 weeks later
(Due Date 5:)*
Patentee’s response to observation due. Opposition
to motion to exclude due.
1 week later
(Due Date 6:)*
Reply to opposition to motion to exclude due.
Set on Request
(Due Date 7:)*
Oral Argument
12 months after
Decision on
Petition
Final Written Decision Due
*The parties may stipulate different dates for Due Date 1 through 5, but in no case
can those dates be extended beyond Due Date 6 without authorization.

11. What About the Disadvantages?
• Estoppel
– Estoppels arise on challenged claims, not entire
patents
– Estoppels for a CBM review is limited to
arguments that were actually raised
– Is estoppel a real concern when the odds for
invalidating in court are worse?
• Claim Amendments
– Are not automatic
– Amendments must address grounds raised in
petition or they will be rejected

12. What About the Disadvantages?
• Availability
– PGR/IPR/CBM- not available if you file a
complaint declaratory judgment before filing
petition (excludes counterclaims)

13. How to Use
• Litigation
– Quickly knock out invalid patents
• Snow Plow
– Clear the way for new products

14. Critical details about Post-Grant Review
• Available for patent if filed under first-inventor-
to-file (AIA) regime
• Must be filed within 9 months following the
issue date or a broadening reissue date
• Can challenge a patent for most anything
except obvious-type double patenting
• Should raise all possible challenges in petition
due to potential estoppel effects

15. Critical details about Inter Partes Review
• Available for all enforceable patents
• Must be on §102 or §103 grounds
• Not available more than one year after served
with a complaint
• A company can unknowingly purchase a bar
to filing an IPR with the acquisition of another
company.

16. Critical details about Covered Business Methods
Review
• Broader Coverage Than What You Might Think
– Includes method and apparatus claims
– Includes AIA and Pre-AIA patents
– May include data processing inventions outside of the
financial services field
• Available if you have been sued or charged with
infringement
• Only one CBM claim required to make entire patent
subject to review
• Stay of a federal lawsuit is all but guaranteed with an
automatic appeal to CAFC

17. Speeding It Up at
the USPTO
July 23, 2013
Copyright 2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP