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.

1. © 2013 Armstrong Teasdale
LLP
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2. © 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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8. © 2013 Armstrong Teasdale
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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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9. © 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

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
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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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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
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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
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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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