Overview of Post-Grant Patent Practice   Kevin Laurence of Stoel Rives LLP                    andMatt Phillips of Renaissa...
2                                                 Agenda• Tools for Challenging Patents    • Review Proceedings       • Po...
3                      Current Post-Grant Tools3                                                           Inter Partes   ...
4                           Post-Grant Tools                       after September 16, 20124                              ...
5      Overview of Tools    FOR Patent Challengers5
6                 Tools for Patent Challengers6                         Until 9/16/12                                     ...
7          Tools for Patent Challengers    From 9/16/12 Until Sometime After 3/16/137                                     ...
8             Tools for Patent Challengers          Sometime After 3/16/13 Until 9/16/208                             Prio...
9                       Tools for Patent Challengers                               After 9/16/209                         ...
10 EPO Oppositions & Post-Grant Review:          Timing & Alerts        Opposition                   Post-Grant Review    ...
11  EPO Oppositions & Post-Grant Review:       Basis/Threshold/InitiationOpposition                                       ...
12EPO Oppositions & Post-Grant Review:      Presumption & Burden      Opposition                                          ...
13  EPO Oppositions & Post-Grant Review:Construction & Prosecution History Estoppel       Opposition                      ...
14        Response by Patent Owner to        Petition for Post-Grant Review• Before PGR is ordered, the patent owner has  ...
15  EPO Oppositions & Post-Grant Review:              Procedures                Opposition                                ...
16  EPO Oppositions & Post-Grant Review:      Concurrent/Related Litigation                Opposition                     ...
17EPO Oppositions & Post-Grant Review:       Duration and Costs           Opposition                                      ...
18     Review Costs Likely Close to Interference                      Costs18                          Source: AIPLA Repor...
19Kill, Wound, and Miss – What Will be     the Results of PGR and IPR?     U.S. EPX                                       ...
20         Popularity – 3rd Time Is the CharmEPX in ’80; EPX, IPX in ’99; EPX, IPR and PGR in ‘11             5% opposed/y...
Cooperation between Litigators and     Review/Reexamination Counsel21                                                     ...
22           Comparison of the Availability of            Review Proceedings – cont’d  Post-Grant Review                  ...
23  Comparison of the Availability of Review      Proceedings & Stays– cont’d          Post-Grant Review                  ...
24                         Comparison of Review                           Initiation CriteriaProceeding                   ...
25     Initiation Threshold – cont’d• No need to show that the patentability issues are new?   – Maybe not. See 35 U.S.C. ...
26Bases/Grounds for Review Proceedings Post-Grant Review                                                Inter Partes Revie...
27  Other Differences between Post-Grant     Review and Inter Partes Review• While the estoppel implications are the same,...
28    Similarities between Post-Grant Review             and Inter Partes Review•   Petition Requirements (70 pages for PG...
29         Procedure for Review Proceedings                                       Patent Owner                         Res...
30           Requirements for a Petition            Requesting PGR or IPR• Mandatory notices• Grounds for standing   – Ava...
31    Requirements for a Petition   Requesting PGR or IPR - cont’d• Mandatory notices  – Each real party-in-interest  – Re...
32 Fees for PGR or IPR Proceedings• Sliding scale based on number of claims challenged                  No. claims challen...
33  Page Limit and Petition to Waive• Excluded parts:  – Table of contents  – Table of authorities  – Certificate of servi...
34Preliminary Patent Owner Response        and Notice of Review                                      Preliminary          ...
35             Preliminary Patent Owner             Response in PGR or IPR• May argue why no review should be instituted  ...
36 Notice of Review in PGR or IPR• Sets the scope of the review  – Claims under review  – Grounds of challenge to be consi...
37                     PGR or IPR Proceeding         Owner                                        Owner        Discovery  ...
38                 Initial Conference Call• About one month after Notice• To discuss   – Scheduling Order   – Motions that...
39  Owner’s Initial Discovery Period• Owner may take discovery once the proceeding  is instituted• Types of “routine” disc...
40                       Owner’s Response• Page limit is the same as the petition• Can include evidence  – Should include ...
41                           Motion to Amend• The patent owner may file 1 motion to amend the  patent in 1 or more of the ...
42Petitioner’s Reply & Opposition• Petitioner can depose owner’s declarants• Petitioner’s next filings   1) Reply to owner...
43Evidence Battles in PGR or IPR1) Objection       – Due during deposition or       – Due within 5 days of service of the ...
44                               Motion Practice• All requests for relief must be by motion• Movant has burden of proof• M...
45                 Motion Practice cont’d• Non-moving party files Opposition   – Must identify disputed material facts   –...
46         Oral Hearing in PGR or IPR•    Either party may request•    Scheduling Order will set deadline for request•    ...
47Final Written Decision in PGR or IPR • Due within 12 months of institution of   proceeding • Time may be extended up to ...
48                   Appeal in PGR or IPR• Final Board decision may be appealed    – To the Federal Circuit    – By either...
49          Settlement in PGR or IPR• To settle, parties must file written settlement  agreement before final written deci...
50Petitioner Estoppel in PGR or IPR• Claim by claim• Estopped parties    – Petitioner    – Real parties in interest    – P...
51                       Review Petitioner Estoppel                                                                       ...
52                             Review Petitioner Estoppel                                                                 ...
53Patent Owner Estoppel in PGR or IPR• Cancelation of claim in review precludes patent  owner from taking action inconsist...
54  Handling Confidential Information           in PGR or IPR• Can file confidential information with motion to  seal   – ...
55  Transitional Program for Review    of Business-Method Patents• Created by AIA § 18 but not codified in Title 35• Avail...
56   Transitional Program for Review     of Business-Method Patents• Availability cont’d   – Only for “covered business me...
57 Transitional Program for Review   of Business-Method Patents• Conducted like a post-grant review (PGR)• If the patent u...
58 Transitional Program for Review   of Business-Method Patents• Stay of litigation pending review    – Statutory factors ...
59              Tools for Patent Challengers           Sometime After 3/16/13 Until 9/16/2059                             ...
Avoid Paralysis from Too Many Options for Weed Killers at          the Supermarket of Post-Grant Tools  Kevin Laurence & M...
61             Ex Parte ReexaminationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys   9 Ma...
62Typical Flow of Ex Parte Reexam           Request                           First Office action                 Final Of...
63Ex Parte Reexamination Highlights• Initiated by request for reexamination    – May be filed by owner or third party or P...
64                 Ex Parte Requests by Technology800               Mechanical700               Electrical                ...
65                              Case Study No. 1Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attor...
66               Case Study No. 1 – Patent                                    U.S. Pat. 5,575,925Kevin Laurence & Matt Phi...
67               Case Study No. 1 – Claim10. A method of installing a catch basin filter in a catch basin,the catch basin ...
68                      Case Study No. 1 – 1st Reexams• Reexamination Nos. 90/005,603 & 90/005,652                        ...
69    Case Study No. 1 – 1st Reexams• Reexamination Nos. 90/005,603 & 90/005,652      – Certificate issued 2001      – Pat...
70                                                                      Case Study No. 1 – 2nd Reexams                    ...
71    Case Study No. 1 – 2nd Reexams• Reexamination No. 90/007,475      – Request filed 2005. Granted. SNQP raised.      –...
72    Case Study No. 1 – 2nd Reexams• Reexamination No. 90/008,060      – Request filed 2006      – Based on same “old” ar...
73      Case Study No. 1 – 2nd Reexam• Reexamination No. 90/008,060 cont’d      – Owner amends claim 10 to add “preforming...
74       Case Study No. 1 – Am. Claim10. A method of installing a catch basin filter in a catch basin,the catch basin comp...
75         Case Study No. 1 – Litigation• Atl. Constr. Fabrics, Inc. v. MetroChem, Inc.,  No. C03-5645-BHS (W.D. Wash.)   ...
76           Case Study No. 1 – Lessons• Central Reexamination Unit is the (Patent  Wrecking) CRU      – The reason the 2n...
77                          Stay of Litigation                       Pending Reexamination• Common for at least one party ...
78                           Source: LegalMetric (Oct. 2011)Kevin Laurence & Matt Phillips for the Chartered Institute of ...
79                 Stay of Litigation           Pending Reexamination cont’dWhy does it matter to accused infringer?   – L...
80                             Case Study No. 3Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorn...
81                   Case Study No. 3 cont’d• Translogic Tech., Inc. v. Hitachi, Ltd.• U.S. Patent 5,162,666    – “Transmi...
82          Case Study No. 3 - TimelineKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys   9 ...
83Case Study No. 3 – Timeline cont’dKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys   9 May...
84 Case Study No. 3 – Final Decisions• In re Translogic Tech., Inc., 504 F.3d 1249 (Fed.  Cir. 2007)    – Affirms PTO Boar...
85Case Study No. 3 – Simplified View                                     Non-Final          Complaint                     ...
86        Case Study No. 3 – Variation                                     Non-Final                Affirmed          Comp...
87            Case Study No. 3 - Lessons• Reexam is an insurance policy for defendants• The significance of a stay• The po...
88       Strategic Considerations:Goals for Third-Party Requester cont’d• Cancelation of claims   – No infringement liabil...
89          Reexamination vs. Litigation• Assuming both are available for your validity question  (i.e., printed publicati...
90                      Ex Parte vs. Inter Partes                          Reexamination• Inter Partes available only if p...
91                   Ex Parte vs. Inter Partes                   Third-Party Participation Ex parte                       ...
92                   Reexamination Duration (Mos.)                                          Ex Parte              Inter Pa...
93                                                 ResultsEx Parte Reexam                                          vs. Int...
94     Cost of Inter Partes Reexamination94       Cost of Inter Partes Reexamination                           Source: AIP...
95                     Overview of Tools for                       Patent OwnersKevin Laurence & Matt Phillips for the Cha...
96            Correction Tools for     U.S. Patent Owners – Until 9/16/12        Printed Publ.                            ...
97          Correction Tools forU.S. Patent Owners – On & After 9/16/12       Printed Publ.                               ...
98                                             ReissueKevin Laurence & Matt Phillips for the Chartered Institute of Patent...
99                            Reissue Highlights• Filing for reissue    – Only owner can file    – Some special requiremen...
100        Errors Correctable by Reissue• Errors in the text of the specification or the drawings• Claims too broad    – B...
101      Errors Corrected by Reissue in 2008                                                                              ...
102  Errors Not Correctable by Reissue• Deliberate acts• Inequitable conduct• Failure to meet the enablement, written  des...
103                             Case Study No. 1Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attor...
104                          Case Study No. 1 cont’dU.S. Patent No. 5,522,283 Claim 1 of: A circular saw blade straighteni...
105                           Case Study No. 1 cont’d                           Eccentricity Limitations1. A circular saw ...
106                          Case Study No. 1 cont’d                           RE36,409 – 1st Reissue               Origin...
107               Case Study No. 1 cont’dEccentricity Limitation as Revised in the 1st Reissue                            ...
108                 Case Study No. 1 cont’d            US Pat No. RE37,833 – 2nd Reissue                                  ...
109                 Case Study No. 1 cont’d                         LessonBecause the 1st Reissue was a broadening reissue...
110           Advantages of Reissue    Relative to Ex Parte Reexamination• Claims cannot be broadened via reexamination bu...
111         Reissue vs. Reexam: No. Filed by Owner1300                           Reissues Filed12001100                   ...
112                      Strategic Considerations                         for Patent Owners• Review patents as soon as pos...
113    Strategic Considerations for Third Partiesin Light of Corrective Options for Patent Owners• When developing an inva...
114                                    Supplemental                                    ExaminationKevin Laurence & Matt Ph...
115              Cleansing Effects of           Supplemental Examination• No inequitable conduct from original prosecution...
Therasense and Supplemental                                                                                            116...
117                                         Therasense• Inequitable conduct is defined in Therasense as  requiring proof t...
118     Fraud & Practitioner Discipline• If PTO believes a “material fraud” may have taken  place, then PTO “shall” refer ...
119                  Requesting           Supplemental Examination• Who can request supplemental examination?    – Only pa...
120                  Requesting           Supplemental Examination• Only patent owner can request• Request for PTO to    –...
121       Request Requirements cont’d• Fee   –   $5,180 suppl. exam. fee   –   + $16,120 ex parte reexam. fee (refunded if...
122       Request Requirements cont’d• Items of information cont’d    – Statement for each item explaining why either     ...
123       Request Requirements cont’d• Identification of each issue raised    – One item of information may raise multiple...
CIPA Presentation - Comparative Overivew of U.S. Post-Grant Patent Practice
CIPA Presentation - Comparative Overivew of U.S. Post-Grant Patent Practice
CIPA Presentation - Comparative Overivew of U.S. Post-Grant Patent Practice
CIPA Presentation - Comparative Overivew of U.S. Post-Grant Patent Practice
CIPA Presentation - Comparative Overivew of U.S. Post-Grant Patent Practice
CIPA Presentation - Comparative Overivew of U.S. Post-Grant Patent Practice
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CIPA Presentation - Comparative Overivew of U.S. Post-Grant Patent Practice

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comparison of opposition with post-grant review, comparison of post-grant review and inter partes review proceedings, reexamination and reissue under the America Invents Act, introduction to supplemental examination

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CIPA Presentation - Comparative Overivew of U.S. Post-Grant Patent Practice

  1. 1. Overview of Post-Grant Patent Practice Kevin Laurence of Stoel Rives LLP andMatt Phillips of Renaissance IP Law Group LLP Seminar forThe Chartered Institute of Patent Attorneys London, United Kingdom 9 May 2012
  2. 2. 2 Agenda• Tools for Challenging Patents • Review Proceedings • Post-grant review (PGR) • Inter partes review (IPR) proceedings • Interim (business method) proceedings • Reexamination• Tools for Correcting Patents • Reissue • Owner-initiated reexamination • Supplemental examinationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  3. 3. 3 Current Post-Grant Tools3 Inter Partes Reexamination Tools for Patent Challengers Ex Parte at the PTO Reexamination Tools for Reissue Patent Owners to Correct Patents Certificate of at the PTO Correction Disclaimer Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  4. 4. 4 Post-Grant Tools after September 16, 20124 Post-Grant Review Tools for Inter Partes Review Patent Challengers at the PTO Ex Parte Reexamination Supplemental Examination Tools for Patent Owners Reissue at the PTO Certificate of Correction Disclaimer Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  5. 5. 5 Overview of Tools FOR Patent Challengers5
  6. 6. 6 Tools for Patent Challengers6 Until 9/16/12 Prior Art - Other Bases - Novelty (§ 102), Patentable Subject Matter (§ 101), Obviousness (§ 103), or Utility (§ 101), Double Patenting Enablement (§ 112), Written Description (§ 112) Printed Publication Application Filed On or After 11/29/99 Ex Parte Inter Partes Litigation Reexam Reexam Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  7. 7. 7 Tools for Patent Challengers From 9/16/12 Until Sometime After 3/16/137 Prior Art Other Basis (§§ 102, 103, or (§§ 101,112) x2 Pat.) Printed Publication Outside Charged with Initial 9-Mo. Infringement of Window Bus. Meth. Pat. Business Ex Parte Inter Partes Method Patent Litigation Reexam Review Review Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  8. 8. 8 Tools for Patent Challengers Sometime After 3/16/13 Until 9/16/208 Prior Art Other Basis (§§ 102, 103, or (§§ 101,112) x2 Pat.) Printed Publication Outside Inside Charged with Initial 9-Mo. Initial 9-Mo. Infringement of Window Window Bus. Meth. Pat. Business Ex Parte Inter Partes Post-Grant Method Patent Litigation Reexam Review Review Review Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  9. 9. 9 Tools for Patent Challengers After 9/16/209 Prior Art Other Basis (§§ 102, 103, or (§§ 101,112) x2 Pat.) Printed Publication Outside Inside Initial 9-Mo. Initial 9-Mo. Window Window Ex Parte Inter Partes Post-Grant Litigation Reexam Review Review Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  10. 10. 10 EPO Oppositions & Post-Grant Review: Timing & Alerts Opposition Post-Grant Review 9-month window to initiateEPO provides the Register USPTO does not yet provide anAlert service (formerly alert service.WebRegMT), whichprovides automatic Third parties provide notices suchupdates regarding as Minesoft’s Patenttracker alerts.changes to data containedin the European PatentRegister. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  11. 11. 11 EPO Oppositions & Post-Grant Review: Basis/Threshold/InitiationOpposition Post-Grant Review ProceedingAlmost any basis of challenge Almost any basis of challengeavailable (except lack of available (except best mode)clarity and unity)Straw men permitted No strawmen - real-party-in- interest must be identifiedAdmissibility of an opposition Most show that it is more likelyis only considered on formal than not that at least onegrounds challenged claim is unpatentable Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  12. 12. 12EPO Oppositions & Post-Grant Review: Presumption & Burden Opposition Post-Grant Review Claims are presumed to be valid in litigation but not in PGROpponent has the Evidence must be proven merelyburden of proof but by a preponderance of evidenceit can be reversed instead of the higher standardin certain limited required in litigation, clear andcircumstances convincing evidence Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  13. 13. 13 EPO Oppositions & Post-Grant Review:Construction & Prosecution History Estoppel Opposition Post-Grant Review Likely given their broadest reasonable interpretation and not the narrow construction given during litigation in U.S. district courts Statements made Prosecution history estoppel – during prosecution statements made during do not bind patent prosecution impact review proprietor during proceeding and litigation the opposition Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  14. 14. 14 Response by Patent Owner to Petition for Post-Grant Review• Before PGR is ordered, the patent owner has an opportunity to file a response to the third party’s petition setting forth the reasons why a post-grant review should not be instituted.• After such a response has been filed or after the response period has expired, the PTO will then have three months to determine whether to institute a post-grant review proceeding. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  15. 15. 15 EPO Oppositions & Post-Grant Review: Procedures Opposition Post-Grant ReviewOpposition Division - 3 examiners Patent Trial & Appeal Board (PTAB) –including one who granted patent 3 administrative patent judges (APJs) Limited rights to make claim amendments (no broadening)Administrative proceedings such as oppositions and review proceedings provide less robust opportunities for discovery than litigation oral hearings Proceeding may continue despite settlementintervention after 9-month window, joinder permittedeven during appealAppeals are made to the Boards of Appeals are made to the Federal CircuitAppeal; no estoppel so patent canstill be revoked by national court Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  16. 16. 16 EPO Oppositions & Post-Grant Review: Concurrent/Related Litigation Opposition Post-Grant Reviewparallel national court proceedings parallel litigation regardingregarding infringement infringement and patentability (when counterclaimed)No 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 reasonably could have raisedClaim interpretation at EPO does Need for consistent characterizationsnot control infringement litigation at PTO and parallel litigation Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  17. 17. 17EPO Oppositions & Post-Grant Review: Duration and Costs Opposition Post-Grant Review2-4 years; 5 months for preliminary proceeding and then once PGR is ordered, it must beappeals typically require completed within 12 months unless good24-30 months cause is shown for an additional 6 months; appeals typically take about a year at the Federal CircuitFiling fee = €745 Proposed minimum filing fee is $35,800After filing the notice of After filing the petition to request a post-opposition, the costs for the grant review proceeding, the costs for thepatent proprietor and the patent owner or the petitioner may be ≈opposer may be £5,000 - £100,000-£400,000.£40,000. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  18. 18. 18 Review Costs Likely Close to Interference Costs18 Source: AIPLA Report of the Economic Survey 2011 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  19. 19. 19Kill, Wound, and Miss – What Will be the Results of PGR and IPR? U.S. EPX U.S. IPX EPO Opp’n Kill Miss Miss Miss 26% Kill Kill 44% Wound Wound Wound 30% Kill = All claims cancelled Wound = Claims amended Miss = All claims confirmedKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  20. 20. 20 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 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  21. 21. Cooperation between Litigators and Review/Reexamination Counsel21 vs. Reexam/Review Litigators Counsel Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  22. 22. 22 Comparison of the Availability of Review Proceedings – cont’d Post-Grant Review Inter Partes Review• Available during a first • Available during a second window, within nine window, nine months after months after grant of issuance and any PGRs original or broadening have terminated reissue patent • Available on September 16,• Post-grant review statutes 2012 go into effect on 9/16/12 • Unlike with inter partes but only patents governed reexam, there is no eligibility by the first-inventor-to-file cutoff based on patent’s provisions are eligible for filing date post-grant review (some • Number of IPRs may be time after 3/16/13) limited to 281 per year in each of the first 4 years Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  23. 23. 23 Comparison of the Availability of Review Proceedings & Stays– cont’d Post-Grant Review Inter Partes Review If sued for infringement, petitioner, real party in interest & privies have 1 year to seek inter partes reviewNot available if petitioner or real party in interest has filed declaratory judgmentactionSubsequent declaratory judgment action filed by petitioner or real party ininterest will be automatically stayed unless patent owner consentsNo stay of litigation pending PGR if 1) Patent owner brings suit within 3 months of grant, and 2) Patent owner moves for preliminary injunction Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  24. 24. 24 Comparison of Review Initiation CriteriaProceeding Criteria to InitiateEx Parte Substantial new question of patentabilityReexamination (SNQP) More likely than not (greater than 50% chance)Post-Grant Review that challenged claim is unpatentable (MLTN) or novel/unsettled important legal question Reasonable likelihood (50/50 chance) that the petitioner would prevail (RLP), which is aInter Partes Review somewhat flexible standard that allows the judge room for the exercise of judgment.” 77 Fed. Reg. 7041, 7046 (Feb. 10, 2012) Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  25. 25. 25 Initiation Threshold – cont’d• No need to show that the patentability issues are new? – Maybe not. See 35 U.S.C. § 325(d): “In determining whether to institute or order a proceeding under this chapter [32 – post-grant review], chapter 30 [ex parte reexam], or chapter 31 [inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” – Proposed rules say nothing about this. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  26. 26. 26Bases/Grounds for Review Proceedings Post-Grant Review Inter Partes Review• “[A]ny ground that could • Only on a ground that be raised under [35 could be raised under U.S.C. §] 282(b) [(2) or section 102 (novelty) or (3)] (relating to invalidity 103 (obviousness) and of the patent or any only on the basis of prior claim)” 35 U.S.C. § art consisting of patents 321(b). or printed publication.”• All grounds for 35 U.S.C. § 311(a). unpatentability except • Double patenting? best mode Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  27. 27. 27 Other Differences between Post-Grant Review and Inter Partes Review• While the estoppel implications are the same, the broader bases available for PGR means that IPR creates less estoppel issues• Standard for additional discovery • IPR: Interests of justice • PGR: Good cause (lower showing) Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  28. 28. 28 Similarities between Post-Grant Review and Inter Partes Review• Petition Requirements (70 pages for PGR and 50 pages for IPR)• Patent Owner’s Preliminary Response• Notice• Patent Owner’s Response• Motion to Amend• Evidence and Exclusion of Evidence• Hearing• Settlement• Final Written Decision• Appeal• Estoppel Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  29. 29. 29 Procedure for Review Proceedings Patent Owner Response & Petition Discovery Mo. to Amend 2 mo. Preliminary Petitioner Reply & Response Discovery Opposition 3 mo. Patent Owner Review Motions Reply ? YES Oral HearingNotice of Review 12 mo. Final Written (+ 6 mo.) Decision Appeal AppealInitial Conference ? Call Settlement Certificate AgreementKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  30. 30. 30 Requirements for a Petition Requesting PGR or IPR• Mandatory notices• Grounds for standing – Availability of the patent for review – Statement of non-estoppel• Identification of challenge – Each claim challenged – Statutory ground for challenge – How each challenged claim should be interpreted – Why each challenged claim is unpatentable – Relevance of supporting evidence for each challenge• Supporting evidence as exhibits• Fee; certificate of service; 50/70-page limit Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  31. 31. 31 Requirements for a Petition Requesting PGR or IPR - cont’d• Mandatory notices – Each real party-in-interest – Related matters – Lead and back-up counsel – Service information• Also due from patent owner within 21 days after service of the petition• Duty to supplement Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  32. 32. 32 Fees for PGR or IPR Proceedings• Sliding scale based on number of claims challenged No. claims challenged Fee for PGR Fee for IPR 1 – 20 $35,800 $27,200 21 – 30 $44,750 $34,000 31 – 40 $53,700 $40,800 41 – 50 $71,600 $54,400 51 – 60 $89,500 $68,000 Each additional 10 $35,800 $27,200• Non-challenged base claims on which a challenged claim depends count toward the claim count for fees Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  33. 33. 33 Page Limit and Petition to Waive• Excluded parts: – Table of contents – Table of authorities – Certificate of service• Motion to waive the page limit – Petitions “must comply with the stated page limits” – But, an overlength petition can also be filed with a motion Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  34. 34. 34Preliminary Patent Owner Response and Notice of Review Preliminary Review NO Petition End Response ? 2 mo. 3 mo. YES Notice of ReviewKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  35. 35. 35 Preliminary Patent Owner Response in PGR or IPR• May argue why no review should be instituted – Petition is barred – References are not prior art – The prior art lacks a material claim limitation – The prior art teaches away for the proposed combination – The petitioner’s claim interpretation is unreasonable• Prohibited – Amendments – New testimonial evidence• May expressly waive right to file preliminary response• May disclaim claims to avoid review Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  36. 36. 36 Notice of Review in PGR or IPR• Sets the scope of the review – Claims under review – Grounds of challenge to be considered• Will take into account patent owner’s preliminary statement, if filed• Notice of review will be published in Official Gazette• Notice will include a Scheduling Order• Board’s decision whether to institute a review is not appealable, but a party can request rehearing Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  37. 37. 37 PGR or IPR Proceeding Owner Owner Discovery Discovery Period Period Petitioner Motions to Discovery Exclude Evidence PeriodKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  38. 38. 38 Initial Conference Call• About one month after Notice• To discuss – Scheduling Order – Motions that parties plan to file • Each side will submit a Motions List in advance • Filing a motion not on the list will require prior authorization and likely will not change the schedule Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  39. 39. 39 Owner’s Initial Discovery Period• Owner may take discovery once the proceeding is instituted• Types of “routine” discovery – Exhibits cited in papers – Cross examination of declarants – Inconsistent information• Additional discovery – Must request by motion – Standard is “interests of justice” Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  40. 40. 40 Owner’s Response• Page limit is the same as the petition• Can include evidence – Should include all evidence owner intends to rely on• May be accompanied by a Motion to Amend – As a separate paper – See next slide Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  41. 41. 41 Motion to Amend• The patent owner may file 1 motion to amend the patent in 1 or more of the following ways: – Cancel any challenged patent claim – For each challenged claim, propose a reasonable number of substitute claims – One is presumed reasonable• Additional motions to amend only upon – Joint request to materially advance settlement – Patent owner’s showing of good cause – Pre-authorization by Board needed Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  42. 42. 42Petitioner’s Reply & Opposition• Petitioner can depose owner’s declarants• Petitioner’s next filings 1) Reply to owner’s response 2) Opposition to Motion to Amend• If petitioner files (2), then owner can file a reply Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  43. 43. 43Evidence Battles in PGR or IPR1) Objection – Due during deposition or – Due within 5 days of service of the evidence – Due within 10 days after institution of review if evidence arose in preliminary proceeding2) Supplementation – Supplemental evidence due within 10 days of objection3) Motion to Exclude4) Motion in Limine• Federal Rules of Evidence apply Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  44. 44. 44 Motion Practice• All requests for relief must be by motion• Movant has burden of proof• Must get Board’s advance authorization to file motion – Scheduling Order will pre-authorize many motions – Any other opposed motion will require conference call with Judge to obtain authorization• Notice of Motion per 37 C.F.R. § 42.21• Statement of material facts – Separately numbered sentences – With citations to record Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  45. 45. 45 Motion Practice cont’d• Non-moving party files Opposition – Must identify disputed material facts – Due one month after service of motion• Moving party may file Reply – May only respond to arguments raised in Opposition – Due one month after service of opposition• Page limits – Motion: 15 pages – Opposition: 15 pages – Reply: 5 pages Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  46. 46. 46 Oral Hearing in PGR or IPR• Either party may request• Scheduling Order will set deadline for request• Generally, petitioner will go first• Demonstrative exhibits – PTO advises against them – If used, must serve 5 days in advance• Generally, no live testimony• No new evidence Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  47. 47. 47Final Written Decision in PGR or IPR • Due within 12 months of institution of proceeding • Time may be extended up to 6 months by the Chief Administrative Judge • Rehearing of Final Written Decision – Due 30 days from final decision • Rehearing of individual judge decisions – Due 15 days from decision – Reviewed by panel for abuse of discretion • PTO will publish Certificate after rehearing and appeal periods lapse Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  48. 48. 48 Appeal in PGR or IPR• Final Board decision may be appealed – To the Federal Circuit – By either (losing) party – Both parties may participate in appeal• Deadline to file Notice of Appeal is 63 days from date of final Board decision Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  49. 49. 49 Settlement in PGR or IPR• To settle, parties must file written settlement agreement before final written decision• Board may still make patentability determinations, notwithstanding the settlement, if the settlement is inconsistent with the evidence• Parties may request that the settlement be kept nonpublic – Exceptions for U.S. Gov’t agencies to access the settlement – Any person may request access to the settlement for good cause (very rare)• No estoppel for petitioner Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  50. 50. 50Petitioner Estoppel in PGR or IPR• Claim by claim• Estopped parties – Petitioner – Real parties in interest – Privies of the petitioner• Trigger: Final Written Decision by Board• Scope: Grounds “raised or reasonably could have raised”• Forums in which estoppel applies – “[P]roceeding before the Office” – Civil action under 28 U.S.C. § 1338 – ITC proceeding Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  51. 51. 51 Review Petitioner Estoppel Patentability Challenges Raised or Reasonably Review Another PTO Could Have Petition Proceeding Raised in IPR Final Written Decision: Challenge FailedKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  52. 52. 52 Review Petitioner Estoppel Patentability Challenges Raised Review Court or ITC or Reasonably Petition Litigation Could Have Raised in IPR Final Written Decision: Challenge FailedKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  53. 53. 53Patent Owner Estoppel in PGR or IPR• Cancelation of claim in review precludes patent owner from taking action inconsistent with the adverse judgment, including obtaining in any patent: – Substantially the same claim – Claim that could have been filed in the review – Specification amendment denied during the review• Source: 37 C.F.R. § 42.73(d)(3), not statute• Concern is owner having continuation during review Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  54. 54. 54 Handling Confidential Information in PGR or IPR• Can file confidential information with motion to seal – Proposed protective order should accompany motion – Unless and until motion is denied, information will be protected• Even petition can have motion to seal• PTO has published model and default protective orders• Can file motion to expunge confidential information after proceeding concludes Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  55. 55. 55 Transitional Program for Review of Business-Method Patents• Created by AIA § 18 but not codified in Title 35• Availability – Available beginning 9/16/12 until 9/16/20 – Only for those “sued for infringement” or “charged with infringement” AIA § 18(B). – No limitation based on the filing date of the patent – No limitation based on the time since the patent issued Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  56. 56. 56 Transitional Program for Review of Business-Method Patents• Availability cont’d – Only for “covered business method patent” – “[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.” AIA § 18(d)(1) (emphasis added) – Technological Invention? “[C]onsidered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” 37 C.F.R. § 42.301(b) Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  57. 57. 57 Transitional Program for Review of Business-Method Patents• Conducted like a post-grant review (PGR)• If the patent under review is governed by the pre- AIA definitions of prior art, then the prior art that can be used in a review is limited to – That which qualifies under pre-AIA § 102(a), or – That which qualifies under a new hybrid of pre-AIA §§ 102(a) and 102(b). See AIA § 18(a)(1)(C)(ii).• Estoppel affecting subsequent court action extends only to arguments actually raised (not those that “reasonably could have [been] raised”) Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  58. 58. 58 Transitional Program for Review of Business-Method Patents• Stay of litigation pending review – Statutory factors • Whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial; • Whether discovery is complete and whether a trial date has been set; • Whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and • Whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court. – Immediately appealable – No exception for recent patentee seeking preliminary injunction Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  59. 59. 59 Tools for Patent Challengers Sometime After 3/16/13 Until 9/16/2059 Prior Art Other Basis (§§ 102, 103, or (§§ 101,112) x2 Pat.) Printed Publication Outside Inside Charged with Initial 9-Mo. Initial 9-Mo. Infringement of Window Window Bus. Meth. Pat. Business Ex Parte Inter Partes Post-Grant Method Patent Litigation Reexam Review Review Review Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  60. 60. Avoid Paralysis from Too Many Options for Weed Killers at the Supermarket of Post-Grant Tools Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 60
  61. 61. 61 Ex Parte ReexaminationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  62. 62. 62Typical Flow of Ex Parte Reexam Request First Office action Final Office action SNQP? Interview Interview YES Response Response Order granting reexamination NIRC Reexamination Appeal certificateKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  63. 63. 63Ex Parte Reexamination Highlights• Initiated by request for reexamination – May be filed by owner or third party or PTO Director – Must present a substantial new question of patentability• Handled by Central Reexamination Unit (CRU)• Ex parte prosecution – Short deadlines – No extensions of time as a right – Interviews very common – Compact prosecution with liberal after-final amendments• No broadening allowed• Claim changes can have serious consequences• Much interplay with litigation Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  64. 64. 64 Ex Parte Requests by Technology800 Mechanical700 Electrical 229 221600 Chemical 237 203 235500 198 165400 155 414 395 150300 305 335 275 107 188 228200 156 118 78100 124 130 138 118 133 138 120 137 143 87 0 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  65. 65. 65 Case Study No. 1Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  66. 66. 66 Case Study No. 1 – Patent U.S. Pat. 5,575,925Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  67. 67. 67 Case Study No. 1 – Claim10. A method of installing a catch basin filter in a catch basin,the catch basin comprising: an inlet through which water and solids flow into the catch basin, an outlet through which water flows out of the catch basin, wherein the inlet is positionedabove the outlet, and a plurality of basin sidewalls, each sidewall having an upper end at the inlet and a recesslocated at the upper end, the sidewalls defining a chamber, the grate located on the top of thebasin inlet and having grate sides positioned in the recesses, andthe filter comprising: a filter bag having an open top, a closed bottom and one or more sidewalls extendingbetween the top and the bottom of the bag; and a flap joining the top of each sidewall,said method comprising the steps of: placing the filter bag in the catch basin so that each of the bag sidewalls are adjacent to thecatch basin sidewalls and the filter bag open top is positioned above the filter bag closed bottom; placing each of the filter bag flaps into the recess of the upper end of the catch basin; and sandwiching each of the filter bag flaps between the top of the basin and the grate sides,thereby holding the bag in place.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  68. 68. 68 Case Study No. 1 – 1st Reexams• Reexamination Nos. 90/005,603 & 90/005,652 – Requested 1999 and 2000; merged – Based on same art (Metal Era Basket) The image part with relationship ID rId3 was not found in the file.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  69. 69. 69 Case Study No. 1 – 1st Reexams• Reexamination Nos. 90/005,603 & 90/005,652 – Certificate issued 2001 – Patentability of all claims confirmed – PTO agreed with owner that Metal Era Basket did not disclose the “adjacent” limitation: “each of the bag sidewalls are adjacent to the catch basin sidewalls” – PTO accepted owner’s definition (proffered by argument only) of “adjacent” to require no intervening structure anywhere between the bag sidewalls and the catch basin sidewalls.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  70. 70. 70 Case Study No. 1 – 2nd Reexams • Reexamination Nos. 90/007,475 & 90/008,060 – Requested 2005 and 2006; merged – Based on same art (Construction site plans in city hall offices of Redmond and Bellevue, WA)The image part with relationship ID rId3 was not found in the file. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  71. 71. 71 Case Study No. 1 – 2nd Reexams• Reexamination No. 90/007,475 – Request filed 2005. Granted. SNQP raised. – First Office action rejection – Owner’s response makes 2 arguments (1) Site Plans do not qualify as prior art (2) Prior art fabric sheet is not “bag” – Submits dictionary definition – Submits declarations from PHOSITAs – Submits declaration from litigation expert witness – PTO accepts (1) and punts (2), issues NIRCKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  72. 72. 72 Case Study No. 1 – 2nd Reexams• Reexamination No. 90/008,060 – Request filed 2006 – Based on same “old” art + “new light” – New light = declarations from Redmond & Bellevue city employees authenticating site plans, their public availability, and dates thereof – Request also answers owner’s substantive arguments re. “bag” – PTO grants request – Merged with prior reexam (No. 90/007,475) – Rejection reinstated ; PTO says the prior art sheet has a carrying capacity and functions like a bagKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  73. 73. 73 Case Study No. 1 – 2nd Reexam• Reexamination No. 90/008,060 cont’d – Owner amends claim 10 to add “preforming” step: “preforming the filter bag” – Rejection maintained and made final; PTO says the prior art sheet is preformed because it was manufactured – After final rejection • Owner’s attorney interview examiner • Owner amends “preforming” step: “preforming the filter bag by joining sidewall portions together.” – Claim allowed with that after-final amendment – Certificate issued August 2008Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  74. 74. 74 Case Study No. 1 – Am. Claim10. A method of installing a catch basin filter in a catch basin,the catch basin comprising: an inlet through which water and solids flow into the catch basin, an outlet through which water flows out of the catch basin, wherein the inlet is positionedabove the outlet, and a plurality of basin sidewalls, each sidewall having an upper end at the inlet and a recesslocated at the upper end, the sidewalls defining a chamber, the grate located on the top of thebasin inlet and having grate sides positioned in the recesses, andthe filter comprising: a filter bag having an open top, a closed bottom and one or more sidewalls extendingbetween the top and the bottom of the bag; and a flap joining the top of each sidewall,said method comprising the steps of: preforming the filter bag by joining sidewall portions together; placing the filter bag in the catch basin so that each of the bag sidewalls are adjacent to thecatch basin sidewalls and the filter bag open top is positioned above the filter bag closed bottom; placing each of the filter bag flaps into the recess of the upper end of the catch basin; and sandwiching each of the filter bag flaps between the top of the basin and the grate sides,thereby holding the bag in place.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  75. 75. 75 Case Study No. 1 – Litigation• Atl. Constr. Fabrics, Inc. v. MetroChem, Inc., No. C03-5645-BHS (W.D. Wash.) – Court lifts stay pending reexamination – Summary judgment of no infringement liability • No pre-certificate damages • Intervening rights for Defendant to sell off inventory – Defendant redesigns its product to have a seamless bag – Owner/Plaintiff forced to dismiss infringement count with prejudiceKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  76. 76. 76 Case Study No. 1 – Lessons• Central Reexamination Unit is the (Patent Wrecking) CRU – The reason the 2nd reexam did more damage with worse art?• Authenticating evidence as new light to support a second request• “Quasi inter partes” ex parte reexamination• Merely forcing an amendment can be victory – Eliminate liability for past infringement – Intervening rights to sell of inventory – Enable design-around• Delay caused by reexamination – 3.5 years for a rather simple reexamination (no appeals)Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  77. 77. 77 Stay of Litigation Pending Reexamination• Common for at least one party (usually accused infringer) to seek a stay of litigation pending completion of a reexamination• Within the sound discretion of a district court• 57.4% of contested motions for stay pending reexamination have been granted nationwide since 1991. LegalMetric (Oct. 2011). Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  78. 78. 78 Source: LegalMetric (Oct. 2011)Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  79. 79. 79 Stay of Litigation Pending Reexamination cont’dWhy does it matter to accused infringer? – Litigation is expensive – Race to final judgment: Successful reexam is not helpful if it concludes after final court judgment Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  80. 80. 80 Case Study No. 3Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  81. 81. 81 Case Study No. 3 cont’d• Translogic Tech., Inc. v. Hitachi, Ltd.• U.S. Patent 5,162,666 – “Transmission Gate Series Multiplexer” – Owner: Translogic Tech., Inc.• LESSON: Reexamination can be a valuable insurance policy against a loss in court! Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  82. 82. 82 Case Study No. 3 - TimelineKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  83. 83. 83Case Study No. 3 – Timeline cont’dKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  84. 84. 84 Case Study No. 3 – Final Decisions• In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) – Affirms PTO Board rejections – Hitachi participated at Fed. Cir. as intervenor• Translogic Tech., Inc. v. Hitachi, Ltd., 250 F. App’x 988 (Fed. Cir. 2007) (nonprec.) – Summarily vacates district court’s judgment – Bye, bye $86.5 million Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  85. 85. 85Case Study No. 3 – Simplified View Non-Final Complaint Judgment Judgment for Vacated B Patentee Request for Final Judgment Canceling Reexam ClaimsKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  86. 86. 86 Case Study No. 3 – Variation Non-Final Affirmed Complaint Judgment for (Final B Patentee Judgment) Request for Final Judgment Canceling Reexam ClaimsKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  87. 87. 87 Case Study No. 3 - Lessons• Reexam is an insurance policy for defendants• The significance of a stay• The powerful differences in claim construction and burden of proof and perspective applied by the PTO and courts• “Quasi inter partes” ex parte reexamination• Participation in Federal Circuit appeal by third- party requester as intervenor Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  88. 88. 88 Strategic Considerations:Goals for Third-Party Requester cont’d• Cancelation of claims – No infringement liability• Narrowing of claims – No pre-certificate infringement liability – Create intervening rights for future – Narrowed claims may not be infringed• Create a more favorable prosecution history• Establish materiality of withheld reference• Hope patent owner commits inequitable conduct Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  89. 89. 89 Reexamination vs. Litigation• Assuming both are available for your validity question (i.e., printed publication prior art)• Differences – Nature of decision maker – Claim construction/interpretation – Evidentiary burdens – Nature of supporting evidence – Number of arguments that can practically be made – Effect of overall equities – Claims frozen or fluid – Participation rights – Cost – Timing – Standing requirements Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  90. 90. 90 Ex Parte vs. Inter Partes Reexamination• Inter Partes available only if patent was filed on or after November 29, 1999• Differences – Possible anonymity – Estoppel – Participation – Cost – Duration – Likelihood of favorable result? Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  91. 91. 91 Ex Parte vs. Inter Partes Third-Party Participation Ex parte Inter partes • Request • Request • Comment on every Office action and response • Appeal to Board • Participate in owner’s • Appeal to Federal Circuit if appeal at Federal requested on or after Circuit as an intervenor November 22, 2002Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  92. 92. 92 Reexamination Duration (Mos.) Ex Parte Inter PartesAll TimeMedianAll Time Avg. 2012Q1 Avg. 0.0 6.0 12.0 18.0 24.0 30.0 36.0 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  93. 93. 93 ResultsEx Parte Reexam vs. Inter Partes Reexam All All canceled confirmed 12% All confirmed 11% 24% All canceled 44% Some Some changes changes 45% 64% Third-Party-Requested Ex Parte Reexams OnlyKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  94. 94. 94 Cost of Inter Partes Reexamination94 Cost of Inter Partes Reexamination Source: AIPLA Report of the Economic Survey 2011 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  95. 95. 95 Overview of Tools for Patent OwnersKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  96. 96. 96 Correction Tools for U.S. Patent Owners – Until 9/16/12 Printed Publ. Error in Prior Art Patent Invalid or Minor Inoperative No Correction isAmendment Overclaimed Overclaimed Underclaimed Specification Obvious Needed Corrective Ex Parte Certificate of Disclaimer Reissue Claim Reexam Correction Construction Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  97. 97. 97 Correction Tools forU.S. Patent Owners – On & After 9/16/12 Printed Publ. Error in Information Prior Art Patent Invalid or Minor Inoperative No Correction isAmendment Overclaimed Overclaimed Underclaimed Specification Obvious Needed Corrective Ex Parte Suppl. Certificate of Disclaimer Reissue Claim Reexam Exam Correction Construction Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  98. 98. 98 ReissueKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  99. 99. 99 Reissue Highlights• Filing for reissue – Only owner can file – Some special requirements re. format and oath – Owner must admit existence of an error• Not all errors are correctable by reissue• Broadening sometimes possible – Filed as a broadening reissue within two-year anniversary of grant – Limited by rule against recapture• Familiar, flexible proceeding – Usual deadlines; extensions of time available – RCE, continuation & divisional possible• Claim changes can have serious consequences• Protests possible Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  100. 100. 100 Errors Correctable by Reissue• Errors in the text of the specification or the drawings• Claims too broad – Based on prior art – Based on 35 U.S.C. § 112 – Just narrowing dependent claims may not be enough• Claims too narrow – Cannot broadened more than 2 years after grant – Different statutory categories are acceptable – Cannot violate the recapture rule• Inventorship• Priority Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  101. 101. 101 Errors Corrected by Reissue in 2008 Inventorship 1.2% Priority Specification 5.4% 1.4% Overclaiming 9.2% Other Claim Error 12.8% Underclaiming 70.0%Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  102. 102. 102 Errors Not Correctable by Reissue• Deliberate acts• Inequitable conduct• Failure to meet the enablement, written description or best mode requirements of 35 U.S.C. § 112• Failure to file divisional or continuation application• Undesired or unnecessary terminal disclaimer Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  103. 103. 103 Case Study No. 1Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  104. 104. 104 Case Study No. 1 cont’dU.S. Patent No. 5,522,283 Claim 1 of: A circular saw blade straightening andtensioning machine for reducing or eliminating unevenness in circular sawblades, comprising:...a set of straightening and tensioning rollers … the set comprising an uppershaft and a lower shaft ... Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  105. 105. 105 Case Study No. 1 cont’d Eccentricity Limitations1. A circular saw blade straightening and tensioning machine for reducing oreliminating unevenness in circular saw blades, comprising:... a hub mounted on one end of each of the upper and the lower shafts,each of the hubs comprising a center portion horizontally eccentric ... and a pair of sideportions disposed on opposite sides of the center portion, each of the side portionsbeing horizontally eccentric ... in a direction opposite to that of the center portion;... Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  106. 106. 106 Case Study No. 1 cont’d RE36,409 – 1st Reissue Original Application• Filed January 9, 1995• Issued June 4, 1996 RE36,409 - 1st Reissue• Filed June 4, 1998 (2nd anniversary of original patent grant)• Issued November 30, 1999 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  107. 107. 107 Case Study No. 1 cont’dEccentricity Limitation as Revised in the 1st Reissue New Claim 15 • Eliminates “tensioning” limitation. • Refers to roller shafts and saw blade surfaces as “first” and “second” rather than “upper” and “lower.” • Claims hubs with an eccentric center roller and centric side rollers. But... This left open the possibility for a competitor to redesign its product so that the center roller was centric with the shaft axes while the side rollers were eccentric. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  108. 108. 108 Case Study No. 1 cont’d US Pat No. RE37,833 – 2nd Reissue Original Application• Filed January 9, 1995• Issued June 4, 1996 1st Reissue• Filed June 4, 1998• Issued November 30, 1999 RE37,833 - 2nd Reissue• Filed as a reissue continuation November 30, 1999 (the day the 1st Reissue issued)• Issued September 10, 2002 (more than 6 years after original patent issued) Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  109. 109. 109 Case Study No. 1 cont’d LessonBecause the 1st Reissue was a broadening reissue,the 2nd Reissue could also be used to broadenclaims, despite the filing of the 2nd Reissue over3 years after the grant of the original patent.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  110. 110. 110 Advantages of Reissue Relative to Ex Parte Reexamination• Claims cannot be broadened via reexamination but may be possible via reissue• Reissue permits various corrections to be made not just changes to the claims in response to rejections or prior art• Reissue is examined by the same examiner as the original patent while reexamination is handled by CRU• Reissue prosecution can be terminated by patent owner but reexamination cannot be terminated• Reissue permits extensions of time as a right• Reissue permits the filing of continuations, divisionals and requests for continued examination• Reissue prosecution is, for the most part, familiar Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  111. 111. 111 Reissue vs. Reexam: No. Filed by Owner1300 Reissues Filed12001100 Owner-Requested1000 Reexams Filed900800700600500400300200100 0 90 91 92 93 94 95 96 97 98 99 00 01 02 03 04 05 06 07 08 09 10 11 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  112. 112. 112 Strategic Considerations for Patent Owners• Review patents as soon as possible after issuance for errors that can be corrected via a certificate of correction• Docket at least one reminder to consider filing a reissue application within two years of issuance so that a broadening reissue can be considered• Before asserting a patent against a third party, review the patent for errors that can be corrected by disclaimer, a certificate of correction, reissue or ex parte reexamination Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  113. 113. 113 Strategic Considerations for Third Partiesin Light of Corrective Options for Patent Owners• When developing an invalidity or noninfringement position with respect to a patent of a third party, consider whether the patent owner could correct the error. Examples include: – Obtaining a broadening reissue within two years of issuance – Overcoming a validity issue by filing a narrowing reissue – Receiving confirmation of the validity of a claim by surviving reexamination or having a request for reexamination denied – Eliminating errors under 35 U.S.C. § 112 ,¶¶ 1 & 2 by filing a certificate of correction – Eliminating a doubling patent scenario by filing a disclaimer Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  114. 114. 114 Supplemental ExaminationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  115. 115. 115 Cleansing Effects of Supplemental Examination• No inequitable conduct from original prosecution relating to information that is considered, reconsidered or corrected in supplemental exam.• Exceptions: – Prior allegation of inequitable conduct pled with particularity in litigation – Litigation commenced before supplemental examination (and resulting reexamination) concluded Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  116. 116. Therasense and Supplemental 116 Examination• If it is necessary to amend claims based on a prior art reference during a reexamination after supplemental examination, then the prior art is but-for material and if intent is also shown then inequitable conduct has been proven.• Therasense significantly diminished the need for supplemental examination such that it may only be needed when a patent owner wants to eliminate any doubt that certain conduct has not tainted a patent. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  117. 117. 117 Therasense• Inequitable conduct is defined in Therasense as requiring proof that an applicant misrepresented or omitted material information with the specific intent to deceive the PTO. – Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).• The Federal Circuit requires that intent and materiality be separate requirements, that the evidence for intent must show a deliberate decision to deceive, and that the evidence for materiality must show that “but-for” the deception, the PTO would not have allowed the claim. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  118. 118. 118 Fraud & Practitioner Discipline• If PTO believes a “material fraud” may have taken place, then PTO “shall” refer the matter to the Attorney General (AG) – Referral is confidential unless & until AG presses criminal charges – Will suspect be given notice? – PTO “regards . . . ‘material fraud’ . . . to be narrower than inequitable conduct as defined . . . in Therasense.” 77 Fed. Reg. 3666.• Supplemental examination does not limit liability for Walker Process fraud and related offenses• Supplemental examination does not limit ability of OED to investigate practitioner conduct Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  119. 119. 119 Requesting Supplemental Examination• Who can request supplemental examination? – Only patent owner – Requester must establish ownership via Rule 3.73(b) filing – Third parties are prohibited from participating• When can supplemental examination be requested? – Statute and rules provide no time limit – Perhaps PTO will limit to patents having enforcement potential?• Who decides requests for suppl. exam. requests? – CRU? Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  120. 120. 120 Requesting Supplemental Examination• Only patent owner can request• Request for PTO to – Consider or reconsider or correct – Information believed to be relevant to the patent• PTO decides – Within 3 months – Whether the request raises an SNQP• If so, PTO will – Issue certificate saying so – Order ex parte reexamination Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  121. 121. 121 Request Requirements cont’d• Fee – $5,180 suppl. exam. fee – + $16,120 ex parte reexam. fee (refunded if reexam. not ordered) – = $21,300 – + possible over-length document fees • + $170 for each non-patent document with 21-50 pages • + $280 for each add’l 50 pages or fraction thereof• Items of information – Items that PTO is to consider, reconsider or correct – Items owner believes to be “relevant to the patent” – Each item must be reduced to written form – No more than 10 items can be included in one request Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  122. 122. 122 Request Requirements cont’d• Items of information cont’d – Statement for each item explaining why either • consideration • reconsideration, or • correction – . . . of that item is being requested.• Identification of each aspect of patent for which supplemental examination is sought – Examples: Abstract, drawing, specification, claims, priority entitlement – If any identified claim includes a 112/6 limitation, request must point out the corresponding structure Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012
  123. 123. 123 Request Requirements cont’d• Identification of each issue raised – One item of information may raise multiple issues – There is no limit on the number of issues raised• Detailed explanation of each issue – For each issue, request must discuss each • item of information, and • aspect of the patent – If issue arises under § 101 or § 112, request must indicate support for each limitation in each claim to be examined with respect to that issue – If issue arises under § 102 or § 103, request must indicate whether each limitation in each claim to be examined with respect to that issue is or is not met by the information Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012

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