Post Issuance Inter Partes Disputes:                                       What you need to know                          ...
Topics    • AIA’s changes to post-issuance disputes (third party      challenges to issued patents)           – What stays...
Changes to Post-Issuance Disputes    • Before AIA                                                 • After AIA    • Inter P...
Statutory Requirements for PGR and IPR    Proceeding                   Petitioner                      Available         S...
Statutory Requirements for PGR and IPR      Proceeding                      Applicable                        Estoppel    ...
Trial Proceedings    • As Vice Chief APJ Moore has stated, “This is not      prosecution.”    • USPTO Patent Trial and App...
USPTO Trial Rules                Inter Partes Review                               Post-Grant Review                §§ 41....
Umbrella Trial Rules    • Must conclude within 12 months of initiation (18      months for good cause)    • Discovery    •...
Trial Proceedings Timeline                                                 PO     Petitioner          PO                  ...
Trial Proceedings Timeline                                                 PO     Petitioner          PO                  ...
Petition    •    Contents:           – Challenge of claims (including claim construction)           – Supporting evidence ...
Trial Proceedings Timeline                                                 PO     Petitioner          PO                  ...
Preliminary Response    •    Not required for Patent Owner to respond    •    Contents:           – Supporting evidence (t...
Trial Proceedings Timeline                                                 PO     Petitioner          PO                  ...
PTAB Decision to Institute Trial    •    Decision           – Claim-by-claim and Ground-by-ground           – “Sufficient ...
Within 1 Month of PTAB Decision    •    Scheduling Conference:           – Parties agree on Scheduling Order (can differ f...
Trial Proceedings Timeline                                                 PO     Petitioner          PO                  ...
Discovery    •    Automatic           – Agreed-upon mandatory initial disclosures    •    Routine           – Document cit...
Discovery continued    •    Additional           – As agreed upon by parties           – No agreement: by motion: “interes...
Trial Proceedings Timeline                                                 PO     Petitioner          PO                  ...
Patent Owner Response    •    Response Contents:           – Can rebut any grounds for challenging claims (including      ...
Trial Proceedings Timeline                                                 PO     Petitioner          PO                  ...
Petitioner Reply/Patent Owner Reply    Petitioner Reply    •    Oppose proposed amendments by Patent Owner    •    Rebut P...
Trial Proceedings Timeline                                                 PO     Petitioner          PO                  ...
Observations, Motions, Oral Hearing    Observations and Motions    •    Motions to exclude evidence filed; oppositions to ...
12790 El Camino RealKerry Taylor   San Diego, California 92130               Kerry.Taylor@knobbe.com
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Post Issuance Inter Partes Disputes: What You Need to Know

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Knobbe attorneys presented "Post Issuance Inter Partes Disputes" at a recent seminar held in Japan. The topics for this presentation are: AIA's changes to post-issuance disputes (third party challenges to issued patents); practice and procedure; and how do the new proceedings operate?

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Post Issuance Inter Partes Disputes: What You Need to Know

  1. 1. Post Issuance Inter Partes Disputes: What you need to know Kerry Taylor October 19, 2012 TokyoThe recipient may only view this work. No other right or license is granted.
  2. 2. Topics • AIA’s changes to post-issuance disputes (third party challenges to issued patents) – What stays the same and what is new? • Practice and procedure – Trial proceedings overview – Strategies and considerations • How do the new proceedings operate?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2
  3. 3. Changes to Post-Issuance Disputes • Before AIA • After AIA • Inter Partes Reexam • Post-Grant Review • Ex Parte Reexam • Transitional Program for Covered Business • Interferences Method Patents • Inter Partes Review • Ex Parte Reexam • Derivation Proceedings • Interferences (Legacy)© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3
  4. 4. Statutory Requirements for PGR and IPR Proceeding Petitioner Available Standard Basis Post • Not the patent owner and has From patent More likely than grant to 9 months not 101, 102, 103, 112, Grant not previously from patent grant double Review filed a civil action or reissue OR patenting but not best (PGR) challenging Novel or mode the validity of unsettled legal the patent question Inter • Must identify The later of: (i) 9 months after Reasonable likelihood 102 and 103 based on Partes real party in interest patent grant; or (“lower patents and Review (ii) termination of any post grant threshold” “somewhat printed publications (IPR) review of the flexible”) patent© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4
  5. 5. Statutory Requirements for PGR and IPR Proceeding Applicable Estoppel Timing Post Patent issued under first-inventor-to-file • Raised or reasonably could Must be completed within 12 months Grant have raised from institution, with Review • Applied to 6 months good cause exception possible (PGR) subsequent USPTO/district court/ITC action Inter Any patent • Note: Covered Partes Business Methods Review standard: only raised, not (IPR) reasonably could have raised© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5
  6. 6. Trial Proceedings • As Vice Chief APJ Moore has stated, “This is not prosecution.” • USPTO Patent Trial and Appeal Board – Trial section views itself as a litigation tribunal – Appeal section focuses on ex parte appeals from examination • Current interference rules will provide basis for new procedural rules for all USPTO Inter Partes proceedings© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 6
  7. 7. USPTO Trial Rules Inter Partes Review Post-Grant Review §§ 41.100 – 42.123 §§ 42.200 – 42.224 Umbrella Trial Rules §§ 42.1 – 42.80 Covered Business Method Derivation Proceedings Patent Review §§ 42.400 – 42.412 §§ 42.300 – 42.304© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7
  8. 8. Umbrella Trial Rules • Must conclude within 12 months of initiation (18 months for good cause) • Discovery • Motion practice • Protective orders • Settlement© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8
  9. 9. Trial Proceedings Timeline PO Petitioner PO discovery discovery discovery period period period Petitioner PO reply response PO to PO’s to decision PO Oral WrittenPetition prelim. Decision response reply hearing decision response motion opp’n to to amend motion 3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo. Trial begins ≤ 1 year© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9
  10. 10. Trial Proceedings Timeline PO Petitioner PO discovery discovery discovery period period period Petitioner PO reply response PO to PO’s to decision PO Oral WrittenPetition prelim. Decision response reply hearing decision response motion opp’n to to amend motion 3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo. Trial begins ≤ 1 year© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 10
  11. 11. Petition • Contents: – Challenge of claims (including claim construction) – Supporting evidence (references, declarations) – Should be as complete as possible • Cost: – PGR: $35.8 k ($800 per claim over 20) – IPR: $27.2 k ($600 per claim over 20)© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 11
  12. 12. Trial Proceedings Timeline PO Petitioner PO discovery discovery discovery period period period Petitioner PO reply response PO to PO’s to decision PO Oral WrittenPetition prelim. Decision response reply hearing decision response motion opp’n to to amend motion 3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo. Trial begins ≤ 1 year© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 12
  13. 13. Preliminary Response • Not required for Patent Owner to respond • Contents: – Supporting evidence (typically no declarations) • Due 3 months after Petition filing date • Also due at this time: – Agreed-upon mandatory initial disclosures (e.g., relied upon documents, identity of declarants) • Other possible procedures – Discovery relating to standing – PTAB may already rule to dismiss all or part of Petition© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 13
  14. 14. Trial Proceedings Timeline PO Petitioner PO discovery discovery discovery period period period Petitioner PO reply response PO to PO’s to decision PO Oral WrittenPetition prelim. Decision response reply hearing decision response motion opp’n to to amend motion 3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo. Trial begins ≤ 1 year© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 14
  15. 15. PTAB Decision to Institute Trial • Decision – Claim-by-claim and Ground-by-ground – “Sufficient notice” explaining PTAB’s reason for instituting • Request for reconsideration can be made by either party (timing varies) • Also includes default Scheduling Order • Discovery begins (typically Patent Owner discovery at this point)© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15
  16. 16. Within 1 Month of PTAB Decision • Scheduling Conference: – Parties agree on Scheduling Order (can differ from default, but PTAB will likely reserve 2-3 months after Oral Hearing for Written Decision) – Parties agree on Discovery • Patent Owner proposes number of substitute claims • Petitioner can provide Supplemental Information© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 16
  17. 17. Trial Proceedings Timeline PO Petitioner PO discovery discovery discovery period period period Petitioner PO reply response PO to PO’s to decision PO Oral WrittenPetition prelim. Decision response reply hearing decision response motion opp’n to to amend motion 3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo. Trial begins ≤ 1 year© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 17
  18. 18. Discovery • Automatic – Agreed-upon mandatory initial disclosures • Routine – Document cited in paper or testimony – Cross examination of declarant – Relevant information inconsistent with a position advanced© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18
  19. 19. Discovery continued • Additional – As agreed upon by parties – No agreement: by motion: “interests of justice” • Compelled testimony or production – By motion (typically granted) – Non-parties to proceedings • Motion practice: authorization required (typically in conference call)© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 19
  20. 20. Trial Proceedings Timeline PO Petitioner PO discovery discovery discovery period period period Petitioner PO reply response PO to PO’s to decision PO Oral WrittenPetition prelim. Decision response reply hearing decision response motion opp’n to to amend motion 3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo. Trial begins ≤ 1 year© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 20
  21. 21. Patent Owner Response • Response Contents: – Can rebut any grounds for challenging claims (including claim construction) – Supporting evidence (references, declarations) • Also due: Motion to amend – Total number of claims: “reasonable number” (generally one substitute claim per challenged claim) – Typically this is the only opportunity to amend • Petitioner discovery begins© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 21
  22. 22. Trial Proceedings Timeline PO Petitioner PO discovery discovery discovery period period period Petitioner PO reply response PO to PO’s to decision PO Oral WrittenPetition prelim. Decision response reply hearing decision response motion opp’n to to amend motion 3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo. Trial begins ≤ 1 year© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 22
  23. 23. Petitioner Reply/Patent Owner Reply Petitioner Reply • Oppose proposed amendments by Patent Owner • Rebut Patent Owner’s arguments – Limit to new evidence that can be submitted (rebuttal) • Patent Owner additional discovery Patent Owner Reply • Rebut Petitioner’s evidence • Typically will close discovery© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 23
  24. 24. Trial Proceedings Timeline PO Petitioner PO discovery discovery discovery period period period Petitioner PO reply response PO to PO’s to decision PO Oral WrittenPetition prelim. Decision response reply hearing decision response motion opp’n to to amend motion 3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo. Trial begins ≤ 1 year© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 24
  25. 25. Observations, Motions, Oral Hearing Observations and Motions • Motions to exclude evidence filed; oppositions to motions filed • Observations filed (brief comments regarding evidence such as cross-examination transcripts) Oral Hearing • Available upon request • Typically closes most activities by the parties© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 25
  26. 26. 12790 El Camino RealKerry Taylor San Diego, California 92130 Kerry.Taylor@knobbe.com

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