The document discusses three types of post-grant patent challenges available under the America Invents Act (AIA): ex parte reexamination, post-grant review, and inter partes review. Ex parte reexamination allows any party to challenge a patent based on prior art, while post-grant review and inter partes review require the petitioner to participate and have higher standards for review. Both post-grant review and inter partes review provide discovery and estoppel against future challenges if final decisions are not appealed. The document provides details on procedures, timelines, costs, and strategic considerations for each type of challenge.

1. www.usebrinks.com
Ex Parte Reexamination, Post-
Grant Review, and Inter Partes
Review Under the AIA
Craig Buschmann
February 6, 2013

2. www.usebrinks.com
Overview
 Ex Parte Reexamination
– Still Available
– Procedure and strategies
 Post Grant Review
– Limited availability until late 2015
– Procedure and strategies
 Inter Partes Review
– Available since Sept. 12, 2012
– Procedure and strategies
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Ex Parte Reexamination
 Available any time during the enforceability of the patent
 Any one may file, including the patent holder
– Anonymous petitions available, i.e., do not have to identify the
party filing the petition
 Petition and reexamination evaluated by a patent examiner
– Decision re: petition must be made within 3 months of filing
– Threshold question to initiate, “Substantial new questions of
patentability”
 Not a question raised during examination of the original
application
 Limited to prior art under 35 U.S.C. §§ 102 and 103
– Once granted no opportunity for petitioner to participate
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Ex Parte Reexamination
 Ex Parte Reexamination
– Proceeds similarly to normal examination of a patent
application
 Multiple opportunities for patent holder to amend, cancel,
and add new claims, BUT scope of claims cannot be
enlarged
– Proceeds until rejection on the merits or issue of reexamination
certificate with allowed claims
 Typically 12-18 months after grant of reexamination to final
decision
– Patent holder can appeal adverse decisions to the Patent Trial
and Appeal Board, and then to the Federal Circuit
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Ex Parte Reexamination
 Ex Parte Reexamination
– Relation to district court litigation
 No statutory estoppel in district court litigation, although it
likely is persuasive
 May run concurrently with district court litigation
– $12,000 USPTO fee plus attorney costs
 Additional fees may be necessary depending on number of
claims in the patent
 Reduced fees available for small (1/2) and micro (1/4)
entities
 Partial refund of USPTO may be available if a petition for
reexamination not granted
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Ex Parte Reexamination
 Ex Parte Reexamination
– Strategic Factors
 Prior art attack simple such that interaction with USPTO
seems unnecessary
 Specification lacks “fall-back” positions that permit narrowed
or different claims that still result in infringement
 Anonymity desired
 No statutory estoppel concerns
 Inter Partes Review only other option for most patents until
approximately 2015
– Post-Grant Review only presently available for business
method patents and eventually those patents that issue
from applications filed on or after March 16, 2013
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Post-Grant Review
 Available between issue date and 9-months after issue date
– Presently available for business method patents
 Special considerations: broader prior art, less estoppel, available
to parties presently in district ct. litigation, sunset
– Available to all patents that issue from a patent application filed
on or after March 16, 2013
 Earliest non-business method patents eligible for PG Review likely
won’t issue before the end of 2015
 Petition by non-owner to cancel claims
– No anonymity
– Petitioner can not have already filed a district court action
challenging the validity
– Patent owner may object to petition for PG Review
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Post-Grant Review
 Post-Grant Review and Inter Partes Review Timeline
– PTAB Guide
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Post-Grant Review
 Petition and PG Review determined by 3-member panel of PTAB
 Threshold question to initiate, “More likely than not” at least one
claim unpatentable OR “Novel or unsettled legal question”
– “Greater than 50% chance of prevailing” – USPTO
 Likely higher standard than Ex Parte Reexamination
– Any grounds under 35 U.S.C. §§ 102, 103, 112
 Enablement, written description, indefiniteness, anticipation, obviousness,
BUT no Best Mode challenges
 Patents and patent publications
– Once granted petitioner participates
 Proceeds under rules similar to FRCP
 Motions for relief, sanctions, settlements
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Post-Grant Review
 Discovery permitted
– Similar to FRCP discovery, albeit more limited
– Documents, affidavits, written expert testimony, live cross-
examination depositions
– Protective order available to protect confidential info as well as
motions to seal info otherwise viewable in public record
 One motion to amend/cancel claims and add substitute claims,
BUT scope of claims cannot be enlarged
– Additional motions to amend/cancel available for good cause or
upon joint motion
– Petitioner may oppose proposed amendment
 Oral hearing available
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Post-Grant Review
 Proceeds until PTAB issues written decision on patentability of
challenged and new claims OR settlement
– Lower standard to invalidate claims
 Preponderance of the evidence vs. clear and convincing
 No presumption of validity
– PTAB statutorily required to complete within 12 months after
grant of petition, with extension of 6 months for good cause
 Compare to 2 ½ year median time to trial in dist. Ct.
– If settled estoppel does not attach
 Pro-tip: Make sure this issue is resolved in the settlement agreement!
 Dissatisfied party can appeal final PTAB decision to the Federal
Circuit
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Post-Grant Review
 Relation to district court litigation
– Statutory estoppel in subsequent PTO proceeding (e.g., Ex
Parte Reexamination and Inter Partes Review) and district court
litigation and ITC litigation
 Petitioner and parties in privity - Estoppel for any ground raised or
reasonably could have been raised
 Patent owner – Estopped from taking any action inconsistent with any
adverse judgment
 Estoppel in business method cases limited only to issues raised
– If civil suit for invalidity filed by petitioner, suit automatically
stayed until:
 Patent owner moves to lift stay or files action/counterclaim asserting
infringement
 Petitioner moves to dismiss the civil action
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Post-Grant Review
 $12,000 USPTO fee plus attorney costs just for the petition
– Additional fees may be necessary depending on number of
claims in the patent
– No reduced fees presently available for small and micro entities
– Partial refund of USPTO may be available if a petition for PG
Review not granted
 $18,000 additional USPTO fee upon grant of petition for PG
Review
– Additional fees may be necessary depending on number of
claims in the patent
– No reduced fees presently available for small and micro entities
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14. www.usebrinks.com
Post-Grant Review
 Strategic Factors
– More complex prior art attack (e.g., obviousness, vagueness,
indefinite) preferable with expert PTAB judges rather than likely
non-technical dist. ct. judge
– Standard of review – preponderance of the evidence – more
favorable than dist. ct.
– Ability to counter patent owner’s arguments
– Still significantly less expensive than a lawsuit
– Ability to knock-out competitor’s patents before lawsuit/strategic
business decision
– Estoppel concerns – greater because > grounds of review
– Uncertainty/unknown process – no published numbers of post-
grant review instituted for business methods yet
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Inter Partes Review
 Available only after the later of 9-months after issue date OR the
date of termination of Post-Grant Review AND less than one year
since initiation of lawsuit alleging petitioner’s infringement (if any)
– Presently available for all patents
 Replaced Inter Partes Reexamination as of Sept. 12, 2012
 Petition by non-owner to cancel claims
– No anonymity
– Petitioner can not have already filed a district court action
challenging the validity
– Patent owner may object to petition for IP Review
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Inter Partes Review
 Petition and IP Review determined by 3-member panel of PTAB
 Threshold question to initiate, “Reasonable likelihood the petitioner
will prevail”
– “somewhat flexible standard that allows Board room to exercise
judgment” – USPTO
 Lower standard than Post Grant Review, but more stringent than Ex Parte
Reexamination standard
– Any grounds under 35 U.S.C. §§ 102 and 103
 Narrower scope of challenges than PG Review
 Patents and patent publications
– Once granted petitioner participates
 Proceeds under rules similar to FRCP
– Motions for relief, sanctions, settlements
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Inter Partes Review
 Discovery permitted
– Similar to FRCP discovery, albeit more limited
– Documents, affidavits, written expert testimony, live cross-
examination depositions
– Protective order available to protect confidential info as well as
motions to seal info otherwise viewable in public record
 One motion to amend/cancel claims and add substitute claims,
BUT scope of claims cannot be enlarged
– Additional motions to amend/cancel available for good cause or
upon joint motion
– Petitioner may oppose proposed amendment
 Oral hearing available
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18. www.usebrinks.com
Inter Partes Review
 Proceeds until PTAB issues written decision on patentability of
challenged and new claims OR settlement
– Lower standard to invalidate claims
 Preponderance of the evidence vs. clear and convincing
 No presumption of validity
– PTAB statutorily required to complete within 12 months after
grant of petition, with extension of 6 months for good cause
 Compare to 2 ½ year median time to trial in dist. Ct.
– If settled estoppel does not attach
 Pro-tip: Make sure this issue is resolved in the settlement agreement!
 Dissatisfied party can appeal final PTAB decision to the Federal
Circuit
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19. www.usebrinks.com
Inter Partes Review
 Relation to district court litigation
– Statutory estoppel in subsequent PTO proceeding (e.g., Ex
Parte Reexamination and Inter Partes Review) and district court
litigation and ITC litigation
 Petitioner and parties in privity - Estoppel for any ground raised or
reasonably could have been raised
 Patent owner – Estopped from taking any action inconsistent with any
adverse judgment
– If civil suit for invalidity filed by petitioner, suit automatically
stayed until:
 Patent owner moves to lift stay or files action/counterclaim asserting
infringement
 Petitioner moves to dismiss the civil action
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20. www.usebrinks.com
Inter Partes Review
 $9,000 USPTO fee plus attorney costs just for the petition
– Additional fees may be necessary depending on number of
claims in the patent
– No reduced fees presently available for small and micro entities
– Partial refund of USPTO may be available if a petition for IP
Review not granted
 $14,000 additional USPTO fee upon grant of petition for PG
Review
– Additional fees may be necessary depending on number of
claims in the patent
– No reduced fees presently available for small and micro entities
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21. www.usebrinks.com
Inter Partes Review
 Strategic Factors
– More complex prior art attack (e.g., obviousness) preferable
with expert PTAB judges rather than likely non-technical dist. ct.
judge
– Standard of review – preponderance of the evidence – more
favorable than dist. ct.
– Ability to counter patent owner’s arguments
– Still significantly less expensive than a lawsuit
– Ability to knock-out competitor’s patents before lawsuit/strategic
business decision
– Estoppel concerns – not as broad as PG Review, still real
– Uncertainty/unknown process– no published numbers of post-
grant review instituted for business methods yet
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Craig Buschmann
cbuschmann@brinkshofer.com
222 Main Street – Suite 1930 | Salt Lake City, UT 84101-2001 | Telephone 801.355.7900 | Fax 801.355.7901
Thank You!