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Post-Grant Review Proceedings
- 1. Post-Grant Review Proceedings at the USPTO under the America Invents Act Kevin Laurence Stoel Rives LLP 1 Presentation by Kevin Laurence September 27, 2011, Webinar by Strafford Publications for Strafford Publications, September 28, 2011
- 2. Outline of Discussionon Post- Post- Grant Review Proceedings • Possible popularity of post-grant review (PGR) and inter partes review (IPR) proceedings • Some “nuts and bolts” of PGR • Interim (business method) proceedings • Comparison of PGR proceedings with its model, EPO oppositions • Strategy considerations for contested proceedings including reexam, PGR and IPR 2 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 3. Popularity – 3rdTime Is the Charm EPX in ’80; EPX, IPX in ’99; EPX, IPR and PGR in ‘11 5% opposed/year ?% reviewed/year 0.5% reexamined/year 3 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 4. Cooperation between Litigators andReexam/Review Counsel vs. Reexam/Review Litigators Counsel 4 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 5. Status Quo ValidityBattlefields Prior Art Other Basis (§§ 102, 103, or x2 Patenting) (§ 101,112) Printed Not Printed Publication Publication Application Application Filed Before Filed On or 11/29/99 After 11/29/99 Ex Parte Inter Partes Litigation Reexam Reexam 5 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 6. Grounds for Post-GrantReview Post- (PGR) Proceedings PGR inter partes review • Patentability challenge = same & ex parte reexam as in litigation • validity challenges – Subject matter, utility - § 101 under § 102, § 103 – Novelty - § 102 based on printed – Nonobviousness - § 103 prior art publications – Definiteness, enablement, written and based on description - § 112 double patenting – Double patenting – Not best mode 6 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 7. Grounds for Post-GrantReview Post- (PGR) Proceedings - continued • Petition may also be based on a novel or unsettled legal question that is important to other patents/ applications – Not available for IPR – Mainly redundant with grounds based on those permitted in litigation but also provides a basis for other grounds such as prosecution laches. 7 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 8. Comparison of ThresholdCriteria Proceeding Criteria to Initiate Commissioner Stoll Ex Parte Substantial new question Reexam of patentability (SNQP) More likely than not that at least one Considers this to Post-Grant challenged claim is unpatentable. require at least 51% Review chance of success. Considers this to A reasonable likelihood that the petitioner Inter Partes require only 50% would prevail with respect to at least one Review chance of success. challenged claim. (Correct?) 8 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 9. Exception to Thresholdsfor EPX, PGR and IPR - § 325(d) • A request for EPX or a petition for PGR or IPR may be rejected if “the same or substantially the same prior art or arguments have been previously presented to the Office.” 9 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 10. Availability and EffectiveDate of Review Proceedings post-grant review transitional proceeding inter partes proceeding for business methods review proceeding Not later than 9 On 2012-09-16, IPR will On 2012-09-16, months after be available for a party IPR will begin to be issuance of patent or sued for infringement. available if more broadening reissue However, see next slide than 9 months but see data regarding implications after issuance. regarding practical for a patent that is effective date on available for regular next slide. PGR. 10 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 11. Effective Date forPost-Grant Post- Review (PGR) Proceedings PGR transitional proceeding for business methods Under AIA § 6(f)(2)(A), the effective date is 2012-09-16 for a patent 2012-09-16 but AIA § 3(n)(1) limits issued before, on, or after consideration to patents with a priority date 2012-09-16. However, it is on or after 2013-03-16. So with average unavailable for 9 month pendency, a PGR proceeding will not be period when a patent is implemented until 2014-5? available for regular PGR. • PTAB will have years to benefit from simpler issues of IPR and small number of transitional proceedings before seeing PGR proceedings. 11 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 12. Avoid Paralysis fromToo Many Options for Weed Killers at the Supermarket of Post-Grant Tools Post- 12 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 13. Battlefields after PGRand IPR available Prior Art Other Basis (§§102, 103, or (§§101,112 – x2 Patenting) (best mode)) Printed Not Printed Publication Publication Inside Outside Outside Inside Initial 9-Mo. Initial 9-Mo, Initial 9-Mo, Initial 9-Mo. Window Window Window Window Ex Parte Inter Partes Post-Grant Litigation 13 Reexam Review (IPR) Review (PGR) Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 14. Post-Grant Review Estoppel Post- Another PTO Patentability Arguments Raised Review Proceeding or Reasonably Could Petition Have Raised in PGR Final Written Decision: 14 Challenge Failed Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 15. Post-Grant Review Estoppel(cont.) Post- Court or ITC Patentability Review Litigation Arguments Raised Petition or Reasonably Could Have Raised in PGR Final Written Decision: 15 Challenge Failed Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 16. Estoppel • Estoppel =“raised or reasonably could have raised” same as IPR but since PGR has broader basis the estoppel implications are greater for PGR. • What happens if Federal Circuit reverses PTAB? 16 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 17. Estoppel - continued •Like IPR, issues raised in litigation or that could have been raised in litigation can still be relied on for PGR, IPR or ex parte reexam; however, as a practical matter, losing in litigation will almost always mean that the nine-month window for PGR will have passed, the one year bar (docket a reminder) will also have passed that prevents initiation of IPR after being sued for infringement, and ex parte reexamination will be the only available option for a challenge at the PTO. 17 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 18. DJ Actions, Infringement,Automatic Stays and Preliminary Injunction • Like IPR, file DJ action on or after petitioning for review, then DJ action will be automatically stayed until owner moves to lift stay or counterclaims with infringement claim or petitioner moves for dismissal. • PGR cannot be used to stay consideration of patent owner’s motion for preliminary injunction when infringement action filed within 3 months of issuance. 18 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 19. Regulations for PRGProcedure by 2012-09-16 2012-09- Petition Preliminary Limited Response Discovery Motion to Amend Petitioner Review 3 mo. Participation? ? Oral Hearing Written YES Settlement Agreement Notice of Review 12 mo. Final Written Decision (+ 6 mo.) Response Appeal Appeal 19 Certificate Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 20. Regulations in PGR •May be modeled after the motion practice in interferences as described at 37 CFR §§ 41.100-158, referred to as Part 41, Subpart D - Contested Cases. • Discovery limited to evidence directly related to factual assertions advanced by either party • Patent owner may file one motion (joint request also): – Cancel or amend (without broadening) any challenged claim – Propose a reasonable number of substitute claims • Final determination in one year; extendible by not more than 6 months for good cause 20 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 21. Merger (Consolidation) orSuspension Factors PGR IPR EPX Analysis Threshold More likely than Reasonable SNQP Not a not that a claim is likelihood of prevail- barrier after unpatentable ing regarding a claim instituted Basis All litigation bases printed prior art publications Amendment Likely more limited than reexam resp. to Factors rejection support Discovery Limited compared to litigation None suspension of reexam Speed 12-18 months 2 years until review Organization PTAB CRU complete Settlement May Stop Proceeding No impact • Reexam requested prior to PGR or IPR is not estopped but should be suspended based on above analysis. 21 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 22. Transitional Proceeding for ChallengingBusiness Methods • “Business method patent” means “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.” 22 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 23. Challenging Business Methods under § 102 or § 103 • Challenging a patent in effect before 2013- 03-16 may be supported by: – the old version of § 102(a); or – a version of prior art that falls within § 102(a) as limited to the U.S. and an odd version of § 102(b) that refers to a “disclosure.” This version permits raising actual reductions that are known or used by others in US and public use or sale of the claimed invention in the US under the current patent law. 23 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 24. Transitional Proceedings for ChallengingBusiness Methods • Estopppel limited to just grounds that were raised. • Typical stay factors enumerated but may encourage courts to stay litigation, particularly since: – Interlocutory appeal permitted • Will sunset 8 years after effective date. 24 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 25. EPO Oppositions &Post-Grant Post- Review: Similarities Opposition Post-Grant Review Proceedings Any basis of challenge available Any basis of challenge available (except (except lack of clarity and unity) best mode) 9-month window to initiate Limited rights to make claim amendments (no broadening) oral hearings intervention after 9-month window, joinder permitted even during appeal parallel national court proceedings parallel litigation regarding infringement and regarding infringement patentability (when counterclaimed) Proceeding may continue despite settlement 25 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 26. EPO Oppositions &Post-Grant Post- Review: Differences Opposition Post-Grant Review Proceedings Straw men permitted No strawmen - real-party-in-interest must be identified 2-4 years 12 -18 months Opposition Division (3 examiners PTAB (3 administrative patent judges including one who granted patent) (APJs)) Appeals are made to the Boards of Appeals are made to the Federal Appeal; no estoppel so patent can still Circuit be revoked by national court cost = €6000-€50,000 ($8,000- cost = more than $40,000-170,000 for $70,000) inter partes reexam before appeal 26 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 27. EPO Oppositions &Post-Grant Post- Review: Differences continued. Opposition Post-Grant Review Proceedings No threshold (just state grounds, facts, Information demonstrates that it is etc) more likely than not that at least 1 claim is unpatentable No prosecution history estoppel Prosecution history estoppel 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 could have raised Claim interpretation at EPO does not Need for consistent characterizations control infringement litigation at PTO and parallel litigation 27 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 28. Kill, Wound, andMiss – What Will be the Results of PGR and IPR? U.S. EPX U.S. IPX EPO Opp’n Kill Miss Miss Miss Kill Kill Wound Wound Wound Kill = All claims cancelled Wound = Claims amended Miss = All claims confirmed 28 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 29. Speculation on Technologiesin Post- Post- Grant Review and Inter Partes Review • Cases involving information technology predominate in reexamination and can be expected to predominate in inter partes review proceedings. • Chemicals, life sciences, and mechanical inventions will be represented in post-grant review proceedings with larger percentages than in inter partes review but perhaps not as significantly as in EPO oppositions. 29 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 30. PGR Will LikelyBe Less Popular than IPR • Short window relative to IPR • Small number of conflicts that are sufficiently mature upon issuance to merit action – Especially useful for attacking a continuing patent when litigating parent. • Broader basis = broader estoppel than IPR • Systems need to be developed for identifying patents to be challenged – Like EPO system at 30 http://www.epo.org/searching/free/register-alert.html Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 31. Distinctions that Influence Outcome Factors Post-Grant Inter Partes Ex Parte Litigation Review Review Reexam Burden of Proof Clear and Preponderance of Evidence Convincing Evidence Presumption of No Yes Validity Claim scope Broadest reasonable interpretation (Suitco) Narrow construction (Phillips) Complexity and Any basis other than Many references but -Fewer references nature of attack best mode limited to printed -Any basis but best publications mode Decision maker PTAB CRU average juror 31 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 32. Factors Favoring Reexamination •Consider ex parte reexamination when: – the prior art attack is simple, particularly an attack under § 102, such that interaction with the PTO seems unnecessary, and – the specification lacks “fall-back” positions that permits amendments resulting in infringement. • Anonymity is desired. • No estoppel. 32 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 33. A Few Factorsfor Use of Review Proceedings • Complex attack under § 103 will be preferable at the PTAB relative to district court so that large number of combinations is possible • Ability to counter patent owner will encourage use of review proceedings relative to ex parte reexamination as began to occur with inter partes reexamination. • Estoppel implications improved. 33 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 34. Plenty of Timeto Get Ready for PGR, But Start Your Engines for IPR to Avoid Getting Left Behind in “Radiator Springs” When the New Route Opens 34 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 35. Further discussion iswelcome at the following LinkedIn group: Patent Reexamination & Review Practice http://www.linkedin.com/groups?gid=2785699&sh aredKey=01BEF1317D1B&trk=anetsrch_name&g oback=%2Eanh_2458260_1317025003317_1 35 Presentation by Kevin Laurence for Strafford Publications, September 28, 2011
- 36. Thank you! Kevin B. Laurence ● Stoel Rives LLP kblaurence@stoel.com 801-578- 801-578-6932 36 Presentation by Kevin Laurence Presentation by Kevin Laurence for Strafford Publications, September 28, 2011 for Strafford Publications, September 28, 2011 70906630