This document discusses post-grant review proceedings under the America Invents Act, including:
1) Post-grant review (PGR) allows challenges to patent claims on any validity grounds within 9 months of a patent grant, while inter partes review (IPR) allows challenges based on printed prior art.
2) PGR regulations will be finalized by September 2016 and allow amendments, discovery, and oral hearings over 12-18 months. IPR has a lower threshold for initiation.
3) PGR may be less popular than IPR due to its shorter window, broader estoppel, and need to identify ripe patents for challenge like the EPO system. PGR outcomes will influence parallel litigation.
CIPA Presentation - Comparative Overivew of U.S. Post-Grant Patent Practicekblaurence
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
KIPO/KIPA Presentation: Direct Infringement (2010)Antigone Peyton
A basic overview of the U.S. patent law standards for direct infringement of a patent and a case study I’ve used to walk through those standards. This presentation was prepared for the Korean Intellectual Property Office and Korean Invention Promotion Association 2010 training program in Washington, DC.
For additional information on this presentation, please contact Antigone Peyton (antigone.peyton@cloudigylaw.com).
This presentation addresses the why, what, and how to protect inventions from the vantage point of the early-stage, pre-financing, start-up company that is interested in patenting its inventions and developing an intellectual property portfolio that maximizes the company's valuation and sets it up for success during the intellectual property due diligence that accompanies financing rounds, corporate partnerships, commercialization, and merger and acquisition.
Biotechnology Patents: Disclosure Requirements under 35 USC 112. Discusses case law development of the enablement and written description requirements from In re Wright (Fed. Cir. 1993) through Ariad Pharmaceuticals v. Eli Lilly (Fed. Cir. 2010), including the origin of the "super enablement" requirement in Regents of the University of California v. Eli Lilly (Fed. Cir. 1997), the thought provoking dissent by Chief Judge Rader in Enzo Biochem v. Gen-Probe (Fed. Cir. 2002), the paradoxical "nascent technology" holding in Chiron v. Genentech (Fed. Cir. 2004), and the risks of relying on functional claim language from Rochester v. Searle (Fed. Cir. 2004). Practice tips are provided for avoiding the pitfalls in patent and claim drafting in view of these seminal cases.
Biotechnology Patents: Utility and eligibility requirements under 35 USC 101. This presentation follows the historical development of the utility requirement from the early 19th century case Lowell v. Lewis (MA 1817), the origin of the specific, substantial, and credible standard for a patent disclosure from Brenner v. Manson (SCOTUS 1966), and the modern application of the Brenner standard for biotechnology patents in In re Fisher (Fed. Cir. 2005). Biotechnology eligibility requirements are discussed from the early Supreme Court case Funk Brothers v. Kalo, the seminal biotechnology Supreme Court case Diamond v. Chakrabarty (SCOTUS 1980) where the court holds that statutory subject matter includes "anything under the sun that is made by man," through the recent Supreme Court decision in Myriad v. ACLU (SCOTUS 2013) where the court held that diagnostic method claims and nucleic acid claims that read on products of nature are patent inelibible. Practice tips are provided to ensure that patent claims avoid the exceptions of 35 USC 101 and withstand scrutiny during litigation and business transactions, such as licensing.
CIPA Presentation - Comparative Overivew of U.S. Post-Grant Patent Practicekblaurence
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
KIPO/KIPA Presentation: Direct Infringement (2010)Antigone Peyton
A basic overview of the U.S. patent law standards for direct infringement of a patent and a case study I’ve used to walk through those standards. This presentation was prepared for the Korean Intellectual Property Office and Korean Invention Promotion Association 2010 training program in Washington, DC.
For additional information on this presentation, please contact Antigone Peyton (antigone.peyton@cloudigylaw.com).
This presentation addresses the why, what, and how to protect inventions from the vantage point of the early-stage, pre-financing, start-up company that is interested in patenting its inventions and developing an intellectual property portfolio that maximizes the company's valuation and sets it up for success during the intellectual property due diligence that accompanies financing rounds, corporate partnerships, commercialization, and merger and acquisition.
Biotechnology Patents: Disclosure Requirements under 35 USC 112. Discusses case law development of the enablement and written description requirements from In re Wright (Fed. Cir. 1993) through Ariad Pharmaceuticals v. Eli Lilly (Fed. Cir. 2010), including the origin of the "super enablement" requirement in Regents of the University of California v. Eli Lilly (Fed. Cir. 1997), the thought provoking dissent by Chief Judge Rader in Enzo Biochem v. Gen-Probe (Fed. Cir. 2002), the paradoxical "nascent technology" holding in Chiron v. Genentech (Fed. Cir. 2004), and the risks of relying on functional claim language from Rochester v. Searle (Fed. Cir. 2004). Practice tips are provided for avoiding the pitfalls in patent and claim drafting in view of these seminal cases.
Biotechnology Patents: Utility and eligibility requirements under 35 USC 101. This presentation follows the historical development of the utility requirement from the early 19th century case Lowell v. Lewis (MA 1817), the origin of the specific, substantial, and credible standard for a patent disclosure from Brenner v. Manson (SCOTUS 1966), and the modern application of the Brenner standard for biotechnology patents in In re Fisher (Fed. Cir. 2005). Biotechnology eligibility requirements are discussed from the early Supreme Court case Funk Brothers v. Kalo, the seminal biotechnology Supreme Court case Diamond v. Chakrabarty (SCOTUS 1980) where the court holds that statutory subject matter includes "anything under the sun that is made by man," through the recent Supreme Court decision in Myriad v. ACLU (SCOTUS 2013) where the court held that diagnostic method claims and nucleic acid claims that read on products of nature are patent inelibible. Practice tips are provided to ensure that patent claims avoid the exceptions of 35 USC 101 and withstand scrutiny during litigation and business transactions, such as licensing.
Maximizing Pharmaceutical Patent Life Cycles: Strategies to Avoid Obviousness...Rachel Hamilton
For over a decade, American Conference Institute’s (ACI’s) Maximizing Pharmaceutical Patent Life Cycles and Biotech Patents conferences have brought you up-to –the minute legal, regulatory, and policy information concerning small and large molecule drug products. In deference to the legacy of these iconic events and your revered opinion, ACI proudly presents this new program on Pharmaceutical and Biotechnology Patent Life Cycles and Portfolio Strategies. This conference will give you a comprehensive and thorough picture of how small and large molecule products—as well as diagnostics—operate in a world not only governed by PTO and FDA-related laws and regulations, but also against the backdrop of Hatch-Waxman, BPCIA, iconoclast Supreme Court decisions affecting the future life sciences IP, and Health Care Reform. Our stellar faculty will provide you with insights and strategies relative to life cycle management, portfolio strategies, brand optimization and new product development as well as the thoughtful and targeted commentary and in-depth analysis that you have come to expect from ACI’s industry-leading life sciences IP conferences.
This presentation discusses the historical context for the recent court decisions that affect the patent eligibility of biotechnology inventions, including those directed to genes, cDNAs, proteins, antibodies, and diagnostic methods. Discussed are the early Funk Brothers and Chakrabarty decisions as well as the Lab Corp, Bilski, Prometheus, Classen, and Myriad court opinions. The impact of the court holdings on the future development of biotechnology inventions, in particular personalized medicine inventions, is analyzed as is the erosion of the requisite incentives of innovative companies to invent and commercialize in areas where patent protection is less certain.
The second breakout session was directed to attendees in the information technology (IT) and biotechnology sectors, with discussion about the recent Alice v. CLS Bank Supreme Court decision.
July’s practice group lunch included an overview of recent decisions, the Court of Appeals for the Federal Circuit, and the United States Supreme Court. The Supreme Court addressed a number of patent law topics this year, including the standard of review for patent claim construction (Teva Pharmaceuticals v. Sandoz), royalties on expired patents (Kimble v. Marvel Enterprises), and defenses to claims of induced infringement (Commil v. Cisco). The initial wave of appeals in post-issuance proceedings provided by the America Invents Act are now being decided by the Federal Circuit. These include cases involving whether the decision to institute is reviewable (In re Cuozzo Speed Technologies) and discussion of the claim construction standards that apply (Microsoft v. Proxyconn). The relationship between administrative challenges and related litigation is also an evolving area (ePlus v. Lawson Software).
Monoclonal Antibodies Dawn Of A New EraWouter Pors
Seminar on IP and regulatory aspects, Brussels, 7 June 2012, speakers Michael Alt, Trevor Cook, Liz Fuller, Marc Martens (Bird & Bird) and Frank Landolt (Ablynx)
This analysis shows how IP, regulatory, and marketing strategy have to interfere for maximizing the lifetime of IP protection in pharmaceuticals. In contrast to mechanical inventions you can use special aspects of chemical /pharmaceutical patents like medical use or SPCs and PTE or variations in formulation to optimize your product protection. Using the example of an active ingredient it is shown how filing strategy, product development and finally IP life cycle management can be combined to achieve the maximum market success.
Our presentation for Pharma Sector.
Problem statement: You are Pfizer and your major blockbuster drug, Lipitor ($12 bn in sales in 2008, ~20% of your total revenue), is going off-patent in 2011. A decline in the sales of Lipitor is inevitable and you are looking to make a major move into emerging economies where growth in pharma sales is the highest. How would you go about doing this?
The course covers the following topics:
* General Intro to IP Rights
* Patenting Timeline and Costs
* The Patent Description
* Approaches to Claim Drafting
Part of the MaRS Best Practices Event Series. For more information, please visit: http://www.marsdd.com/Events/Event-Calendar/Best-Practices-Series/patents-05072009.html
Maximizing Pharmaceutical Patent Life Cycles: Strategies to Avoid Obviousness...Rachel Hamilton
For over a decade, American Conference Institute’s (ACI’s) Maximizing Pharmaceutical Patent Life Cycles and Biotech Patents conferences have brought you up-to –the minute legal, regulatory, and policy information concerning small and large molecule drug products. In deference to the legacy of these iconic events and your revered opinion, ACI proudly presents this new program on Pharmaceutical and Biotechnology Patent Life Cycles and Portfolio Strategies. This conference will give you a comprehensive and thorough picture of how small and large molecule products—as well as diagnostics—operate in a world not only governed by PTO and FDA-related laws and regulations, but also against the backdrop of Hatch-Waxman, BPCIA, iconoclast Supreme Court decisions affecting the future life sciences IP, and Health Care Reform. Our stellar faculty will provide you with insights and strategies relative to life cycle management, portfolio strategies, brand optimization and new product development as well as the thoughtful and targeted commentary and in-depth analysis that you have come to expect from ACI’s industry-leading life sciences IP conferences.
This presentation discusses the historical context for the recent court decisions that affect the patent eligibility of biotechnology inventions, including those directed to genes, cDNAs, proteins, antibodies, and diagnostic methods. Discussed are the early Funk Brothers and Chakrabarty decisions as well as the Lab Corp, Bilski, Prometheus, Classen, and Myriad court opinions. The impact of the court holdings on the future development of biotechnology inventions, in particular personalized medicine inventions, is analyzed as is the erosion of the requisite incentives of innovative companies to invent and commercialize in areas where patent protection is less certain.
The second breakout session was directed to attendees in the information technology (IT) and biotechnology sectors, with discussion about the recent Alice v. CLS Bank Supreme Court decision.
July’s practice group lunch included an overview of recent decisions, the Court of Appeals for the Federal Circuit, and the United States Supreme Court. The Supreme Court addressed a number of patent law topics this year, including the standard of review for patent claim construction (Teva Pharmaceuticals v. Sandoz), royalties on expired patents (Kimble v. Marvel Enterprises), and defenses to claims of induced infringement (Commil v. Cisco). The initial wave of appeals in post-issuance proceedings provided by the America Invents Act are now being decided by the Federal Circuit. These include cases involving whether the decision to institute is reviewable (In re Cuozzo Speed Technologies) and discussion of the claim construction standards that apply (Microsoft v. Proxyconn). The relationship between administrative challenges and related litigation is also an evolving area (ePlus v. Lawson Software).
Monoclonal Antibodies Dawn Of A New EraWouter Pors
Seminar on IP and regulatory aspects, Brussels, 7 June 2012, speakers Michael Alt, Trevor Cook, Liz Fuller, Marc Martens (Bird & Bird) and Frank Landolt (Ablynx)
This analysis shows how IP, regulatory, and marketing strategy have to interfere for maximizing the lifetime of IP protection in pharmaceuticals. In contrast to mechanical inventions you can use special aspects of chemical /pharmaceutical patents like medical use or SPCs and PTE or variations in formulation to optimize your product protection. Using the example of an active ingredient it is shown how filing strategy, product development and finally IP life cycle management can be combined to achieve the maximum market success.
Our presentation for Pharma Sector.
Problem statement: You are Pfizer and your major blockbuster drug, Lipitor ($12 bn in sales in 2008, ~20% of your total revenue), is going off-patent in 2011. A decline in the sales of Lipitor is inevitable and you are looking to make a major move into emerging economies where growth in pharma sales is the highest. How would you go about doing this?
The course covers the following topics:
* General Intro to IP Rights
* Patenting Timeline and Costs
* The Patent Description
* Approaches to Claim Drafting
Part of the MaRS Best Practices Event Series. For more information, please visit: http://www.marsdd.com/Events/Event-Calendar/Best-Practices-Series/patents-05072009.html
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 Discussion on 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 – 3rd Time 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
and Reexam/Review Counsel
vs.
Reexam/Review Litigators
Counsel
4
Presentation by Kevin Laurence
for Strafford Publications, September 28, 2011
5. Status Quo Validity Battlefields
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-Grant Review
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-Grant Review
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 Threshold Criteria
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 Thresholds for
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 Effective Date
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 for Post-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 from Too 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 PGR and 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 PRG Procedure 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) or Suspension
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
Challenging Business 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
Challenging Business 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, and Miss – 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 Technologies in 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 Likely Be 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 Factors for 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 Time to 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 is welcome 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