This document summarizes the key differences between the three main post-grant review procedures available at the USPTO: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method (CBM) review. It outlines who can file each type of petition, the applicable validity grounds and standards, estoppel effects, and timelines. The document also provides an overview of the IPR process, including strategies for petitioners and patent owners, and considerations regarding expert testimony, motions to stay litigation, and evaluating claims to challenge.

1. Inter Partes Review
of Patents
Richard P. Beem
Beem Patent Law Firm
www.BeemLaw.com
Chicago, IL US
© Beem Patent Law 2015
Permission is granted to reproduce with attribution
1
Chicago Bar Association
Intellectual Property Law Committee
March 24, 2015

2. What is PTAB?
• Patent Trial and Appeal Board
• Instituted as a result of AIA
• Formerly, BPAI – Board of Patent Appeals and
Interferences
• Appeals from patent prosecution
• Post Grant Procedures
• Chief judge, lead judges
• PTAB webpage: www.uspto.gov/patents-application-process/patent-
trial-and-appeal-board-0
2

3. Post-Grant Procedures
• Post-Grant Procedures
• Post Grant Review (PGR)
• Inter Partes Review (IPR)
• Covered Business Method (CBM)
• IPR is most popular of post-grant procedures
3

4. Major Differences between IPR, PGR, and CBM
Post Grant
Procedure
Petitioner Estoppel Standard Basis
Post Grant Review
(PGR)
• Person who is not the patent
owner and has not previously
filed a civil action challenging
the validity of a claim of the
patent
• Must identify all real parties in
interest
• Raised or reasonably
could have raised
• Applied to subsequent
USPTO/district court/ITC
action
More likely than not
OR
Novel or unsettled legal
question important to other
patents/
applications
101, 102, 103, 112,
double patenting
but not best mode
Inter Partes
Review (IPR)
• Person who is not the patent
owner, has not previously filed
a civil action challenging the
validity of a claim of the
patent, and has not been
served with a complaint
alleging infringement of the
patent more than 1 year prior
(exception for joinder)
• Must identify all real parties in
interest
• Raised or reasonably
could have raised
• Applied to subsequent
USPTO/district court/ITC
action
Reasonable likelihood 102 and 103 based
on patents and
printed publications
Covered Business
Method (CBM)
• Must be sued or charged with
infringement
• Financial product or service
• Excludes technological
inventions
• Must identify all real parties in
interest
• Office—raised or
reasonably could have
raised
• Court-raised
Same as PGR Same as PGR (some
102 differences)
4Source: USPTO

5. Major Differences between IPR, PGR, and CBM
Post Grant Procedure Petitioner
Post Grant Review (PGR) • Person who is not the patent owner and has not previously filed a
civil action challenging the validity of a claim of the patent
• Must identify all real parties in interest
• Must be filed within 9 months of issue date
Inter Partes Review (IPR) • Person who is not the patent owner, has not previously filed a civil
action challenging the validity of a claim of the patent, and has
not been served with a complaint alleging infringement of the
patent more than 1 year prior (exception for joinder)
• Must identify all real parties in interest
• Cannot be filed until 9 months after issue date
• Must await decision on any pending PGR petition
Covered Business Method
(CBM)
• Must be sued or charged with infringement
• Financial product or service
• Excludes technological inventions
• Must identify all real parties in interest
5Source: USPTO

6. Major Differences between IPR, PGR, and CBM
Post Grant
Procedure
Estoppel Standard Basis
Post Grant Review
(PGR)
• Raised or reasonably
could have raised
• Applied to subsequent
USPTO/district court/ITC
action
More likely than not
OR
Novel or unsettled legal
question important to other
patents/applications
101, 102, 103, 112,
double patenting
but not best mode
Inter Partes
Review (IPR)
• Raised or reasonably
could have raised
• Applied to subsequent
USPTO/district court/ITC
action
Reasonable likelihood 102 and 103 based
on patents and
printed publications
Covered Business
Method (CBM)
• Office—raised or
reasonably could have
raised
• Court—raised
Same as PGR Same as PGR
(some 102
differences)
6Source: USPTO

7. Why Inter Partes Review?
• Because district court litigation is expensive
• Similar to European invalidation procedures
• Faster, cheaper decision
• District courts aren’t technical
7

8. When to Use Inter Partes Review?
• File promptly if sued for patent infringement
• Requirements: timing
• Petition for IPR will be barred if it is “filed more than 1 year after
the date on which the petitioner, real party in interest, or privy of
the petitioner is served with a complaint alleging infringement of
the patent.” 35 U.S.C. §315(b)
• Cannot be filed until 9 months after issue date
• Must await decision on any pending PGR petition
• Can’t file civil action for D.J. of invalidity in D.Ct. 35 U.S.C. §315(a)
• Limited to §§102, 103 based on patents and printed publications 35
U.S.C. §311(b)
• Decision: roughly 18 months
8

9. IPR Procedure
• Petition
• Preliminary response optional
• Institution (90% of petitions result in trial being
instituted)
• Discovery
• Motion practice: must arrange telecon to get permission
to file motion; often decided on the spot without a
motion
9

10. Inter Partes Review Timeline
10Source: USPTO

11. 3 months
Petition
Filed
No More than
3 months
PO
Preliminary
Response
(optional)
3 months
Decision on
Petition
11

12. 12
3
months
Decision on
Petition
3
months
PO Response
& Motion to
Amend
Claims
Petitioner Reply
to PO Response
& Opposition to
Amendment
PO Discovery PeriodPetitioner Discovery PeriodPO Discovery Period
No more than 12 months for discovery

13. 13
1 month
Petitioner
Reply to PO
Response &
Opposition to
Amendment
Hearing
Set on
Request
PO Reply to
Opposition
to
Amendment
Oral
Hearing
Final
Written
Decision
Period for Observations
& Motions to Exclude
Evidence
PO Discovery Period
No more than 12 months for discovery

14. IPR Petitions
• The petition is your
entire case-in-chief
• Support it with expert
testimony (evidence) in the
form of a declaration
• Page limit and formatting
requirements (37 C.F.R. 42)
• Review Request fee and
Post-Institution fee upfront
($23,000+)
Fee Code Fee Description Amount
1406 IPR review request fee–
up to 20 claims
$9,000
1414 IPR review post-
institution fee–up to 15
claims
$14,000
1407 IPR review request in
excess of 20
$200/claim
1415 IPR post-institution
request in excess of 15
$400/claim
14

15. IPR Petitioners:
Your petition is your day in court.
• This is not notice pleading
• Make your petition tight
• Present best arguments only
• Make it complete
15

16. IPR Petition Length and Format
• 60 page limit
• 14 pt. font, double spaced
• No arguments in claim chart
• Intended to prevent circumvention of page/font/spacing
requirements
• Assertions on knowledge of one of ordinary skill may be
objectionable as argument
16

17. IPR Petitions
• How do you know what claims to challenge?
• What if there are 162 claims?
• Most cases do not dispose of all claims
17

18. IPR Petitions Terminated by January 15, 2015
• 20,206 Claims in 617 Patents Petitioned
• 9,048 Claims Challenged
• 6,114 Claims Instituted
• 68% of Claims Challenged
• 425 of 617 Petitions
• 2,176 Claims Found Unpatentable
• 36% of Claims Instituted
• 24% of Claims Challenged
• 173 of 617 Petitions
18Source: USPTO

19. Grounds Must Not be Redundant (I)
• Take your best shot with one §102 or two §103 prior art
references—patents or publications
• A “publication” is theoretically available but often it
won’t be sufficiently complete
• Not public use—that will have to wait for D.Ct.
• Must not be redundant (hundreds of grounds were
advanced, PTAB said cut it down, or when we get to
first redundant ground, we’re stopping)
• Claim construction
19

20. Grounds Must Not be Redundant (II)
• Note: decisions often include little analysis to support
the redundancy conclusion.
• Permobil v. Pride Mobility Products, IPR2013-00407
• Instituted review based on 2 of 13 combinations of prior art.
• Denied petitioner's proposed alternate grounds as redundant
20

21. Decision Points for Patent Owner
• Think twice before filing infringement suit – expect IPR
• Get started immediately, including getting experts onboard
• Preliminary response is optional and cannot include expert
evidence
• Pros and cons of filing prelim response
• If instituted, PO may take discovery and file response
• Support with expert testimony
• Motion to amend claims permitted
• First must confer with Board
• Likelihood: fuhgeddaboutit
21

22. Experts
• Why an expert? Because that’s evidence.
• Monsanto Company v. Pioneer Hi-Bred International, Inc., IPR2013-00022
• Monsanto’s expert testimony not considered because conclusory. Left only attorney
argument and prior art. Denied Monsanto’s petition.
• Not submitting expert testimony makes Board more likely to find in favor of opposing
expert.
• But see
• Biodelivery Sciences Int'l, Inc., Petitioner, IPR2014-00325.
• PTAB expects affidavits/declarations of experts (in complex cases).
• However, “expert testimony is not a per se requirement.”
• Primera Tech., Inc., Petitioner, IPR2013-00196
• PTAB “reject[s] the notion that the failure to present expert testimony on a position presented in a
petition necessarily compels us to ignore or excuse that position.”
22

23. Motions to Stay—District Court
• Accused infringer: File motion to stay?
• When to file motion to stay (timing of IPR)?
• What if District Court refuses to stay?
23

24. Treatment of AIA’s four-factor test for stay:
• File motion early, perhaps before PTAB issues decision on whether to institute IPR
• Including all asserted patent claims in instituted IPR proceeding weighs heavily in
favor of stay
• Can no longer successfully argue that stay should be denied because IPR will likely
not result in finding of invalidity. Improper collateral attack.
• Motion to amend patent claims in IPR weighs in favor of stay because potentially
changing claim language may complicate claim construction if stay is not granted.
• Failure of patentee to seek preliminary injunction weighs in favor of stay because its
goes against argument that patentee will be prejudiced without stay
• delay by patentee in filing suit weighs in favor of stay because it also weighs against
prejudice absent stay
• Alleged loss of evidence due to witnesses’ ages will not be given much weight
—VirtualAgility Inc. v. Salesforce.com, Inc., No. 2014-1232
24

25. Settlement and Termination of IPR (I)
• Settlement
• Mediation – private
• Requires board approval
• Termination not automatic
• How: request phone conference, get permission to file
motion, state why PTAB should dismiss after finding
good grounds to institute
• What must be filed on the record
25

26. Settlement and Termination of IPR (II)
• Settlement does not guarantee termination of proceeding. Section 317 provides that “Office
may terminate the review or proceed to a final written decision under section 318(a).”
• Less inclined to terminate when settlement occurs at an advanced stage. Settle early and
before final briefings are filed
• Blackberry Corp. v. Mobilemedia Ideas, IPR2013-00016
• Declined to terminate when parties filed joint motion to terminate seven months after institution and one day before
oral hearing
• Blackberry v. MobileMedia, IPR2013-00036
• Declined to terminate when the parties fully briefed issues and oral hearing had already taken place
• But see
• IBM Corp. v. Financial Systems Technology, IPR2013-00078
• Agreed to terminate proceedings settled during petition stage.
• Hitachi Cable America Inc. v. Belden Inc., IPR2013-00408
• Agreed to terminate proceedings settled within first few months of trial.
• Sony Corp. v. Tessera, Inc., IPR2012-00033
• Agreed to terminate proceedings ten days before oral argument.
26

27. Terms of Art in IPRs
• Petition (want to have all ducks in a row – this is your
whole case!)
• Institute Trial (paper record! Not what we normally
think of).
• Oral Hearing (judges are well prepared; come into it
with a tentative decision).
27

28. Key Learnings and Take-Aways
• On timeline, at minus 2-3-5 years, file better, more thorough
patent applications after good prior art search; make sure claims
distinguish over prior art
• Aim for IPR-proof patents
• IPR may not dispose of all issues
• IPR petitioner: your petition is your trial present your entire best
case-in-chief including written expert testimony in form of
declaration and claim charts with one or two best prior art
references
• For both parties: thorough preparation with expert support is
key; start early and allow plenty of time
• District Court infringement litigation has cooled
• An IPR-proved patent is golden (estoppel – yet TBD)
28

29. Questions?
© Beem Patent Law 2015 29

30. Thank you!
© Beem Patent Law 2015 30
Richard P. Beem
Beem Patent Law Firm
www.BeemLaw.com
Presentation (subject to revisions) is intended to be posted on SlideShare:
www.slideshare.net/RichardBeem
Visit our blog, Beem on Patents, for additional updates and information on patent law and
IPRs: www.beemonpatents.com