Speeding Up Invalidity

Speeding It Up atthe USPTO

July 2013

July 23, 2013

Speeding Up Invalidity

Patent Office Invalidity Proceedings

• Post-Grant Review (PGR)

• Inter Partes Review (IPR)

• Covered Business Method Review (CBM)

• (Derivation Proceedings– not going to discuss)

Patent Office Invalidity Proceedings

PGR IPR

≤ 9 MonthsFrom Issue

>9 Months OR After PGR

GAP!

Patent Office Invalidity Proceedings

PGR IPR

≤ 9 MonthsFrom Issue

>9 Months OR After PGR

IPRTechnical

Amendment to AIA Fixed

Patent Office Invalidity Proceedings

• Old news-- why are you now mentioning?

– Implementation of concrete rules, guidelines, and practices has now occurred.

– After the initial knee-jerk reaction against these proceedings when the AIA was implemented, opinion is now changing to look favorably upon these proceedings.

Advantages Over Federal Court

• Lower Evidentiary Standard for Invalidity– USPTO- preponderance of the evidence– Court- clear and convincing

• Claim Interpretation More Favorable– USPTO- broadest reasonable interpretation– Court- patent owner in a Markman hearing can

ask for a narrower interpretation to avoid prior art

• 3-judge panel are all experienced patent attorneys

Advantages Over Federal Court

• Less expensive– Cost is 10% of a federal lawsuit– Will likely stay a co-pending federal lawsuit

• Fast– Completed in 18 months after filing petition– Discovery is automatic– Patent owner’s first 60-page response is due in 3

months with no extensions!

The Default Timeline for IPR, PGR, and CBMDate Event

Petition filed

3 months later Patentee’s Preliminary Response (optional)

3 months later Decision on Petition (by claim and by grounds); and Patentee’s 3-month discovery period begins

3 months later(Due Date1:)*

Patentee’s Response & Motion to Amend Claims is due; and Petition’s 3-month discovery period begins.

3 months later(Due Date 2:)*

Petition’s Reply to Response and Opposition to Motion to Amend Claims is due, and Patentee’s 1-month discovery period begins.

1 month later(Due Date 3:)*

Patentee’s Reply to Motion to amend, and the period for Observations & Motions to Exclude Evidence begins.

3 weeks later(Due Date 4:)*

Petitioner’s motion for observation regarding cross-exam of reply witness due. Request for oral argument due.

The Default Timeline for IPR, PGR, and CBMDate Event

2 weeks later(Due Date 5:)*

Patentee’s response to observation due. Opposition to motion to exclude due.

1 week later(Due Date 6:)*

Reply to opposition to motion to exclude due.

Set on Request(Due Date 7:)*

Oral Argument

12 months after Decision on Petition

Final Written Decision Due

*The parties may stipulate different dates for Due Date 1 through 5, but in no case can those dates be extended beyond Due Date 6 without authorization.

What About the Disadvantages? • Estoppel

– Estoppels arise on challenged claims, not entire patents

– Estoppels for a CBM review is limited to arguments that were actually raised

– Is estoppel a real concern when the odds for invalidating in court are worse?

• Claim Amendments – Are not automatic – Amendments must address grounds raised in

petition or they will be rejected

What About the Disadvantages?

• Availability – PGR/IPR/CBM- not available if you file a

complaint declaratory judgment before filing petition (excludes counterclaims)

How to Use

• Litigation– Quickly knock out invalid patents

• Snow Plow– Clear the way for new products

Critical details about Post-Grant Review

• Available for patent if filed under first-inventor-to-file (AIA) regime

• Must be filed within 9 months following the issue date or a broadening reissue date

• Can challenge a patent for most anything except obvious-type double patenting

• Should raise all possible challenges in petition due to potential estoppel effects

Critical details about Inter Partes Review

• Available for all enforceable patents

• Must be on §102 or §103 grounds

• Not available more than one year after served with a complaint

• A company can unknowingly purchase a bar to filing an IPR with the acquisition of another company.

Critical details about Covered Business Methods Review• Broader Coverage Than What You Might Think

– Includes method and apparatus claims– Includes AIA and Pre-AIA patents– May include data processing inventions outside of the

financial services field

• Available if you have been sued or charged with infringement

• Only one CBM claim required to make entire patent subject to review

• Stay of a federal lawsuit is all but guaranteed with an automatic appeal to CAFC

Speeding It Up atthe USPTO

July 23, 2013

Copyright 2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP