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Ex Parte Reexamination, Post-Grant Review, and Inter Partes Review Under the AIA
Craig Buschmann
February 6, 2013
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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 3
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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 6
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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 7
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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, settlements9
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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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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 yet14
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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, settlements16
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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
17
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
18
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
19
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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
20
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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 [email protected]
222 Main Street – Suite 1930 | Salt Lake City, UT 84101-2001 | Telephone 801.355.7900 | Fax 801.355.7901
Thank You!
