PRESENTATION TITLE America Invents Act: The Practical Effects of the New USPTO Post-Grant Proceedings Wab Kadaba February 8, 2012 1
America Invents Act of 2011 Signed by President Obama on Sept. 16, 2011 Most significant change to US Patent Law in over 100 years New post-grant review procedures New Chapter 32 Post-Grant Review ( 321-329) Chapter 31 Inter Partes Review ( 311-319) *Rules governing procedure to publish any day now. 2
Overview What has changed? Timing Standard of Review Procedures Discovery Estoppel What should you do differently? 3
Timing - Availability and Effective Date of Review Proceedings Post-Grant Review Not later than 9 months after issuance of patent.* Inter Partes Review On 9/16/2012, Inter Partes Review will begin to be available if more than 9 months after patent issuance. *While the effective date for Post-Grant Review is 9/16/2012, AIA 3 (n)(1) limits consideration to patents with a priority date on or after 3/16/2013. Thus, with the average time it takes for the PTO to grant a patent, Post-Grant Review will not be implemented until approximately 2015. 4
Standard Of Review Proceeding Ex Parte Reexamination Post-Grant Review Inter Partes Review / Inter Partes Reexam Criteria to Initiate Substantial new question of patentability (SNQP) More likely than not that at least one challenged claim is unpatentable or novel/ unsettled important legal question A reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim Standard for Request Ex Parte Reexamination < Post-Grant Review < Inter Partes Review 5
Procedures Grounds Available for Post-Grant Proceedings Post-Grant Review Patentability challenge = same as in litigation: Subject matter, utility - 101 Novelty - 102 Nonobviousness - 103 Definiteness, enablement, written description - 112 Double patenting Not best mode Inter Partes Review Validity challenges under 102, 103 based on printed prior art publications and based on double patenting 6
Procedures New (and Trial-Like) For Both PGR and IPR Limited Discovery Oral Hearings Protective Orders Amendment 1 motion, or later joint motion Settlement Business-confidential Appeal by either Party to CAFC 7
Timing Goal to improve timing over Inter Partes Reexaminations. May increase likelihood of litigation stay. Projected Timing Inter Partes Reexam 5+ years to BPAI decision Inter Partes Review AIA indicates 12 to 18 months to PTAB decision 8
REALITY - Example of Inter Partes Review Timeline 9
Discovery Post-Grant Review Limited to: Evidence directly related to factual assertions advanced by either party in the proceeding. Depositions not expressly identified. Inter-Partes Review Limited to: Depositions of witnesses submitting affidavits or declarations. What is otherwise necessary in the interest of justice. U.S. District Court: (Federal Rules of Evidence) Any nonprivileged matter that is relevant to any party s claim or defense. Includes any documents or other tangible things and the identity and location of persons who know of any discoverable matter. Depositions of Inventors, Prosecuting Attorneys, Experts, Employees. 10
Checks On Discovery Limited in Scope. Discovery Period Limited to 4 Months. Sanctions for: Harassment Abuse of Discovery Improper Purpose Abuse of Process Protective Orders for exchange and submission of confidential information. 11
Estoppel - Inter Partes Review Parallel Litigation PTO Determines Patent Valid Parallel Litigation District Court Holds Patent Valid When Estoppel Attaches Inter Partes Reexam Estopped from invalidity defense (raised or could have raised in Inter Partes Reexam). District Court Only Inter Partes Reexam Vacated -Estopped Final Decision - Appeals Exhausted Inter Partes Review Estopped from invalidity defense (raised or reasonably could have raised) ITC & District Court No Estoppel* *Practical Estoppel for Inter Partes Review filed by party more than one year after being sued for patent infringement. 315(b). (PTAB) Written Decision 12
Estoppel - Post-Grant Review Estoppel = raised or reasonably could have raised same as Inter Partes Review but since Post-Grant Review has broader basis the estoppel implications are greater for Post-Grant Review. 13
Strategic Tips for Inter Partes and Post-Grant Review - DJ Actions For Inter Partes or Post-Grant Review, file DJ action on or after petitioning for review. Then, the DJ action will be automatically stayed until patentee moves to lift stay or counterclaims with infringement claim or petitioner moves for dismissal. If DJ action already filed, the same party cannot initiate Inter Partes or Post- Grant Review. 14
Summary of Major Areas of Change Proceeding Purpose & Timing Issues & Prior Art Strategic Considerations Post-Grant Review 3 rd Party challenge of patent within 9 months of issuance Any ground of invalidity ( 101, 102, 103, 112, 251) not limited to patents or printed publications Balancing Litigation Defenses with Estoppel Provisions Inter Partes Review 3 rd Party challenge of patent after PGR window or conclusion of PGR* Limited to novelty, obviousness ( 102, 103) limited to patents and printed publications Balancing Litigation Defenses with Estoppel Provisions *Patents not subject to PGR proceedings are available for IPR on 9/16/2012. 15
What Does this Mean Pre-AIA Validity Challenge Options Are the Invalidity Arguments Based On Prior Art? Yes Is the Prior Art a Printed Publication? No Yes Was the Application Filed Before 11/29/99? No Yes No Ex Parte Reexam Inter Partes Reexam Litigation 16
What Does this Mean Post-AIA Validity Challenge Options Are the Invalidity Arguments Based On Prior Art? Yes No Is the Prior Art a Printed Publication? Yes Is the Issued Patent Inside the Initial 9-Mo Window? No Is the Issued Patent Inside the Initial 9-Mo Window? Yes No Yes No Post-Grant Review or Ex Parte Reexam or Litigation Inter Partes Review or Ex Parte Reexam or Litigation Post-Grant Review or Litigation Litigation 17
Distinctions that Influence Business Decisions Factors Burden of Proof Presumption of Validity Claim scope Post-Grant Review Inter Partes Review Preponderance of Evidence No Broadest reasonable interpretation (Suitco) Litigation Clear and Convincing Evidence Yes Narrow construction (Phillips) Complexity and nature of attack Any basis other than best mode Many references but limited to printed publications -Fewer references -Any basis but best mode Decision maker PTAB Average Juror 18
Other Factors to Assist in Business Decisions Complex Argument Attack under 103 will be preferable at the PTAB relative to district court so that large number of combinations is possible. Intervening Rights after Marine Polymer A patentee s pleadings and arguments defending the patent in a Post-Grant or Inter Partes Review proceeding could create intervening rights which would shorten the damages period. Marine Polymer, 659 F.3d 1084 (Fed. Cir. 2011), held that arguments narrowing the scope of the patent can create additional file history estoppel and truncate the damages period, even if the claims are not amended. 19
Other Factors to Assist in Business Decisions Inter Partes Review Monitor Third Party Patents and Patent Applications. Is the Patent Owner or Assignee Litigious? Does the Patent Broadly Relate to your Technology? Determine the Availability of Prior Art Patents and Printed Publications. 20
Other Factors to Assist in Business Decisions Post-Grant Review Monitor Third Party Patents and Patent Applications. Is the Patent Owner or Assignee Litigious? Does the Patent Broadly Relate to your Technology? Consider All Grounds of Invalidity. 21
Other Factors to Assist in Business Decisions - Patentees Current patent seekers should file before the effective date (3/16/13) to avoid future Post-Grant Review. Patents subjected to Post-Grant Review or Inter Partes Review might emerge stronger. 22
Hypothetical #1 Your Company is sued for patent infringement on a patent that issued a year earlier. You have found printed publication prior art teaching every element of the claim. Should you introduce the prior art in litigation as an invalidity defense or should you initiate an Inter Partes Review after September 16, 2012? 23
Hypothetical #2 It is August 2012. Your Company has received a demand letter and wants to challenge the validity of the patent based on your Company s own product and literature predating the patent. You must determine whether to initiate an Inter Partes Reexamination, wait to file an Inter Partes Review, or wait to file an Inter Partes Review and a subsequent DJ Action in your home forum. Which option will you choose? 24
Hypothetical #3 Your Company is sued for Patent Infringement on a patent that issued a year earlier. You have a prior art reference that discloses 2 of the 5 claim elements. Each other claim element is disclosed in different prior art references. Should you seek to challenge the patent in the district court, or file an Inter Partes Review? 25
Questions? Comments? WKadaba@kilpatricktownsend.com 26