View
158
Download
1
Category
Preview:
DESCRIPTION
Many companies feel defenseless against threats of patent litigation. IPRs offer a way to go on the offense to challenge patents. In this presentation, Rimon Partner, John Hintz, compares the traditional options available to challenge patents to the relatively new IPR process. He reviews how an IPR is begun, the associated timing and costs, and the brief history of IPRs filed so far. The presentation concludes with some observations about strategic considerations when considering filing an IPR.
Citation preview
Inter Partes Review of Patents: The Case So Far
Presented by John Hintz
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
2 New Option = Inter Partes Review (“IPR”)
Data and Trends
Agenda
2
Traditional Options for Challenging Patents 1
What is it?
Traditional Options
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
Traditional Options
4
District Court Litigation
International Trade Commission
Reexaminations • Inter Partes • Ex Parte
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
Reexam
• Defense only
• Request made to U.S. Patent and Trademark Office
• Inter partes reexam or ex parte reexam
• Standard = substantial new question of patentability
5
Traditional Options – Reexam
NOTE: AIA eliminated Inter Partes reexam as of Sept. 16, 2012.
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
Court • Offense and Defense
• Venue − Local Rules − Speed − “Pro-Plaintiff”?
• Discovery (Fact and Expert) = $$
• “Markman” Hearing
• Summary Judgment
• Pre-Trial and Trial
6
Traditional Options – Court
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
ITC
• Defense only
• Investigate allegations that IP infringement will impact a “domestic industry”
• Like litigation, but U.S. participates
• Decided by ALJ; Commission reviews
• President can veto (rare)
• Remedy = exclusion order; no damages
• Very fast; intensive discovery
• Can be devastating result
7
Traditional Options – ITC
New Options
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
• Review validity under 102 & 103 (patents & printed publ’ns only) • All patents eligible • If sued, petitioner must file within 1 year of filing of lawsuit
Inter Partes Review
• Review validity under 101, 102 & 103 (any prior art), & 112
• Only for “first to file” patents filed after 3/16/2013 Post-Grant
Review
CBM Post-Grant Review
• Review validity under 101, 102 & 103 (any prior art), & 112
• Available only for “covered business method” patents
• Petitioner must have been charged with infringement
• Replaces interferences for “first-to-file” patents filed after 3/16/2013 Derivation
“New” Options
9
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
Begins with a petition
Ends with a “trial”
Patent Trial and Appeal Board
Anyone other than patent owner may request:
must identify “all real parties in interest”
must identify claims and grounds for review
Petitioner’s burden =
preponderance Available as to all patents
IPR – What is it?
10
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPR – Cost?
11
Filing fee depends on number of claims:
If petition granted, also pay:
Each additional
claim: $400
Up to 15 claims: $14,000
Up to 20 claims: $9,000
Each additional
claim: $200
IPR
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPR – Petition
12
Higher standard than old inter
partes reexam OLD: “substantial new question of patentability” NEW: “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”
Patent owner can file
preliminary response
(and do so 80% of the time)
Decision to conduct IPR
must be made within 6 months
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
112397
13
Code
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
Limitations • Challenge only under § 102 and § 103 with patents or printed
publications • Timing = later of 9 months after grant of patent or termination of
Post-Grant Review • Cannot file > 1 year after served with complaint • Later, cannot assert in a lawsuit or at PTO same grounds or ones
petitioner “reasonably could have raised”
14
IPR – Petition
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPR – Timing
15
Final decision in 12-18 months
Can appeal to Federal
Circuit
Parties can settle IPR terminated upon joint request unless PTO has decided the merits
Must file agreement; can ask to be kept secret
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPR – Timing
16
Filing of Petition
Patent Owner Preliminary Response
Decision on Petition Initial Conference
Patent Owner Response & Motion to Amend Claims (DUE DATE)
Petitioner Reply (DUE DATE 2) Patent Owner Reply (DUE DATE 3)
Discovery Motions (DUE DATES 4-6)
Oral Argument (DUE DATE 7)
Final Writen Decision
Patent Owner Discovery (3 months)
Petitioner Discovery (3 months)
Patent Owner Discovery (1 month)
Trial (12 months)
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPR – Worth It?
17
Factors FOR
• Evidentiary standard
• Good prior art
• Highly technical
• Stay possible
• Additional intrinsic evidence desired
• Apply pressure
• Unfavorable District Court venue
Factors AGAINST
• May take invalidity out of the trial (estoppel)
• “Poor” prior art
• Low damages exposure
• Possibility of claim amendments
• Discovery
• Limited noninfringement defenses
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPR vs. PGR
18
Inter Partes Review Post-Grant Review
Effective date Sept. 16, 2012 Sept. 16, 2012
Patent date All patents Filed > Mar. 16, 2013
Grounds Only 102/103 All
Prior art Patents/publ’ns Any type
Deadline > 9 mos. after issue or after PGR ≤ 9 mos. after issue
Anonymous? No No
Standard Reasonable likelihood More likely than not
Cost $23,000 + $30,000 +
Speed Same Same
Estoppel Same Same
Settle? Same Same
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPR vs. Inter Partes Reexam
19
Sources: USPTO (as of Oct. 9, 2014); www.ManagingIP.com, Sept. 2014
2012 2013 2014 (as of 10/9)
17
514
1,360
2010 2011 19-year total
281 374
1,919
IPR Petitions Filed:
1,891 (3-year total)
Inter Partes Reexams:
1,919 (19-year total)
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPRs by the Numbers
20
Source: USPTO (as of Oct. 9, 2014)
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPRs by the Numbers
21
Source: USPTO (as of Oct. 9, 2014)
[PERCENTAGE]
[PERCENTAGE]
[PERCENTAGE]
[PERCENTAGE]
[PERCENTAGE]
Electrical/Computer (1,527)
Mechanical (325)
Chemical (157)
Bio/Pharma (121)
Design (8)
All Petitions by Technology
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPRs by the Numbers
22
Compared to grants of requests for inter partes reexam = about 95%
Source: USPTO (as of Oct. 9, 2014)
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPRs by the Numbers
23
Settlements in 2013 = 23% Settlements in 2014 = 39%
Source: USPTO (as of Oct. 9, 2014)
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPRs by the Numbers
24
Source: USPTO
Inter Partes Review Petitions Terminated to Date (as of 9/4/2014)
11,046 claims in 348 petitions
6,001 claims not challenged 5,045 claims challenged (348 petitions)
3,344 claims instituted
(66% of claims challenged) (237 petitions)
1,701 claims challenged but not instituted (34% of claims
challenged)
606 claims cancelled or disclaimed (non-PTAB) (18% of claims instituted, 12% of claims challenged)
1,739 claims patentable (52% of claims instituted, 34% of claims challenged)
999 claims found unpatentable
(30% of claims instituted, 20% of claims challenged)
(91 petitions)
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPRs – Effects/Results
25
IPR
Eliminate patents/claims
Encourage settlement
Less expensive than litigation • Obtain a stay of District Court litigation?
• 70% of disputed motions to stay are granted
rimonlaw.com © 2014 Rimon, P.C. All Rights Reserved.
IPRs – Risks
26
Claims can be amended
Expense
Added expense if litigation not
stayed Estoppel effect
rimonlaw.com
Thank You
John M. Hintz
john.hintz@rimonlaw.com
Recommended