Post-Grant Review Proceedings

Post-Grant Review Proceedingsat the USPTO

under the America Invents Act

Presentation by Kevin Laurence

for Strafford Publications, September 28, 2011

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Kevin Laurence

Stoel Rives LLP

September 27, 2011, Webinar by Strafford Publications

Outline of Discussion on PostOutline of Discussion on Post--Grant Review ProceedingsGrant Review Proceedings• Possible popularity of post-grant review (PGR)

and inter partes review (IPR) proceedings

• Some “nuts and bolts” of PGR

• Interim (business method) proceedings



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• Interim (business method) proceedings

• Comparison of PGR proceedings with its model,EPO oppositions

• Strategy considerations for contestedproceedings including reexam, PGR and IPR

PopularityPopularity –– 33rdrd Time Is the CharmTime Is the CharmEPX in ’80; EPX, IPX in ’99; EPX, IPR and PGR in ‘11EPX in ’80; EPX, IPX in ’99; EPX, IPR and PGR in ‘11

5%5%opposed/yearopposed/year

?%?%



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0.5%0.5%

reexamined/yearreexamined/year

?%?%reviewed/yearreviewed/year

vs.

Cooperation between LitigatorsCooperation between Litigatorsand Reexam/Review Counseland Reexam/Review Counsel



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Reexam/ReviewCounsel

Litigators

Status Quo Validity BattlefieldsStatus Quo Validity Battlefields

Other Basis(§ 101,112)

Prior Art(§§ 102, 103, or

x2 Patenting)

PrintedPublication

Not PrintedPublication



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ApplicationFiled Before

11/29/99

Inter PartesReexam

ApplicationFiled On or

After 11/29/99

Ex ParteReexam

Litigation

Grounds for PostGrounds for Post--Grant ReviewGrant Review(PGR) Proceedings(PGR) Proceedings

PGR• Patentability challenge = same

as in litigation

– Subject matter, utility - § 101

– Novelty - § 102

inter partes review& ex parte reexam

• validity challengesunder § 102, § 103based on printed



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– Novelty - § 102

– Nonobviousness - § 103

– Definiteness, enablement, writtendescription - § 112

– Double patenting

– Not best mode

based on printedprior art publicationsand based ondouble patenting

Grounds for PostGrounds for Post--Grant ReviewGrant Review(PGR) Proceedings(PGR) Proceedings -- continuedcontinued

• Petition may also be based on a novelor unsettled legal question that isimportant to other patents/ applications

– Not available for IPR



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– Not available for IPR

– Mainly redundant with grounds basedon those permitted in litigation but alsoprovides a basis for other grounds suchas prosecution laches.

Proceeding Criteria to Initiate Commissioner Stoll

Ex ParteReexam

Substantial new questionof patentability (SNQP)

Post-GrantReview

More likely than not that at least onechallenged claim is unpatentable.

Considers this torequire at least 51%chance of success.

Comparison of Threshold CriteriaComparison of Threshold Criteria



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chance of success.

Inter PartesReview

A reasonable likelihood that the petitionerwould prevail with respect to at least onechallenged claim.

Considers this torequire only 50%chance of success.(Correct?)

Exception to Thresholds forException to Thresholds forEPX, PGR and IPREPX, PGR and IPR -- §§ 325(d)325(d)

• A request for EPX or a petition forPGR or IPR may be rejected if “thesame or substantially the same priorart or arguments have been



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art or arguments have beenpreviously presented to the Office.”

AvailabilityAvailability andand Effective DateEffective Dateof Review Proceedingsof Review Proceedings

post-grant reviewproceeding

transitional proceedingfor business methods

inter partesreviewproceeding

Not later than 9months after

On 2012-09-16, IPR willbe available for a party

On 2012-09-16,IPR will begin to be



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months afterissuance of patent orbroadening reissuebut see dataregarding practicaleffective date onnext slide.

be available for a partysued for infringement.However, see next slideregarding implicationsfor a patent that isavailable for regularPGR.

IPR will begin to beavailable if morethan 9 monthsafter issuance.

Effective DateEffective Date for Postfor Post--GrantGrantReview (PGR) ProceedingsReview (PGR) Proceedings

PGR transitional proceeding forbusiness methods

Under AIA § 6(f)(2)(A), the effective date is2012-09-16 but AIA § 3(n)(1) limitsconsideration to patents with a priority dateon or after 2013-03-16. So with average

2012-09-16 for a patentissued before, on, or after2012-09-16. However, it isunavailable for 9 month



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• PTAB will have years to benefit from simpler issues ofIPR and small number of transitional proceedings beforeseeing PGR proceedings.

on or after 2013-03-16. So with averagependency, a PGR proceeding will not beimplemented until 2014-5?

unavailable for 9 monthperiod when a patent isavailable for regular PGR.

Avoid Paralysis from Too Many Options for WeedAvoid Paralysis from Too Many Options for WeedKillers at the Supermarket of PostKillers at the Supermarket of Post--Grant ToolsGrant Tools



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Other Basis(§§101,112 –(best mode))

Prior Art(§§102, 103, orx2 Patenting)

PrintedPublication

Not PrintedPublication

Battlefields after PGR and IPR availableBattlefields after PGR and IPR available



13Inter PartesReview (IPR)

OutsideInitial 9-Mo,

Window

Ex ParteReexam

LitigationPost-Grant

Review (PGR)

InsideInitial 9-Mo.

Window

InsideInitial 9-Mo.

Window

OutsideInitial 9-Mo,

Window

ReviewPetition

Another PTOProceeding

PostPost--Grant Review EstoppelGrant Review EstoppelPatentability

Arguments Raisedor Reasonably CouldHave Raised in PGR



14Final Written Decision:Challenge Failed

ReviewPetition

Court or ITCLitigation

PostPost--Grant Review EstoppelGrant Review Estoppel (cont.)(cont.)

PatentabilityArguments Raised

or ReasonablyCould Have Raised

in PGR



15Final Written Decision:

Challenge Failed

EstoppelEstoppel

• Estoppel = “raised or reasonably couldhave raised” same as IPR but sincePGR has broader basis the estoppelimplications are greater for PGR.



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implications are greater for PGR.

• What happens if Federal Circuitreverses PTAB?

EstoppelEstoppel -- continuedcontinued

• Like IPR, issues raised in litigation or that couldhave been raised in litigation can still be relied onfor PGR, IPR or ex parte reexam; however, as apractical matter, losing in litigation will almostalways mean that the nine-month window for PGR



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always mean that the nine-month window for PGRwill have passed, the one year bar (docket areminder) will also have passed that preventsinitiation of IPR after being sued for infringement,and ex parte reexamination will be the onlyavailable option for a challenge at the PTO.

DJ Actions, Infringement, AutomaticDJ Actions, Infringement, AutomaticStays and Preliminary InjunctionStays and Preliminary Injunction

• Like IPR, file DJ action on or after petitioningfor review, then DJ action will be automaticallystayed until owner moves to lift stay orcounterclaims with infringement claim or



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petitioner moves for dismissal.

• PGR cannot be used to stay consideration ofpatent owner’s motion for preliminary injunctionwhen infringement action filed within 3 monthsof issuance.

PreliminaryResponse

Review?

Motion to Amend

YES

Petition

WrittenSettlement

Oral Hearing

LimitedDiscovery

Petitioner

Participation?3 mo.

Regulations for PRG Procedure by 2012Regulations for PRG Procedure by 2012--0909--1616



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Response

Final WrittenDecision

Notice of Review

YES

Appeal

Certificate

SettlementAgreement

Appeal

12 mo.(+ 6 mo.)

• May be modeled after the motion practice ininterferences as described at 37 CFR §§ 41.100-158,referred to as Part 41, Subpart D - Contested Cases.

• Discovery limited to evidence directly related to factualassertions advanced by either party

Regulations in PGRRegulations in PGR



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assertions advanced by either party

• Patent owner may file one motion (joint request also):

– Cancel or amend (without broadening) any challenged claim

– Propose a reasonable number of substitute claims

• Final determination in one year; extendible by not morethan 6 months for good cause

Merger (Consolidation) or SuspensionMerger (Consolidation) or Suspension

Factors PGR IPR EPX Analysis

Threshold More likely thannot that a claim isunpatentable

Reasonablelikelihood of prevail-ing regarding a claim

SNQP Not abarrier afterinstituted

Basis All litigation bases printed prior art publications

Amendment Likely more limited than reexam resp. torejection

Factorssupportsuspension



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• Reexam requested prior to PGR or IPR is not estopped butshould be suspended based on above analysis.

suspensionof reexamuntil reviewcomplete

Discovery Limited compared to litigation None

Speed 12-18 months 2 years

Organization PTAB CRU

Settlement May Stop Proceeding No impact

Transitional Proceeding forTransitional Proceeding forChallenging Business MethodsChallenging Business Methods

• “Business method patent” means “a patentthat claims a method or correspondingapparatus for performing data processingor other operations used in the practice,



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or other operations used in the practice,administration, or management of afinancial product or service, except thatthe term does not include patents fortechnological inventions.”

Challenging Business MethodsChallenging Business Methodsunderunder §§ 102 or102 or §§ 103103

• Challenging a patent in effect before 2013-03-16 may be supported by:

– the old version of § 102(a); or

– a version of prior art that falls within § 102(a) as



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– a version of prior art that falls within § 102(a) aslimited to the U.S. and an odd version of § 102(b)that refers to a “disclosure.” This version permitsraising actual reductions that are known or used byothers in US and public use or sale of the claimedinvention in the US under the current patent law.

Transitional Proceedings forTransitional Proceedings forChallenging Business MethodsChallenging Business Methods

• Estopppel limited to just grounds that wereraised.

• Typical stay factors enumerated but mayencourage courts to stay litigation,



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encourage courts to stay litigation,particularly since:

– Interlocutory appeal permitted

• Will sunset 8 years after effective date.

EPO Oppositions & PostEPO Oppositions & Post--GrantGrantReview:Review: SimilaritiesSimilarities

Opposition Post-Grant Review Proceedings

Any basis of challenge available(except lack of clarity and unity)

Any basis of challenge available (exceptbest mode)

9-month window to initiate

Limited rights to make claim amendments (no broadening)

oral hearings



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oral hearings

intervention after 9-month window,even during appeal

joinder permitted

parallel national court proceedingsregarding infringement

parallel litigation regarding infringement andpatentability (when counterclaimed)

Proceeding may continue despite settlement

EPO Oppositions & PostEPO Oppositions & Post--GrantGrantReview:Review: DifferencesDifferencesOpposition Post-Grant Review Proceedings

Straw men permitted No strawmen - real-party-in-interestmust be identified

2-4 years 12 -18 months

Opposition Division (3 examinersincluding one who granted patent)

PTAB (3 administrative patent judges(APJs))



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including one who granted patent) (APJs))

Appeals are made to the Boards ofAppeal; no estoppel so patent can stillbe revoked by national court

Appeals are made to the FederalCircuit

cost = €6000-€50,000 ($8,000-$70,000)

cost = more than $40,000-170,000 forinter partes reexam before appeal

EPO Oppositions & PostEPO Oppositions & Post--GrantGrantReview:Review: Differences continued.Differences continued.Opposition Post-Grant Review Proceedings

No threshold (just state grounds, facts,etc)

Information demonstrates that it ismore likely than not that at least 1claim is unpatentable

No prosecution history estoppel Prosecution history estoppel

No legal estoppel Estopped, with respect to a challenged



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No legal estoppel Estopped, with respect to a challengedclaim, from raising any ground incourt, inter partes review or ex partereexamination that the petitionerraised or could have raised

Claim interpretation at EPO does notcontrol infringement litigation

Need for consistent characterizationsat PTO and parallel litigation

Kill, Wound, and MissKill, Wound, and Miss –– What Will beWhat Will bethe Results of PGR and IPR?the Results of PGR and IPR?

Kill

Miss

U.S. EPX U.S. IPX EPO Opp’n

Kill

Wound

Miss

Kill

Miss



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Kill = All claims cancelled

Wound = Claims amended

Miss = All claims confirmed

WoundWound

Wound

Speculation on Technologies in PostSpeculation on Technologies in Post--Grant Review andGrant Review and Inter PartesInter Partes ReviewReview

• Cases involving information technologypredominate in reexamination and can beexpected to predominate in inter partes reviewproceedings.



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• Chemicals, life sciences, and mechanicalinventions will be represented in post-grantreview proceedings with larger percentages thanin inter partes review but perhaps not assignificantly as in EPO oppositions.

PGR Will Likely Be LessPGR Will Likely Be LessPopular than IPRPopular than IPR

• Short window relative to IPR

• Small number of conflicts that are sufficiently matureupon issuance to merit action

– Especially useful for attacking a continuing patentwhen litigating parent.



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when litigating parent.

• Broader basis = broader estoppel than IPR

• Systems need to be developed for identifying patentsto be challenged

– Like EPO system athttp://www.epo.org/searching/free/register-alert.html

Distinctions that InfluenceDistinctions that InfluenceOutcomeOutcome

Factors Post-GrantReview

Inter PartesReview

Ex ParteReexam

Litigation

Burden of ProofPreponderance of Evidence

Clear andConvincing Evidence

Presumption ofValidity

No Yes



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Validity

Claim scope Broadest reasonable interpretation (Suitco) Narrowconstruction(Phillips)

Complexity andnature of attack

Any basis other thanbest mode

Many references butlimited to printedpublications

-Fewer references-Any basis but bestmode

Decision maker PTAB CRU average juror

Factors Favoring ReexaminationFactors Favoring Reexamination

• Consider ex parte reexamination when:

– the prior art attack is simple, particularly anattack under § 102, such that interaction with thePTO seems unnecessary, and



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– the specification lacks “fall-back” positions thatpermits amendments resulting in infringement.

• Anonymity is desired.

• No estoppel.

A Few Factors for Use of ReviewA Few Factors for Use of ReviewProceedingsProceedings• Complex attack under § 103 will be preferable

at the PTAB relative to district court so thatlarge number of combinations is possible

• Ability to counter patent owner will encourage



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• Ability to counter patent owner will encourageuse of review proceedings relative to ex partereexamination as began to occur with interpartes reexamination.

• Estoppel implications improved.

Plenty of Time to Get Ready for PGR, But Start YourPlenty of Time to Get Ready for PGR, But Start YourEngines for IPR to Avoid Getting Left Behind inEngines for IPR to Avoid Getting Left Behind in“Radiator Springs” When the New Route Opens“Radiator Springs” When the New Route Opens



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Further discussion is welcome at thefollowing LinkedIn group:

Patent Reexamination & Review Practicehttp://www.linkedin.com/groups?gid=2785699&sharedKey=01BEF1317D1B&trk=anetsrch_name&g

oback=%2Eanh_2458260_1317025003317_1



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oback=%2Eanh_2458260_1317025003317_1

Thank you!Thank you!

Kevin B. LaurenceKevin B. Laurence ●● Stoel Rives LLPStoel Rives LLP

[email protected]@stoel.com

801801--578578--69326932



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801801--578578--69326932

70906630



Documents

Post-Grant Review Proceedings