post issuance inter partes disputes: what you need to know

Post Issuance Inter Partes Disputes:

What you need to know

October 19, 2012

Kerry Taylor

The recipient may only view this work. No other right or license is granted.

Topics

• AIA’s changes to post-issuance disputes (third party challenges to issued patents)

– What stays the same and what is new?

• Practice and procedure

– Trial proceedings overview

– Strategies and considerations

• How do the new proceedings operate?

Changes to Post-Issuance Disputes

• Before AIA

• Inter Partes Reexam

• Ex Parte Reexam

• Interferences

• After AIA

• Post-Grant Review

• Transitional Program for Covered Business Method Patents

• Inter Partes Review

• Ex Parte Reexam

• Derivation Proceedings

• Interferences (Legacy)

Statutory Requirements for PGR and IPR

Proceeding Petitioner Available Standard Basis

Post Grant Review (PGR)

• Not the patent owner and has not previously filed a civil action challenging the validity of the patent

• Must identify

real party in interest

From patent grant to 9 months from patent grant or reissue

More likely than not OR Novel or unsettled legal question

101, 102, 103, 112, double patenting but not best mode

Inter Partes Review (IPR)

The later of: (i) 9 months after patent grant; or (ii) termination of any post grant review of the patent

Reasonable likelihood (“lower threshold” “somewhat flexible”)

102 and 103 based on patents and printed publications

Statutory Requirements for PGR and IPR

Proceeding Applicable Estoppel Timing

Post Grant Review (PGR)

Patent issued under first-inventor-to-file

• Raised or reasonably could have raised

• Applied to subsequent USPTO/district court/ITC action

• Note: Covered Business Methods standard: only raised, not reasonably could have raised

Must be completed within 12 months from institution, with 6 months good cause exception possible

Inter Partes Review (IPR)

Any patent

Trial Proceedings

• As Vice Chief APJ Moore has stated, “This is not prosecution.”

• USPTO Patent Trial and Appeal Board

– Trial section views itself as a litigation tribunal

– Appeal section focuses on ex parte appeals from examination

• Current interference rules will provide basis for new procedural rules for all USPTO Inter Partes proceedings

USPTO Trial Rules

Covered Business Method Patent Review

§§ 42.300 – 42.304

Post-Grant Review §§ 42.200 – 42.224

Inter Partes Review §§ 41.100 – 42.123

Derivation Proceedings §§ 42.400 – 42.412

Umbrella Trial Rules §§ 42.1 – 42.80

Umbrella Trial Rules

• Must conclude within 12 months of initiation (18 months for good cause)

• Discovery

• Motion practice

• Protective orders

• Settlement

Trial Proceedings Timeline

Petition PO

prelim. response

Decision

PO response

to decision

motion to amend

Petitioner reply

to PO’s response

opp’n to motion

Oral hearing

Written decision

3 mo. ≤ 3 mo. 3 mo. 3 mo.

PO reply

Trial begins ≤ 1 year

PO discovery

period

Petitioner discovery

period

PO discovery

period

Petition PO

prelim. response

Decision

PO response

to decision

motion to amend

Petitioner reply

to PO’s response

opp’n to motion

Oral hearing

Written decision

3 mo. ≤ 3 mo. 3 mo. 3 mo.

PO reply

PO discovery

period

PO discovery

period

Petition

• Contents:

– Challenge of claims (including claim construction)

– Supporting evidence (references, declarations)

– Should be as complete as possible

• Cost:

– PGR: $35.8 k ($800 per claim over 20)

– IPR: $27.2 k ($600 per claim over 20)

Petition PO

prelim. response

Decision

PO response

to decision

motion to amend

Petitioner reply

to PO’s response

opp’n to motion

Oral hearing

Written decision

3 mo. ≤ 3 mo. 3 mo. 3 mo.

PO reply

PO discovery

period

PO discovery

period

Preliminary Response

• Not required for Patent Owner to respond

• Contents:

– Supporting evidence (typically no declarations)

• Due 3 months after Petition filing date

• Also due at this time:

– Agreed-upon mandatory initial disclosures (e.g., relied upon documents, identity of declarants)

• Other possible procedures

– Discovery relating to standing

– PTAB may already rule to dismiss all or part of Petition

Petition PO

prelim. response

Decision

PO response

to decision

motion to amend

Petitioner reply

to PO’s response

opp’n to motion

Oral hearing

Written decision

3 mo. ≤ 3 mo. 3 mo. 3 mo.

PO reply

PO discovery

period

PO discovery

period

PTAB Decision to Institute Trial

• Decision

– Claim-by-claim and Ground-by-ground

– “Sufficient notice” explaining PTAB’s reason for instituting

• Request for reconsideration can be made by either party (timing varies)

• Also includes default Scheduling Order

• Discovery begins (typically Patent Owner discovery at this point)

Within 1 Month of PTAB Decision

• Scheduling Conference:

– Parties agree on Scheduling Order (can differ from default, but PTAB will likely reserve 2-3 months after Oral Hearing for Written Decision)

– Parties agree on Discovery

• Patent Owner proposes number of substitute claims

• Petitioner can provide Supplemental Information

Petition PO

prelim. response

Decision

PO response

to decision

motion to amend

Petitioner reply

to PO’s response

opp’n to motion

Oral hearing

Written decision

3 mo. ≤ 3 mo. 3 mo. 3 mo.

PO reply

PO discovery

period

PO discovery

period

Discovery

• Automatic

– Agreed-upon mandatory initial disclosures

• Routine

– Document cited in paper or testimony

– Cross examination of declarant

– Relevant information inconsistent with a position advanced

Discovery continued

• Additional

– As agreed upon by parties

– No agreement: by motion: “interests of justice”

• Compelled testimony or production

– By motion (typically granted)

– Non-parties to proceedings

• Motion practice: authorization required (typically in conference call)

Petition PO

prelim. response

Decision

PO response

to decision

motion to amend

Petitioner reply

to PO’s response

opp’n to motion

Oral hearing

Written decision

3 mo. ≤ 3 mo. 3 mo. 3 mo.

PO reply

PO discovery

period

PO discovery

period

Patent Owner Response

• Response Contents:

– Can rebut any grounds for challenging claims (including claim construction)

– Supporting evidence (references, declarations)

• Also due: Motion to amend

– Total number of claims: “reasonable number” (generally one substitute claim per challenged claim)

– Typically this is the only opportunity to amend

• Petitioner discovery begins

Petition PO

prelim. response

Decision

PO response

to decision

motion to amend

Petitioner reply

to PO’s response

opp’n to motion

Oral hearing

Written decision

3 mo. ≤ 3 mo. 3 mo. 3 mo.

PO reply

PO discovery

period

PO discovery

period

Petitioner Reply/Patent Owner Reply

Petitioner Reply

• Oppose proposed amendments by Patent Owner

• Rebut Patent Owner’s arguments

– Limit to new evidence that can be submitted (rebuttal)

• Patent Owner additional discovery

Patent Owner Reply

• Rebut Petitioner’s evidence

• Typically will close discovery

Petition PO

prelim. response

Decision

PO response

to decision

motion to amend

Petitioner reply

to PO’s response

opp’n to motion

Oral hearing

Written decision

3 mo. ≤ 3 mo. 3 mo. 3 mo.

PO reply

PO discovery

period

PO discovery

period

Observations, Motions, Oral Hearing

Observations and Motions

• Motions to exclude evidence filed; oppositions to motions filed

• Observations filed (brief comments regarding evidence such as cross-examination transcripts)

Oral Hearing

• Available upon request

• Typically closes most activities by the parties

Kerry Taylor 12790 El Camino Real

San Diego, California 92130

Kerry.Taylor@knobbe.com

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