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Post Grant Proceedings Before the USPTO and Litigation Strategies Under the AIA
Panelists: David BeckPhillip JohnsonGary GriswoldSteven Weisburd
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Problems with determining strategies today
• UPSTO Rules on Post Grant Proceedings are not finalized
• Many issues (e.g., the scope of the estoppels) have not been addressed by the courts
• There is no directly applicable experience before the Patent Trial and Appeal Board
• While we can identify issues, no one can now provide meaningful recommendations as to whether to file a USPTO post grant proceeding rather than litigation
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Litigation Strategies: Effect of AIA on litigations filed prior to Sept. 16, 2011
• False Marking
– No longer qui tam actions
– Actions for actual damages by competitors can continue
• Tax Strategies
– Not patentable unless method or apparatus for filing tax returns
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Litigation Strategies: Affect of AIA on litigations filed on or after Sept. 16, 2011
• Best Mode
• Joinder provisions
– What is the “same product”?
• Why have trolls continued to file actions against large number of defendants?
– Will cases remain joined for discovery purposes?
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Motions to Stay
• Over the last several years, courts have stayed about 60% of the cases when a motion to stay is filed early in the case. This percentage goes down to as low as 40% after 3 ½ years.
• Will that number go up or down under the AIA?
– Automatic stays
• PGR
• IPR
– Standards for Covered Business Methods
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Supplemental Examination
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Supplemental Examination
• Only the patent owner can file
• The purpose of this new procedure is to allow the patent owner to have the USPTO “consider, reconsider, or correct information believed to be relevant to the patent”
– What is information?
– Under what circumstances might a patent owner want to use this procedure?
– Inequitable conduct
• Present “but for” standard
• Only effects patentability of otherwise valid claims
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Post Grant and Inter Partes Review
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What unresolved issues are important to making Post Grant & IPR Proceedings Useful?
• Scope of required initial disclosures and permitted evidentiary supplementation
• Evidence permitted in preliminary response
• Construction of claims (BRCC)
• Scope and efficiency of discovery
• Extent and nature of motion practice
• Nature and effect of claim amendments
• Application of the estoppel provisions
• Manner in which Administrative Judges run the proceedings
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Post Grant Review
• Only applies to patents subject to the first to file rule
– Not likely relevant for three or more years
• Must be filed within 9 months of patent issuance but before a DJ action
• Can challenge patent on any grounds
• Estoppel: any issue raised or that reasonably could have been raised
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Post Grant Review
• Will allow limited discovery
– USPTO Rules not finalized
– Present rules include mandatory and optional discovery
• Mandatory:– Submit supportive documents and testimony with Petition and
various oppositions
– Submit any noncumulative information that is inconsistent with a position advanced by either party “as soon as practical”
• Optional– Discovery in the interest of justice
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Some potential pros/cons of PGR vs. litigation
• Cost
• Speed
• Presumption of validity
• Highly focused vs. open issues
• Full vs. limited discovery
• Ability to amend claims in PGR
• Lay jury vs. technical/patent expert
• Estoppel (both for PGR and litigation)
– One bite at apple vs. two
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Inter Partes Review
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Inter Partes Review
• When to file:
– 9 months or more after patent is granted/reissued
– if a Post-Grant Review has been filed, the date of termination of a Post- Grant Review proceeding
– but before any DJ action by the Requester challenging validity of the claims at issue
• Counterclaims for invalidity do not prevent a party from petitioning for IPR
– Within one year after the petitioner is served with a complaint for infringement of the patent
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Inter Partes Review
• Grounds: validity under §§102 and 103 based upon prior art patents and publications
• Amendments: can petition to make one set of amendments
– To issued claims
– To add a “reasonable” number of new claims (presumption is that one new claim will be needed for each cancelled challenged claim)
• Estoppel: issues that were or reasonably could have been raised
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Inter Partes Review
• Discovery – same issues as PGR
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IPR vs. Inter Partes Reexam
Inter Partes Review
• Expedited
• Limited discovery
• Estoppel: any issue that was or reasonably could have been raised
• Before an Administrative Judge
• You are before the Board in the first instance
Inter Partes Reexamination
• Not expedited
• No discovery
• Estoppel: any issue that was or could have been raised
• Before an examiner
• First the examiner makes a decision, then you go before Board
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Some potential pros/cons of IPR vs. litigation
• Cost
• Speed
• Presumption of validity
• Highly focused vs. open issues
• Full vs. limited discovery
• Ability to amend claims in IPR
• Lay jury vs. technical/patent expert
• Estoppel (both for PGR and litigation)
– One bite at apple vs. two
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Covered Business Methods
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Covered Business Methods
• Only a transitional procedure:
– Takes effect 1 year after enactment and expires 8 years thereafter
• Financial Industry Patents:
– A patent that claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of financial products or services
– Does not include patents for “technological inventions”
• Grounds for invalidity:
– Any ground
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Covered Business Methods
• Who may file:
– Petitioner must be the real party in interest that has been sued or charged with infringement under the patent
• Procedures:
– Proceedings are same as Post-Grant Review and are conducted by the Patent Trial and Appeal Board
• Estoppel:
– Petitioner cannot raise issues in a civil action that were raised in the proceeding once a final written decision of the Patent Trial and Appeal Board is issued
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Covered Business Methods
• Stays:
– When either party requests a stay in a civil action, the court shall decide on whether or not to grant the stay based upon the following factors:
• Whether a stay will simplify the issues in question and streamline the trial
• Whether discovery is complete and whether a trial date has been set
• Whether a stay would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party
• Whether a stay will reduce the burden of litigation on the parties and on the court
– A party may take an interlocutory appeal to the Federal Circuit to “ensure consistent application of established precedent”
– The review on appeal is de novo
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QUESTIONS