Challenging the Validity of a Patent Before the PTAB Featuring Scott Eidson & Jennifer Hoekel

© 2014 Armstrong Teasdale LLP

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Challenging the Validity of a Patent Before the PTAB

Jennifer Hoekel and Scott Eidson

July 30, 2014


PTAB Procedures

What is the PTAB?• Patent Trial and Appeal Board• Appellate-like panel of three judges that

oversee each proceeding• Decisions appealable to the Federal Circuit

3 New Procedures For Challenging a Patent After it Issues• Post Grant Review (PGR)• Covered Business Method Review (CBM)• Inter Partes Review (IPR)

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Post Grant Review & Covered Business Method Review

CBM patent is a patent that claims a method, apparatus, or operation used in the practice, administration, or management of a financial product or service

Not including a technological invention

Only available to parties charged with infringement

Any invalidity ground Timeline: completed in 18

months Estoppel only to grounds

actually raised

Applicable to patents filed on or after March 16, 2013

Any invalidity ground Available for the first 9

months after a patent issues or reissues

Timeline: completed in 18 months

Estoppel applies (“raised or could have raised”)

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Post Grant Review

Covered Business Method Review


Inter Partes Review

Based on patents or printed publications and may be sought any time after post grant review period ends

Preponderance of the Evidence Standard Estoppel applies (“raised or could have

raised”) Requires threshold PTO determination to

institute review (similar to reexam) Time Limits: within 12 months of litigation; no

review if petitioner filed a DJ on invalidity Right to oral hearing, heard by PTAB5


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IPR Timeline


Current Statistics and Trends

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Strategies: Challenging a Patent Identify claims to challenge

• Are they in litigation?

• Timing considerations Exhaust your prior art search (estoppel) Consider use of experts Set forth all of your arguments in the petition—60 page limit

• Cannot add new arguments as the proceeding goes forward

• Cannot incorporate from declaration

• Focus on a detailed analysis

• Multiple petitions—common practice (roughly 200 patents subject to multiple petitions attacking the claims)

− Attack claim groupings

− Attack on different invalidity arguments12


Strategies: Challenging a Patent Joint Petition: Should we join with others to

file one petition?• PTAB will likely join multiple petitions attacking

the same patent Claim Charts

• Must be explained in petition with cites to supporting evidence

Experts • Must be supported by underlying facts or data

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Strategies: Defending Your Patent File a preliminary patent owner’s response?

• Attack redundant challenges and reduce the number of grounds

• Attack weaknesses in petition and prior art• No new evidence allowed

Do nothing?• Don’t preview your arguments• Save cost

Swear behind prior art?• Difficult to do in front of the PTAB

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Strategies: Defending Your Patent Amend claims during trial

• Not likely. Why?• One for one substitution• Must narrow • No examination • Burden on patent owner to show patentable

and distinct Settle

• If you wait too long, the PTAB may not stop the proceeding

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Related Considerations

Licensing: • Patent owner: pays for and controls prosecution• Licensee: Has the right (& obligation) to enforce

patent rights at its own expense −Who controls post grant proceedings? Who pays?

Conflicts?−Review and revise all license agreements to

clarify responsibilities and avoid conflicts Enforcement:

• Could/will become a common response to enforcement efforts

• Efforts will be delayed due to litigation stays• Budget accordingly/plan accordingly16


Timeline & Costs: Litigation vs. Inter Partes Review

Cost to File:

• $400 Average Length of Time

(filing to trial):

• Just under three years*2011 AIPLA Survey

Average Cost (fees and expenses):

• $1-10 million in controversy: − $2.1 million through trial

• $10-25 million in controversy:

− $3.6 million through trial*2013 AIPLS Report of the Economic Survey

Cost to File: • $9,000 filing fee

+ $200/claim over 20• $14,000 institution fee

+ $400/claim over 15 Length of Time:

• 18 months. Average Cost (fees

and expenses):• $250,000-650,000.

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Inter Partes Review

Patent Litigation


Questions?

Scott EidsonPartnerIntellectual [email protected]

Jennifer HoekelPartnerIntellectual [email protected]

www.atpostgrant.com

CLE Confirmation Code: HE071218

mailto:[email protected]

mailto:[email protected]

Law

Challenging the Validity of a Patent Before the PTAB Featuring Scott Eidson & Jennifer Hoekel