Transcript Inter Partes

USPTO Rules Governing Inter Partes
Review and Post-Grant Review
August 30, 2012
Steven Spears and Carey Jordan
1
New Post-Grant Proceedings Under AIA
▪ Inter Partes Review (IPR)
▪ Post Grant Review (PRG)
▪ Transitional Program for Covered Business Method Patents
(CBM)
▪ Derivation Procedure (DP)
▪ Supplemental Examination (SE)
2
New Procedures Under AIA
IPR
CBM
PRG
DP
Inter Partes Review (IPR) -- Basics
▪ Available for all patents on or after 9/16/2012
▪ May be filed 9 months after issuance but not (i) after alleging
invalidity, or (ii) more than 1 year after being served with
infringement complaint
▪ Filed with Patent Trial and Appeal Board
▪ Only for anticipation or obviousness based upon prior art
patents or printed publications
▪ Reasonable likelihood that petitioner would prevail on one
claim
▪ Limited discovery permitted
▪ Resolution in no more than 12 months after grant of petition
▪ Estoppel – issues “raised or could have raised”
▪ Decisions of PTAB appealed to Federal Circuit
Differences between IPRX and IPR
IPRX
IPR
After 9/16/2012
No
Yes
Patents filed before 11/29/1999
No
Yes
Lawsuit filed before 9/16/2011
Yes
No
Patent owner comment
No
Yes
Discovery
No
Yes
3 years
1 year
No
Yes
CRU
PTAB
Time to Decision
Oral Hearing Available
Who Decides
Differences between EPO Opp. and IPR
EPO Opp.
IPR
≤ 9 months
after grant
≥9 months
after grant
Filing fee
Low
High
Estoppel
No
Maybe
Stay of infringement suit
No
Maybe
Discovery
No
Yes
2-4 years
1 year
When Available
Time to Decision
Post-Grant Review (PGR) -- Basics
▪ Available for patents with claims having effective filing date
after March 16, 2013
▪ Must be filed within 9 months after issuance
▪ Based upon generally any statutory ground of invalidity, or a
novel or unsettled legal question important to other patents
▪ More likely than not that at least 1 claim is unpatentable
▪ Same forum, resolution time, and appeals rights as IPR
▪ Contemplated that discovery will be “limited to evidence
directly related to factual assertions advanced by either party”
▪ Estoppel – issues “raised or could have raised” -- but many
more issues “could be raised”
Covered Business Methods (CBM) -- Basics
▪ Generally applies PGR standards
▪ But available for all subject patents after 9/16/2012 (so long
as PRG not available)
▪ Petitioner must be sued or charged with infringement
▪ Patent must cover a business method – generally a method
or corresponding apparatus for performing data processing or
other operations activities “financial in nature, incidental to a
financial activity or complementary to a financial activity.”
▪ Prescribed standard for staying litigation, and interlocutory
appeal from any denial of a stay
▪ Estoppel applies only to grounds raised
Timeline – “Umbrella Rules”
PO Prelim.
Response
Petition
3 months
≤ 3 month
Institution
PO Response
Mot. To Amend
3 months
Pet. Reply
Opposition
3 months
PO Discovery
3 months
Pet. Discovery
No More Than One Year
PO
Reply
1 month
Final
Decision
Oral
Hearing
2 months
Observations
PO
Discovery Mot. To Exclude
≤ 3 month
Petition
▪
▪
▪
▪
▪
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Publically available, unless filed under seal
$27,200 + $600 for IPR; $35,800 + $800 for PGR
A full statement of the reasons for the relief + evidence
Claim charts and claim construction (broadest reasonable
interpretation standard)
60 pages (IPR) or 80 pages (PGR)
Expert affidavits must disclose underlying facts and data
Notice of Real Party-in-interest
Duty of Candor
Patent Owner Preliminary Response
▪
▪
▪
▪
▪
Due 3 months after petition
Not required, and can file waiver to expedite process
No claim amendments
But can disclaim claims
No testimonial evidence unless unauthorized (such as to
show estoppel based upon evidence of real party in interest).
Decision on the Petition
▪ Non-appealable (but can seek rehearing)
▪ If review is instituted, Board will specify grounds and claims
▪ Can consolidate, stay, transfer with other matters before the
office (PGR, IPR, Reissue)
▪ Sets an initial conference within 1 month to discuss schedule,
discovery, and motions
▪ No collateral estoppel arises from denial of a Petition?
▪ De facto estoppel?
Discovery
▪ Routine Discovery: (i) cited exhibits, (ii) cross of declarants,
and (iii) “relevant info. that is inconsistent with a position
advanced during the proceeding”
▪ Further Mandatory initial disclosures if agreed to or ordered
▪ Additional discovery can be agreed to or sought
▪ Quick, sequenced schedule
▪ E-Discovery
– Not for routine discovery
– Must be raised with the board first
– Follow Federal Circuit Model Order
Depositions
▪ Compelled testimony only during testimony period set by the
Board
▪ 7 hrs direct, 4 hours cross, 2 hours re-direct
▪ If direct, must give list and copies exhibits plus description of
scope
▪ Cross limited to scope of direct
▪ Need Board approval for depositions outside the US
▪ Any objections to content must be made at the deposition
▪ Evidence to cure an admissibility objection must be provided
during the deposition, unless the parties stipulate otherwise
▪ Cross examination may be ordered to take place before an
APJ
Patent Owner Response/Motion to Amend
▪ Default Due Date – 3 months after review is instituted
▪ Follows discovery on Petition
▪ Response identifies claims addressed in the Board Decision
on the Petition that the owner maintains are patentable.
▪ Includes claim construction, affidavits, cross exam, other
evidence
▪ Can Move to Amend Claims:
–
–
–
–
–
No authorization needed for first amendment, but must confer with APJ
Can be proposed as alternative relief
Cannot broaden claims or add new matter
“Reasonable” number of substitute claims
Authorization needed for any later amendment (good cause)
Petitioner’s Reply / Opposition to Amendment
▪ Default Due Date – 3 months after Opposition/Motion to
Amend
▪ Follows discovery on Opposition and any Motion to Amend
▪ 15 pages
▪ No new issues or evidence permitted
▪ If want to file supplemental information, must move to so
within 1 month of trial institution
▪ If want to submit supplemental information later, motion must
show why information could not have been submitted earlier
Patent Owner’s Reply on Amendment
▪ Default Due Date – 1 Month after Petitioner’s Opposition to
Motion to amend
▪ 5 pages
▪ Can only address proposed claim amendments
Observations
▪ If a cross examination occurs after a party has filed its last
substantive paper, it may move to file “observations” on that
testimony.
▪ A concise, 1 paragraph statement of the relevance of the
identified testimony
▪ Opposing party may file a response, but many not file its own
observations without prior authorization
Motions to Exclude Evidence
▪ Time for filing set in scheduling order
▪ Must have properly preserved the objection
– If deposition evidence, must object at the deposition
– Evidence to cure the objection must be provided during the deposition,
unless parties stipulate otherwise
– If evidence submitted in petition, must serve objections within 10 days
of institution
– Otherwise, within 5 days of evidence submission
– Submitter has 10 days to serve supplemental evidence
▪ All evidence not subject to a motion to exclude will be
considered admissible
▪ Federal Rules of Evidence apply
Oral Hearing
▪
▪
▪
▪
▪
▪
Must be requested (time to do so set in schedule)
Within 9 months of institution
3 member panel of the Board
Likely no live testimony
No new evidence or arguments
Do not just rehash briefing
Final Written Decision and Appeals
▪
▪
▪
▪
Within 3 months of oral hearing
Can move for rehearing
Appeals taken to the Federal Circuit
ESTOPPEL
– Only attaches if there is a final decision
– PTO says only “on any ground that the petitioner raised or reasonably
could have raised during the trial.” 42.73(d).
– Congress says “on any ground that the petitioner raised or reasonably
could have raised during that …review” 35 U.S.C. § § 315(e)(1),
325(e)(1)
– Patent owner cannot pursue patentably indistinct claims or denied
specification amendments in another application
Top Ten Reasons To Use IPR or PGR
10. You want to save time and money
9. You have not been threatened with infringement
8. You like the better standards – “preponderance of the
evidence” and “broadest reasonable construction”
7. You want an alternative to arbitration in a license agreement
6. You do not like the venue where you were sued for
infringement
Top Ten Reasons To Use IPR or PGR
5. A jury would never understand your invalidity position
4. You want an invite to an ex parte action
3. You want 2 bites at the apple (Split invalidity claims or
invalidity/infringement)
2. Court-style discovery would hurt your position
1. The patent owner has far better witnesses
Owner’s Strategic Issues – IPR and PGR
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Short timeline means you must marshal resources quickly
Identify early what discovery is needed
File a preliminary response?
Use duty of candor
Take advantage of “inconsistent position” discovery
Assert patents in venues adverse to stays
Beware of intervening rights – do not make claim
amendments or arguments without considering broad impact.
▪ Beware of potential for estoppel