Inter Partes Review Part I: Pretrial

March 27, 2012

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we will explore the implications of these rules as they relate to the pretrial phase of IPR, from the standpoints of both the challenger and the patent owner.

Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
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Webinar Summary

  • Inter-partes Review
    • Anyone (except the patent owner) can file 9 months after issue/re-issue of a patent
    • Should be based on 102/103 grounds
    • Threshold: a reasonable likelihood that petitioner will prevail w/r/t at least one claim
    • Cost: up to 20 claims – $27,200; then rapidly increases! – PTO apparently wants to limit the number of challenged claims
      • With discovery makes it more expensive than IPRx
    • Kill rate expected to be comparable to IPRx (historically 11% of claims confirmed, 44% cancelled, 45% amended)
    • Speed: opens fast, instituted within 5 months of filing, dispensed 12/18 months of institution
  • Estoppel
    • The petitioner in an IPR that results in a final written decision may not:
      • Request or maintain a proceeding before the Office w/r/t reviewed claim on any ground that petitioner raised or reasonably could have raised during the IPR
      • Assert in a civil action that a reviewed claim is invalid on any ground that petitioner raised or could have raised during the IPR
    • IPRx standard is changed by adding the word “reasonably”
      • After-discovered art? Obscurity?
    • Consider EPRx to hedge bets? Implication of being estopped from maintaining the proceeding
  • Filing a petition
    • Fees, certificate of service, certifications, identify challenged claims, provide claim constructions, identify proposed rejections
    • 50 page limit, double spaced, 14 point font or larger (expect that this is strictly enforced!), more pages – need to move for interest of justice (different from good cause)
      • Does not include TOA, TOC, certificate of service, appendix or exhibits
      • Claim charts count towards the page limit, but a chart from another proceeding – does not
      • Interest of justice – tight standard, so the petitioner needs to have a strong case
        • Takeaway – PTO wants the petitioner to come out with the best arguments
      • Putting a chart into expert declaration? Bad idea – PTO won’t like expert declarations that resemble an argument; will likely count the chart towards the page limit
  • Claim construction
    • PTO is trying to encourage construing the terms with real disputes; do not construe terms that are clear
    • Alternative constructions confuse things, so don’t put them in the petition
  • Patent Owner Preliminary Response
    • No more than 2 months from the petition filing date; evidence may include why the petition is statutorily barred, why asserted references are not prior art, very clear failings of prior art
  • Decision on Petition
    • Includes scheduling order; articulates reasons for adopting/denying proposed grounds
    • Statute: This decision is final and non-appealable
    • BUT Proposed Trial Practice Guide: a dissatisfied party (i.e. petitioner) can request a rehearing before the Board, but the Board’s determination is final and non-appealable
    • Patent Owner can’t challenge the decision to institute the IPR
  • Update on Post Grant Statistics
    • Continued acceleration in quantity of IPR and CBM filings
      • No PGR petitions filed yet
    • IPR / CBM instituted in almost all cases but almost always with (significantly) pared down grounds and/or claims
    • Subject matter of patents is about 70% electrical / computer ; only 8% Bio / Pharma
    • Stays in related district court proceedings
      • Granted ~73% ; Denied ~27%
      • Primary factor in favor of stay: IPR is fast
      • Factors against stay:
        • advanced stage of litigation
        • premature (i.e., wait until IPR institution decision is made)
        • prejudice to patent owner
        • desire to resolve all litigation issues, including those not eligible in IPR

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