93 jptos 476 - iancu and haber, post-issuance proceedings in the america invents act

8/13/2019 93 JPTOS 476 - Iancu and Haber, Post-Issuance Proceedings in the America Invents Act

1/15

476

Pos t - I s suanceP ro ce e d in gs in theA m e ric a In ven ts A c t

Andrei. Iancu and Ben H aber*I I n t r o d u c t i o nPresident Obama signed the "AmericaInvents Act" ("the Act") on Septem ber 16,2011. Th is Act represents the culminationof m any years o f intense political debate,and m arks the mo st significant change inpatent law for almost 60 years. One keyprovision of the Act makes substantialchanges to p ost-issuance review of p atentvalidity within the United States Patentand Trademark Office (PTO). When theprovisions are implemented, 1 year postenactment, the PTO may become moreviable as an a lternative to district court lit-igation, for both patentees and potentialinfringement defendants with patentvalidity questions.

The first American patent act wassigned into law in 1790. For most of thet im e since then, there has been no way tochallenge an issued patent's validity out-side of federal court. Only relativelyrecently, in 1980 , did Congress create thefirst Reexam ination pro cess that could berequested by third parties. As first creat-ed, this process did not allow therequester to participate in the proce edingafter making the Reexamination request.It was not u ntil 1999, with the creation ofInter Partes Reexam, that a third partycould participate and actively oppose anissued patent. This latter procedure,howev er, was not quickly adopted by thepatent bar because there were several

* Andrei Iancu is a partner at Irell and Manella LLP in Lo s Angeles, California, and Ben Habe r is an associate at Irell and ManellaLLP and a J. D. candidate, class of 2012, at Loyola Law Schoo l of Los Angeles. The views expressed in this article are those of the autho rsonly, and do not reflect the views of Loyola Law Scho ol, Irell and Manella LLP, or any o f its clients.

1 This Act was called S.23 in the Senate, passed M arch 8, 2011, and H.R. 1249 in the Ho use, passed June 23, 2011. These two b illswere substantially similar, but did contain a few m inor differences. Rather then reconc ile the differences, the Senate abandone d itsversion of the Act and passed H.R. 1249 without amendment. Since H.R. 1249 is the version of the act which that was enacted, allcitations in this docum ent refer to H.R. 1249.


2/15

V O L 9 3 N O 4O S T - IS S U A N C E P R O C E E D I N G S IN T H E A M E R I C A I NV E N T S A C T77procedural defects: it was costly, timeconsuming, had potentially detrimentaleffects regarding both estoppel andappeal, and applied only to patentswhich issued on applications filed afterNovember 1, 1999. Some of these prob-lems were addressed with subsequentlegislation, yet som e issues p ersisted.The current A m erican system exists instark contrast to practice in other coun-tries. For example, opposition proceed-ings are available to ch allenge the va lidityof patents recently issued by theEuropean Patent Office. Additionally,both pre- and post- issuance oppositionhas long existed for United States trade-marks. It is against this backdrop thatCongress revamped the options availablein the PTO for post-issuance review ofrecently issued patents.

This article will describe the post-issuance proceedings available in the PTOwhen the America Invents Act is fullyimp lemen ted. In part II, we pro vide briefsummary of the procedures that wereavailable before passage of the Act. Inpart III, we p rovide a detailed descriptionand analysis of the options made avail-able by the A ct. Finally in part IV, we con -clude that Congress clearly intends tom ake the PTO a viable alternative to dis-trict court litigation for answering ques-tions of p atent validity.

I . C u r r e n t E x P a r t eand Inter Partes ReexamPrior to passage of the A ct, the on ly post-issuance review options have been ExParte Reexam a nd Inter Partes Reexam. Inan Ex Parte Reexam o nly the patentee andthe PTO participate, while the patentee,

PTO , and the third party requester all par-ticipate in an Inter Partes Reexam. See 3 5U.S.C. 302, 311. Accordingly, if thethird party wants to play a p art in the ulti-mate resolution, they must request anInter Partes Reexam. Both types ofReexam are only based on 102 and 103patents or printed publications that raisea substantial new question of patentabili-ty. 35 U.S.C. 301, 302, 311. The PT ODirector ("Director") orders a Reexamafter a requester raises this substantialnew question of patentability. 35 U.S.C. 303, 312. Experienced patent exam inersconduct the Reexam in much the sameway as primary examination. 35 U.S.C. 305, 314. The exam iner considers thepatent in light of the newly presentedprior art and issues rejections as app ropri-ate. The patentee then responds witheither argument or amendment to theclaims. See 35 U.S.C. 132, 133 . The thirdparty requester in an Inter Partes Reexamm ay also respond to each o f the patentee'sarguments or amendments. 35 U.S.C. 314. This amendment-and-responseexamination continues until the exam inereither issues a final rejection or allows theclaims. If the participants are dissatisfiedwith the actions of the examiner, eithermay appeal to the Board of PatentAppeals and Interferences (BPAI). TheBPA I will either send the case b ack to theexaminer or issue their own final deci-sion. Only after this, either partymayappeal to the Federal Circuit. 35 U.S.C. 306, 315. There is currently no timelimit on the p rocess, and Ex Parte Reexamcan take upwards of 24 months, whileInter Partes Reexam s could last upwardsof 3 years.


3/15

78NDREI IANCU AND BEN HABERP T O SSee http://www.uspto.gov/patents/EP _quarterly_report_March_2011.pdf;http: / / ww w.uspto.gov /patents /IP_quarterly_report_March_2011.pdf.

Once a final decision is reached in anInter Partes Reexam, the third partyrequester is estopped from raising in alater civil action any invalidity groundsthat it raised or could have raised duringthe Reexam . 35 U.S.C. 315.The current system has been widelycriticized because th ese op tions are lim it-ed and flawed in several key aspects. Asan initial m atter, since the y are limited toinvalidity grounds based only a smallsubset of prior art, the PTO is sim ply notavailable to adjudicate many potentialinvalidity controv ersies. Additionally, E xParte Reexam appears to some commen-tators as somewhat biased for the patent-ee; only the p atentee's argumen ts are pre-sented to the examiner and claims arecancelled only 11 % of the time. By thesam e token, Inter Partes Reexam has beenargued to favor the 3rd party requester;claim s subject to Inter Partes Reexam arecanceled or narrowed 87% of the time.Perhaps most importantly, however, isthe amount of time they take to reachfinality. This large amount of timeandresulting uncertaintyhas increasinglybeen questioned. Also, the relationship ofPTO proceedings to district court pro-ceedings has never been clear. Estoppeland other concerns cautioned practition-ers away from these procedures. In lightof these criticisms, the Act substantiallychanges the post-issuance review optionsof recently granted patents to addresssom e of these concerns.

III. Newly Created or ModifiedPost-Issuance Review OptionsThe Act substantially revamps theoptions available for the post-issuancereview of patents. It significantly modi-fies the existing Inter-Partes Reexamprocess (and renames it Inter PartesReview), creates a new process for thePost-grant Review of recently issuedpatents and a transitional program forPost-grant Review of certain businessmethod patents, creates a SupplementalExam ination p rocess to correct disclosureerrors made during patent prosecution,and increases the scope of informationwhich can be cited against issued patents.Some of these new post-issuance reviewoptions are largely "opposition" proceed-ings: they provide a potential infringe-ment defendant an alternative forum tocontest a patent's validity. These opposi-tion proc eedings will be mo re "trial-like,"rather then the traditional "amendment-and-response" format of primary exami-nation. Infringement defendants may bedrawn to the lower evidentiary burden,and potential for a faster answer to valid-ity questions. On the other hand, defen-dants were slow to accept the prior InterPartes Reexam process because of proce-dural defects. It rem ains to be seen if theAct's provisions will provide a markedimprovem ent over the prior Ex Parte andInter Partes Reexam options, but what scertain is that Congress intended to m akepost-issuance review at the PTO a moreattractive proposition.

We will discuss each of the availablereview options in turn. The variousoptions are summarized in the table onthe following page.


4/15

Who Can Fi le

Oprrently Available Options New/M odif ied Options f rom the America Invents ActCurrent Ex 1?arte Reexam Current Inter Partes Reexam Modified Inter Partes Review Post-grant Review Transi tional Post-grant R eviewo f Bu s i nes s Meth o ds Su pplementa l E x a mi na t i on Citation of Prior Art

Any person Any person other than thep ate n t own e r Any person other than thep ate n t own e rAny person other than thep ate n t own e r

Any person other than thep ate n t own e r tha t has b e e nsued for infr ingement based on

a co ver ed bu s i nes s meth o dpatentOn l y the p a te n t own e r Any person

Threshold Substantial new q uest ion ofpatentabil i ty Substantial new question ofpatentability*Reasonable likelyhood toprevail

More likely than not that claiminvalid

More likely than not that claiminvalid Substantial new question ofpatentability* N / A

Invalidity G rounds Patents and printedpublicationsPatents and printed

publicationsPatents and printed

publicationsAny invalidity ground; OR a

novel legal questionAny invalidi ty ground; OR a

novel legal question I nf o r ma t io n be l i eved to berelevant

A ny t i me bef o r e i neq u i ta b lec on d uc t is charged wi thparticularity in a civil action

atentee to Federal Court

Patents and printedpublications; OR any wri ttens ta te me n t sub M i t te d b y

Any timeime to File Any time during theenforceabil i ty of a patentAny t ime during the

enforceabi li ty of a patent f i ledafter Nov. 1999

After 9 months post- i ssue; ORafter Post-grant Review;

ANDNo later than 1 ye ar afterservice of infringmentcomplaint

Up to 9 months post i ssue of apatent subject to F irs t- to-Fi le Any t ime af ter service ofinfringment complaint

Who Can Participate Only patentee Patentee and s ingle partyrequesting Inter Partes ReexamPatentee, parties requesting

Inter Partes Reexarn, and otherjoined parties at the discretionof the PTO director

Patentee , parties requestingI n t er Pa r tes Reex a m , a nd o th erjoined parties at the discretion

of the PTO director

Patentee , parties requestinginter partes reexam, and otherjoined parties at the discretion

of the PTO directorOn l y p a te n t own e r Only party subm ittinginformation

Procedure A m e n dm e n t- a nd - re s po n se A m e n dm e n t- a nd - re s po n se Trial-like Trial-like Trial-like Ame n d me n t -an d - re sp on se Submission of informationonlyPr e- dec i s io n Se t t l emen t No No Y es Ye s Ye s No N oW h o C o ndu c t s th e Pr o cedu r e Patent examiners Patent examiners Patent Trial and Appeal Board Patent Trial and Appeal Board Patent Trial and Appeal Board P ate n t e xami n e rs N / AEstoppel in the PTO No

Yes, on issues that were raisedor could have been raised,whe n ap p e al s e xhaus te d

Yes, on issues that were raisedor could have been raised,

when PTA B issues decisisonYes, on issues that were raised

or could have been raised,when PTAB issues decisison

Yes, on issues that were raisedor could have been raised,

when PTAB issues decisisonNo N / A

Estoppel in Civil Actions NoYes, on issues that were raised

or could have been raised,whe n ap p e al s e xhaus te dYes, on issues that were raised

or could have been raised,when PTA B issues decisison

Y es, on issues that were raisedor could have been raised,

when PTAB issues decisisonYes, but only on issues actually

raised, when PTAB issuesdecisison

Prior art considered underSupplemental Examination

cannot be grounds forinequi table conduct insubsequent civil actions

No

N / A

N oppeal Patentee may appeal to BPAI,and then to Federal Circuit All part ies may appeal to BPAI,and then to Federal Circui tAll parties may appeal to

Federal CircuitAll parties may appeal to

Federal CircuitAll parties may appeal to

Federal CircuitC o de Sec t i o ns - 35 U . S . C . 302-307 31 1 - 31 8 31 1 - 31 9 32 1 - 32 9 H.R. 1249 sec. 18(a)- (d) 257 301NoThe current Ex ParteReexam is not significantlym o d i f i e d b y t h e A m e r i c aInvents Act 'Upon Enactment and beforemodified Inter Partes Review isavailable,hreshhold is raisedto a Reasonable likelyhood to

preva

*Modif ied Inter Partes Reviewco mple te ly r ep la ces the CurrentInter P ar te s Re e xam. 1 yearpost e n ac tme n t . Review basedon al l patents, regardless ofMina date.

*Program avai lable beginning in2012 and sunsets in 2020Reviewsed on all patents,regardless of filing date.

' If the information submit tedraises a substantial newquestion of patentabil i ty theprocedure is conducted as anEx P ar te Re e xam.


5/15

2 Additionally, further time may be added in cases involving complex joinder issues.

8 NDREI IANCU AND BEN HABERP T O SA. M od i fied In te r Pa r tes R ev iewThe current Inter Partes Reexam is heavi-ly modified and renamed "Inter PartesReview ". Im po rtantly, as in the prior pro-cedure, an Inter Partes Review must stillbe based only on p atents or printed publi-cations that qualify as 102 or 1 03 priorart. H.R. 1249 6 at 41, 3:5. The rest of theprocess, however, has been significantlyrevamped. See H.R. 1249 6 at 40-56. Themajor difference is that the entire proce-dure will be conduc ted in a m ore trial-likefashion, and can only be filed 9 monthsafter patent-issuance or after the co m ple-tion of any pending Post-grant reviews,wh ichever is later. Ad ditionally, a defen-dant to an infringement action cannotrequest Inter Partes Reexam m ore then 1year after being served with the com-plaint. H.R. 1249 6 at 45, 1:8. The proce sswill be presided over by the Patent Trialand Appeal Board staffed withAdministrative Law Judges, rather thenexaminers. There will be opportunities fordiscovery, a hearing, witnesses, joinder,and settlem ent. The process must be com -pleted within 1 year, except that an extra 6months may be added on a showing of"good cause."' These changes make InterPartes Review a very different procedurethen w hat w as previously available.1. Director's promulgationof regulationsThe A ct describes a skeletal framework forthe revamp ed Inter Partes Review. The actmandates that the Director shall promul-gate appropriate regulations to flesh outthe procedure no more than 1 year afterenactment. H.R. 1249 6 at 53, 15:19. The

act requires that the Director promulgateregulations regarding, am ong oth er things:

fees for Inter Partes Review,H.R. 1249 6 at 40, 16 :19;

substantive content of the petitionrequesting Inter Partes Review,H.R. 1249 6 at 47, 7:12;

procedures for con ducting an InterPartes Review, H.R. 1249 6 at 47-48;

the process by w hich Inter PartesReview files will becom e publiclyavailable, H.R. 1249 6 a t 47, 1:6;

procedures for the discovery ofrelevant evidence, H.R. 1249 6at 47, 16:22;

sanctions for abuse of the p rocess,H.R. 1249 6 at 47 , 23:25;

providing the patentee an opportuni-ty to amend the patent, H.R. 1249 6 at 48, 14:21;

provisions for joinder of parties and claims, H.R. 1249 6 at 49, 7:8; and

the right to an oral hea ring, H.R. 1249 6 at 48, 22:23.

2. PetitionsIn order to spark an Inter Partes Review, athird party must submit a petition to theDirector. Essentially, the petition is simplya written request which identifies thepatent at issue, and identifies why therequestor believes the patent to b e invalid.The Director will determine whether ornot to begin the Inter Parted Reexamprocess base d on this petition.

To initiate an Inter Partes Review, arequester may p etition the Director begin-


6/15

V O L 9 3 N O 4O S T - 1 S S U A N C E P R O C E E D I NG S I N T H E A M E R I C A I N VE N T S A C T8 1ning only 9 months after the patent'sissue or reissue, or after the term ination ofa Post-grant Rev iew, which e ver is later.H.R. 1249 6 at 41 , 6:12. Additionally, adefendant to an infringement action cannot request Inter Partes Reexam morethen 1 year after being served with thecom plaint. H.R. 1249 6 at 45, 1:8. This isa key change, as there was p reviously nol imit on w henor even how m anyInterPartes Review s could be filed by infringe-m ent defendants in ongoing litigation.

The p etition m ust identify, with partic-ularity, each claim challenged, thegrounds upo n which it is challenged, andthe specific evidence which supportsthose grounds. Further , the p etition m ustidentify the real party in interest. H.R.1249 6 at 4 1, 19:25. The p etition itself willultimately be ava ilable for public inspe c-tion. H.R. 1249 6 at 42, 13:15. A paten teehas the opportunity to respond to thepetition and argue that reexamination isunw arranted. H.R. 1249 6 at 42, 17:22.The D irector must respond to the petitionwithin 3-months from the receipt of thepatentee's response, or the deadline forresponse, wh ichever is earlier. H.R. 1249 6 at 43, 6:13. The Director may notauthorize an Inter Partes Review unlessthe petition and response show "thatthere is a reasonable likelihood that thepetitioner wou ld prevail with respect to atleast 1 of the claims challenged." H.R.1249 6 at 42-43.

No t only has the thresh old for initiatingan Inter Partes Review been altered, them andate to the Director has been alteredas well. In the prior 313, the Directorwas required to initiate an Inter PartesReview if the petition raised a substantialnew question of patentability. See 3 5U.S.C. 313. Proposed 31 4, howe ver, isworded in the negative, with no affirma-

t ive m andate: an Inter Partes Review cannot be ordered unless the thresho ld is met.H.R. 1249 6 at 42-43. This m ay leave theDirector discretion to deny an Inter PartesReview even if the threshold smet.Additionally, prior 312 required theDirector to determine whether the peti-tion raised a substantial new question ofpatentability and act accordingly; thecharge to the Director was to determinethe threshold condition and begin theInter Partes Review if the threshold wasmet. Proposed 314, on the other hand,requires that the Director determinewhe ther or not to institute an Inter PartesReviewnot specifically directed to adetermination of the threshold condi-tion based on the petition and response.H.R. 1249 6 at 43, 6:9. The current chargeto the Director is to determine whe ther ornot to institute an Inter Partes Review, butonly if the thresho ld is m et. The Directormay thus retain some discretion in deter-mining whether or not to proceeddis-cretion lacking in the prior procedu re.3. ProceedingsOn ce initiated, Inter Partes Re views w illbe conducted by the Patent Trial andAppeals Board (PTAB)the renamedBoard of Patent Appeals and Inter-ferencesrather than by patent examin-ers. H.R. 1249 6 at 49, 18:21 . This changeis im portant because it m akes the processm uch m ore trial-like than the prior proce-dure. Presumably, the process will bepresided over by 3 Administrative LawJudges. H.R. 1249 7 at 76, 20:25.Ad ditionally, the proce eding will con sistof trial-like mechanisms not available inthe prior amendment-and-response for-m at, including: discovery of relevant evidence, right to an oral hearing, potentialjoinder of parties and actions, and an


7/15

482NDREI IANCU AND BEN HABERPTOSopp ortunity to am end the claims at issue.Claim amendments cannot broaden thescope of claims or add new matter. H.R.1249 6 at 50, 12:14. The requester bearsthe burden of proving the claims invalidby a prepond erance of the evidence. H.R.1249 6 at 50, 15:18. Most imp ortantly todefendants, this burden is lower then theclear and convincing evidence required toovercom e the 282 presum ption of valid-ity applied in district court.4. Settlem entAfter it begins, the p atentee and requestercan agree to terminate an Inter PartesReview at any time b efore the issuance ofa decision by the P TAB . A w ritten settle-m ent may be reache d with respect to anyor all of the third parties. H.R. 1249 6 at50-51. If all participants settle, then thePTO may either terminate the proceed-ings or issue a final written decision. H.R.1249 6 at 51, 4:7. Additionally, no estop-pel will attach to any petitioner that settlesbefore the PTAB decides the case. H.R.1249 6 at 51, 1:4. Settlements must befiled in writing with the PTO , but m ay bekept con fidential if requested . H.R. 12496 at 51, 8:21.

It is unclear what effect a settlementwould have on the validity of the patentat issue, but this provision raises severalintriguing questions. Settlement m ay be apreferable resolution to co nflicts in districtcourt, but patents are unique because theyimp licate broader p ublic rights. Wh ile theparties could reach a mutually agreeabledecision amongst themselves, the PTOmay choose not to allow their privateagreement to effect the validity of thepatent. Because patents are a matter ofpublic rights, should validity be decidedby private entities? Since under the newstandard there need be no "substantial

new question of patentability," should thepatent still be presumptively valid,regardless of the parties' settlement? Inthis case, the Director can terminate theInter Partes Review without a ruling onthe merits. On the other hand, proposed 317 gives the Director discretion to con-tinue an Inter Partes Review and issue adecision invalidating or upholding theclaims even after a settlement. H.R. 12496 at 51, 5:7.5. Decision and appealBecause of the prior procedure's longduration and resu lting criticism s, the Actsets a strict deadline for com pletion of anInter Partes Review. If the Inter PartesReview does not settle, then the PTABm ust issue a final written decision within1 year of granting the petition. TheDirector may extend this deadline up toan additional 6 months on a showing ofgood cause. H.R. 1249 6 at 48-49. TheDirector m ust publish a final written deci-sion in a certificate that cancels unpatentable claims, confirms patentableclaim s, and incorporates amended claimsas app ropriate. H.R. 1249 6 at 52, 5:13.Additionally, any new or am ended claimsmay create intervening rights as definedby 35 U.S.C. 252. H.R. 1249 6 at 52,14:23. Should any party be dissatisfiedwith the PTAB's ruling, all parties havethe right of appeal to the Fe deral Circuit,and any party to the Inter Partes Reviewmay participate in the appeal. H.R. 1249 6 at 53, 4:9. This direct appeal to theFederal Circuit should shorten the dura-tion at the PTO . Since examiners conduct-ed the prior proced ure, appeal had to firstbe taken to the BPAI before being heardby the Federal Circuit. Eliminating theneed for an intermediate appeal shouldspeed along the p rocess.


8/15

V O L 9 3 N O 4O S T - IS S U A N C E P R O C E E D I N G S I N T H E A M E R I C A I N V E N T S A C T8 3It is important to note that the require-m ent to com plete an Inter Partes Reviewwithin 1 year will likely challenge thePTO 's resources. The current Inter PartesReexam process can be, extremely lengthy,with som e of the earliest taking mo re than7 years. Even current Ex Parte Reexamstake an average of 24 mon ths. Further, thePTO has historically had both fundingand personnel shortages, and may behard-pressed to meet the required dead-lines. Since the proc eedings will generallybe more "trial-like,"--including discov-ery, witnesses, and an oral hearing,among other thingsthis may furtherincrease the burden on the PTO. TheDirector's rulemaking will have to dealwith this potential added burden.6. Relation to other p roceedingsAnother stumbling block on the path towide adoption of the p rior procedures hasbeen the relationship of post-issuancereview to other proceedings. The threat ofvarious unforeseen estoppels has cau-tioned some practitioners away fromthese proceedings. Additionally, districtcourts have no t always been consistent intheir treatm ent of proceedings pending atthe PT O. To address these unce rtainties,the Act sets out the relationship of anInter Partes Review to other p roceedings,both in district court and in the PTO.Firstly, an Inter Partes Review cann ot beinstituted by a party that: 1.) has filed acivil-action co ntesting the va lidity of thepatent, H.R. 1249 6 at 44, 1:6, or 2.) hasbeen served a com plaint alleging infringe-ment of the patent more than 1 yearbefore filing the Inter Partes Rev iew peti-tion 3 , H.R. 1249 6 at 45, 1:8. A co unter-

claim of patent invalidity in an infringe-ment action does not act as a civil actionthat would bar an Inter Partes Review.H.R. 1249 6 at 4 4, 20:24.

If the petitioner files a civil action ch al-lenging the p atent's validity after reque st-ing Inter Partes Review, the civil actionwill be automatically stayed until thepatent owner moves the court to Jiff thestay, the patent owner files an actionalleging the requester's infringement, orthe requester moves to dismiss the civilaction. H.R. 1249 6 at 44, 7:1 9. It is inter-esting to note that the Act contains noprovision to l ift the stay when the PTA Bissues a decision or the matter otherwisesettles. Essentially, after settlement, thecivil action w ill resume only if the patent-ee so requests. The third party requestermay only move the court to dismiss theaction, not to resum e it.

During the matter's pendency at thePTO, the Director has the authority tostay, transfer, consolidate or terminateany other pending proceeding involvingthe same patent. H.R. 1249 6 at 45, 17 :24.Once decided, a requester may not main-tain a PTO pro ceeding with respect to thesame claim on any ground that it raised orreasonably could have raised during thedecided Inter Partes Review. H.R. 1249 6at 46, 1:9. This provision seems to estopp"proceedings" at the PTO , not only InterPartes Reviews. It remains to be seen how"proce eding," as used in this code section,will be interpreted. If "proceeding" is nar-rowly construed, then the third partyrequester may be freer to return to thePTO many times. If it is broadly con-strued, then the third party's returnoptions will be more limited. It is likely

3 The prohibition against instituting an. Inter Partes Review m ore than 1 year after being served with an infringement action doesnot appear to have a tem poral limit. Accordingly, a party may no t be able to request an Inter Partes Review if it was served with aninfringement action in a pending, settled, or decided suit before this provision's enactment. The new procedures will be implemented 1year after enactment, so any defendant in a suit pending upon enactment may be time-barred based on the infringement filing.


9/15

that "proceeding" will be broadly con-strued to ensure th at all issues are brough tout as quickly as possible to encourageprompt resolution of all validity ques-tions. Further, the petitioner is estoppedfrom assertingin a district court or theInternational Trade Commissiontheinvalidity of the claim o n any groun d thatit raised or reasonably could have raisedduring the Inter Partes Review . H.R. 1249 6 at 46, 10:21. . Estoppel attaches whenthe the P TAB issues its final written deci-sion. Id This does not appear to requirethe exha ustion of all possible app eals, asrequired by current 315. Current 315states that estoppel applies when theclaim is finally determined to be valid,which is interpreted to include theexhaustion of all possible appeals. 35U.S.0 315. The language for the newstatutes instead expressly states thatestoppel applies once the PT AB issues itsfinal written decision, thus before theexhaustion o f all possible app eals.7. ImplementationInter Partes Review will be available forall current patents and applications, andall future issued patents, beginning 1 yearafter the statute's enactment. H.R. 1249 6at 53-54. This is different then the currentprocedure, which was only available topatents issued on applications filed afterNo vem ber 29, 1999. The new procedure,on the other hand, is available to anypatent, regardless of when its application, was filed. For the first 4 years of the pro-gram 's availability, the Director m ay lim itthe number of Inter Partes Reviewrequests that the PTO accepts. H.R. 1249 6 at 54, 3:14. Essentially, Congress is pro-viding the PTO with some flexibility inthe am ount of cases i t accepts, in order to

ease the burden on the PT O as it begins toimplement the procedure.B. Post grant Review

In addition to modifying Inter PartesReview, the Act also creates the new Post-grant Review procedure. This new proce-dure addresses o ne of the key deficienciesof the currently available post-issuancereview op tions: the lim ited subset of inva-lidity grounds which may be asserted.Post-grant Review may be requested onany invalidity ground. The Post-grantReview p rocedu re in the Act is largely thesame as Inter Partes Review describedabove, with a few notable exceptions.These include the range of potentialgrounds for invalidity, the time windowto file, the grounds on w hich the D irectorwill grant the pe tition, and the relation tocertain other proceedings. Most impor-tantly, however, Post-Grant Review mustbe filed in the 9 month window after apatent 's issue; the w indow in w hich InterPartes Review cannot yet be filed. Theremainder of the procedure is exactly asdescribed for Inter Partes Reviews, andthese identical features will not be repe at-ed. See H.R. 1249 6 at 56-72.1. Po tential invalidity groundsPost-grant Review can be requested onany invalidity grounds contained in 35U.S.C. 282. H.R. 1249 6 at 57, 10:14 .This includes any type of invalidatingprior artincluding patents or printedpublications, failure to comply with therequirements of 35 U.S.C. 11 2 or 251, orany other unpatentability grounds con-tained in Part II of T itle 35. See 35 U.S.C. 282. Post-grant Review focuses only onthe p ortions of 282 relating to invalidity;not the po rtions relating to defenses, non-

484NDREI IANCU AND BEN HABERPTOS


10/15

V O L 9 3 N O 4O S T - IS S U A N C E P R O C E E D I N G S I N T H E A M E R I C A I N V E N T S A C T85infringment, or unenforceability. Import-antly, Part II of Title 35 includesunpatentability grounds that are notbased on prior art at all. These includepatentable subject matter and utilityunder 101, for exam ple.2. Time windowAs opposed to an Inter Partes Review, aPost-grant Review m ust be filed within 9m onths of paten t issuance. H.R. 1249 6 at57, 15:18. Additionally, the 9 mo nth win-dow applies to the date of a patent's reis-sue only if the claim was broadened dur-ing the reissue process. If the claim in thereissue is unchanged or narrowed fromthe original, then the 9 month windowapplies to the original patent's issue date.H.R. 1249 6 at 6 3, 18:24. This distinctiondoes not app ear in the Inter Partes Reviewsection, implying that an Inter PartesReview m ust be filed 9 m onths after a reis-sue, regardless of the scope of the result-ing claims. Also, there is no restriction onfiling Post-grant Review based on o ngoinginfringem ent litigation as is the case forInter Partes Review. The fact that Post-grant Review c an only be filed in this lim-ited window, while Inter partes Reviewcan be filed any time 9 m onths after issueis a key distinction. 4 Inter Partes Reviewwill consider a much smaller set of inva-lidity grounds, but will be available topotential infringement defendants for amuch longer timepotentially for theentire term of a patent.3. Grounds to grant a petitionThe grounds upon which the Director

m ay grant a p etition a re also slightly different from an Inter Partes Review. Therequest may be granted if: 1.) the informa-tion in the petition, if unrebutted, m akes itmore likely than not that the challengedclaim is invalid', or 2.) the pe tition raisesnovel or u nsettled legal questions that areimportant to other patents or applica-tions. H.R. 1249 6 at 59, 12:23. Furth er,when evaluating the threshold condition,the Director is not required to considerthe patentee's responseas opposed toInter Partes Review. The fact that theDirector m ay accept a petition because ofnovel or unsettled legal theories is espe-cially intriguing. The PTO doe s not havethe authority to substantively create lawor rules; legal questions regarding pa tentlaw are reserved for the Federal Circuit.The Act may thus grant discretion thatincreases the PTO's ability to considerand d ecide nov el legal questions.

Additionally, in evaluating a petition,the Director may take into accountwhether and reject a petition becausethe sam e or substantially sim ilar prior artor arguments were previously presentedto the PTO. H.R. 1249 6 at 62, 15:20."Previously presented" is not limited topreviously presented in a Post-grantReview. Accordingly, to the extent thatarguments w ere previously present in n yproceeding before the PTO, such as pri-mary examination, Inter Partes Review,Ex Parte Reexam , etc., the Director has thediscretion to reject the petition.4. Relation to othe r proceedingsAll of the relations to other proceedings

4 This raises another interesting observation. These timing rules becom e effective one year post enactm ent, but the first patentsubject to Post-grant Review w ill not be ava ilable for another several years. This means th at, until the first patent subject to Post-grantReview is available, there will be a 9-mo nth gap po st-issuance in which n one of these "trial-like" proceedings cou ld possibly occur.

5 The w ording here, wh ile similar, is slightly different than the com parable wo rding for Inter Partes Review. It is not clear from theact why the wording is different, so it is not clear wh at effect this slight variation will have. The com parable language for inter PartesReview requires a "reason able likelihood" o f success. To the extent that a "reaso nable likelihood " of success is easier to establish then"mo re likely then not," it may be easier to spark an Inter Partes Review than a Post-grant Review.


11/15

86NDREI IANCU AND BEN HABERP T O Sthat apply to Inter Partes Reviews alsoapply to Post-grant Reviews, with oneaddition regarding preliminary injunctionrequests. If the patentee files an infringe-m ent action within 3 m onths of the patent'sissuance, a court m ay not stay its consider-ation of a preliminary injunction m otion onthe basis of a Po st-grant Review. H.R. 1249 6 at 6 1, 17 :24. Additionally, it is unclearhow a Post-grant Review will relate toInter Partes Review. The grounds o n whicha petitioner can rely when requesting aPost-grant Review encom pass the limitedscope of prior art that may form thegrounds for an Inter Partes Review.Accordingly, a petitioner for Post-grantReview m ay be barred from later filing anInter Partes Review, since he reasonablycould have raised any of the sam e issues inthe first proceeding.5. Implem entationPost-grant Review will be available 1 yearpost enactment. Importantly, however,Post-grant Review is only available forpatents issued on a pplications filed underthe new First-Inventor-To-File rules. SeeH.R. 1249 at 70, 19:25; H .R. 1249 at 23-24.This is different than Inter Partes Rev iew,which is available o n all patents, regardlessof filing date. Because of this limitation,Post-grant Review, once implem ented in 12months, will simply not be available forsom e patents; Inter Partes Review w ill bethe only p ossible third party review o ption.Oddly, this means that the p rogram w ill beeffective before there are any patents onwhich it could possible apply; the First-Inventor-To-F ile rules are not effective until18 m onths post-enactment. H.R. 1249 at 23-24. Additionally, since the p atent must i s s u e

on an app lication so filed, the first patentm ay not be available for an additional num-ber years. Accordingly, the first possiblePost-grant Review w ill not likely occur foranother several years, at a minimum .C. Post grant Reviewof Bus iness Me thod Paten ts

Because of the ongoing and continuallymounting criticism of business methodpatents, the Act man dates the creation of atransitional program to review any cov-ered business method patent. It is impor-tant to recognize that "covered businessm ethods" are lim ited to those relating to a"financial product or service." This seemsto limit this provision's applicability toonly pate nts in the financial industry, butthis is far from certain due to a m biguitiesin the statutory text.' The Director has 1year to promulgate rules defining thisprogram. H .R. 1249 18 at 119-20. For themost part, the rules governing this pro-gram w ill be the same a s those governingPost-grant Review, with the e xception ofproposed : 321(c), post-issuance tim e tofile; 325(b), regarding stays of p reliminaryinjunctions; 325(e)(2), estoppel in civilactions and before the ITC; and 325(f),limitations based on reissued patents.H.R. 1249 1 8 at 120, 4:13. Ad ditionally,there is a slight limitation to the prior artavailable to assert invalidity under 1 02or 103. H.R. 1249 1 8 at 120-21. All otherPost-grant Review rules remain applica-ble to the transitional Post-grant Reviewof covered business method p atents.1.. Covered business method patentA covered business method patent is "apatent that claims a m ethod or correspon-

6 Com men tators have described this code section as being cham pioned by the financial services industry, and directed at a specificnon-practicing entity which owns a h otly contested business method related to ch eck clearing. This may or may not be the ca se, but theprocedure potentially has broader applicability. It remains to be seen if the program's applicability will be narrowly or broadlyconstrued.


12/15

V O L 9 3 N O 4O S T - IS S U A N C E P R O C E E D I N G S I N T H E A M E R I C A I N V E N T S A C T87ding apparatus for performing data pro-cessing or other operations used in thepractice, adm inistration, or m anagement ofta financial product or service, except thatthe term do es not include patents for tech-nological inventions." H.R. 1249 18 at124-25. To assist in the program 's imp le-m entation, the Act calls for the Director toissue regulations for determining whethera patent is for a technological invention.H.R. 1249 18 at 125, 3:7. While "businessm ethod" p atents are often criticized, defin-ing whether a p atent is a covered businessm ethod under th is definition will be diffi-cult. The p roposed co de provides a de fini-tion, but is chock-full of am biguities: Whatis "data processing"? W hat are "other serv-ices"? Wh at is a "financial service"? W hatis a "technological invention"? Businessmethod patents represent a significantinvestment and income to the patent'sholders, and this transitional program callsthese patents' validity into question. Patentholde rs will fiercely fight the identificationof their patents as "covered business m eth-ods," while potential defendants willstrongly argue the opposite. This is theheart of the transitional program, so patent-ees will want to narrow this provision'sapplicability as much as possible.Defendants, on the other hand, shouldstrive to exploit and broaden the am bigui-ties as much as p ossible. This provision anddefinition are very likely to be the subject ofongoing debate and fierce legal wrangling.2. Scope o f prior art forinvalidity under 102 or 103If the petition for review under the transi-tional program asserts invalidity ongrounds raised by 102 or 103, thenonly a limited subset of 102 prior artmay be used, H.R. 1249 18 at 120-21:only prior art as defined by 102(a), as it

exists before the enactment of this Act, orprior art disclosed 1 year before the filingdate of the patent at issue that would becovered by 102(a) had the disclosurebeen m ade by one o ther than the inventor.H.R. 1249 18 at 121, 1:19. All othergrounds for invalidity under the newPost-grant Review procedure remainuncha nged and ava ilable to a petitioner inthe transitional program.3. TimingMost importantly, there is no timingrestriction based o n the pa tent issue date.Post grant review can be im plemen ted atany time after the issuance of a coveredbusiness me thod patent, but only after thepetitioner has been sued or charged withinfringement. H.R. 1249 18 at 120, 10:20.This provision does not have a temporallim itation. In other w ords, the transitionalprogram applies to all covered businessmethod patents, regardless of when theywere filed, unlike regular Post-grantReview, and similar to Inter PartesReview. Consequently, a defendant thathas been charged with infringement in asuit that is pending, settled, or evendecided before enactment may beallowed to file a petition under the transi-tional program. This raises further ques-tions relating to prior civil actions. Howfar back does this extend? W ould a defen-dant in a suit that settled 5 years ago andis now un der an injunction o r forced roy-alty arrangemen t be able to file a petitionunder the transitional program ? The p laintext of the bill may allow th is to occur.

Add itionally, the transitional programhas a sunset provision-8 years post-implementation, H.R. 1249 18 at 122,22:25after which time the program willterminate. Accordingly, any review underthe transitional program must be filed


13/15

88NDREI IANCU AND BEN HABERP T O Swithin the 8 year window following theprogram's implementation; implementa-tion will be 1 year postenactment, i.e.Septem ber 16, 2012. As long as a request isfiled before the program sunsets in 2020,review will proceed even after the pro-gram terminates, as needed. H.R. 1249 18 at 123, 4:10.4. Relationship to o ther proceedingsThe relationship to certain o ther proceed-ings from Inter Partes Review and Post-grant Review do not apply to the transi-tional program. The key provisions in thisregard are the ability of defendants inongoing infringement suits to request astay, and the estoppel effect of a reviewunder the transitional program. Whenconsidering whether to grant a stay basedon a review requested under the transi-tional program, a district court is directedto consider w hether: 1.) a stay w ill simpli-fy issues for trial, 2.) discovery is completeor a trial date has been set, 3.) a stay wo uldunduly prejudice the nonmoving party,and 4.) a stay would reduce the burden o flitigation o n the p arties or court. Further, aparty may take an imm ediate interlocuto-ry appeal to the Federal Circuit regardingthe district courts decision. H.R. 1249 1 8at 123-24. Also, estoppel in later civilactions only applies to issues that the peti-tioner actually raised in the review underthe transitional program, H .R. 1249 18 at121-22, rather than the raised o r reason ablycou ld have raised standard from P ost-grantReview and Inter Partes Review.D . C it a t io n o f P r io r A r ta n d W r it te n S ta t e m e n t sAlthough currently available to a lesserextent, and not an oppo sition procee ding,the Act expands upon the ability to citeinformation relating to issued patents,

and identifies the relationship of suchcited information to later filed op positionproceedings. This is important beca use i tallows potential infringement defendantsto preem ptively com pile a broad range ofadverse information, before ever filingany oppo sition procee ding. H.R. 1249 6at 72-75. As in the current law, informa-tion can be cited at any time and by anyparty. H.R. 1249 6 at 72, 22:23.Add itionally, prior art cited can o nly con-sist of patents or printed pub lications, andmust be accompanied by a written state-m ent describing their relevancy to a t leastone claim. H.R. 1249 6 at 72-73. The Ac talso expands upon the information thatmay be cited to include statements filedby the patentee in a federal court or thePTO, in which the patentee took a posi-tion on the scope o f a claim in the pa tent.H.R. 1249 6 at 73, 3:6. Other docum ents,such as pleadings and evidence from theproceeding in which the patentee madethe statement, may be submitted alongwith the statement. All of this submittedinformation will be included in thepatent's official file wrapper. H .R. 1249 6at 73, 14:18. This information, however,will not be used by the PTO for any pur-pose other than determining the properm eaning of a claim in a proceeding under 304, Ex P arte Reexam, 314, Inter PartesReview, or 324 P ost-grant Review. H.R.1249 6 at 73-74.E. Supplementa l Examina t ionThe last post-issuance review op tion is thenewly created Supplemental Exam-ination. This is not an opposition proce-dure, as it is conducted ex parte, and m ayonly.be filed by the patent ow ner unlikethe traditional Ex Parte Reexam whichm ay be filed by any party. The purpose ofthis procedure is to allow a patent owner


14/15

V O L 9 3 N O 4O S T - IS S U A N C E P R O C E E D I NG S I N T H E A M E R I C A I NV E N T S A C T8 9to submitafter a patent has issued--information to the PTO to consider, recon-sider, or correct, in order to, am ong otherthings, preempt a charge of inequitableconduct in a district court. The actualexamination is conducted similar to an ExParte Reexam, with som e exceptions.1. RequestOnly the patent ownerwho may notnecessarily be the inventor can requestSupplemental Examination. H.R. 1249 12 at 1 09, 18:22. The Director will estab-lish regulations regarding what may besubm itted and considered, but the statutedoe s not expressly lim it it to paten ts andprinted publications as in traditional ExParte Reexam. H.R. 1249 12 at 112, 11:15.Supplement Examination may be basedon "information believed to be relevant tothe patent," limited according to theDirector's regulations. H.R. 1249 1 2 at109, 20:22. It remains to be seen ho w theDirector will define the scope of this"information." After the request has beenreceived, the Director has 3 months toconduct the Supplemental Examination,and issue a certificate indicating w hetherthe submitted information raises a sub-stantial new question of patentability.H.R. 1249 12 at 1 09-10.2. ReexaminationIf there is a substantial new question ofpatentability, then a reexam ination will beordered, largely adhering to the tradition-al Ex Parte Reexam procedures. The twodifferences are that the patent owner doesnot have a right to file a statement pur-suant to 304, H .R. 1249 12 at 110, 4:16,and reexamination will be terminated ifthe Director uncovers actual or attem ptedfraud on the PTO, H.R. 1249 1 2 at 112-13.Should such fraud be uncovered, the

Director shall refer the matter to theAttorney Ge neral. H.R. 1249 12 at 11 2-13. The purpose of the reexamination is toconsider, reconsider, or supplement theinformation that was before the exam inerduring primary prosecution. H.R. 1249 12 at 109, 19 :20. If there was an uninten-tional non-disclosure of m aterial prior art,for example, a patentee may request aSupplemental Examination so that thePTO can evaluate the patent in light ofthis previously undisclosed information.

The threat of referral to the AttorneyGeneral may caution patent owners awayfrom this option. If the D irector uncoversfraud, the matter m u s t be referred to theAttorney Ge neral; the D irector retains nodiscretion. H.R. 1249 12 at 11 2-13. This issomew hat unusual, since there is no com -parable mandate to refer a matter to theAttorney G eneral if fraud is uncovered bythe co urts. Accordingly, especially in lightof the high bars set by xcergen andTherasense that limit a defendant's abilityto succeed on an inequitable conductdefense, a patent owner may decide totake his chances in the courts.3. EffectIf a patentee requests a SupplementalExamination, any information consid-ered, reconsidered or corrected cannotform the basis of p atent unenforceabili tyunder 282, regardless of wheth er or notthe D irector finds a substantial new ques-tion of patentability. The m ere act of sub-m itting the request is enough to shield thepatentee. Additionally, whether a patent-ee requests Supplemental Examination isirrelevant to patent enforceability. H.R.1249 12 at 1 10-11. Essentially, Supple-m ental Exam ination provides a means tocorrect inadvertent disclosure errorsm ade during the course of prosecu tion, in


15/15

order to pre-em pt a charge of inequitableconduct. Once a charge has been made ina pending civil action, however, a subse-quently filed Supplemental Examinationwill not protect the patentee. In otherwords, the request for SupplementalExamination cannot be made after anunenforceability allegation plead withparticularitysuch as inequitable con-duct. H.R. 1249 12 at 111, 3:25

I v . Co nc lus ionThe America Invents Act contains provi-sions that heavily revamp the optionsavailable for post-issuance review ofpatents. The A ct significantly m odifies theexisting Inter-Partes Reexam process, cre-ates a new process for the Post-grantReview of recently issued patents, andintroduces a transitional program forPost-grant Review of certain businessmethod patents. The Act also creates aSupplemental Examination process to cor-rect disclosure errors m ade d uring patentprosecution, and increases the scope of

information which can be cited againstissued patents. These new procedures willsubstantially im pact the strategies of bo thpaten tees and po tential infringers. Wh ileproviding some b enefit to patentees, withthe new avenue to shield againstinequitable conduct charges, the greatestbenefit appears to have been provided topoten tial infringers and o ther paten t chal-lengers. Commentators have argued thatpotential infringers now have tools todrastically increase the transaction costsassociated with procuring patents, andcan affirmatively act to minimize anydownsides. It remains to be seen exactlyhow the patent community will act toaccept these new op tions, but the Act hasthe potential to drastically alter the patentlandscape. It is clearly the intention ofCongress to make the PTO a viable forumfor answe ring questions of p atent validityin a true alterna tive to district cou rt litiga-tion. Patentees and defendants m ust nowdetermine their strategies in light of thisnew, an d po tentially attractive, forum.

9 NDREI IANCU AND BEN HABERP T O S

93 jptos 476 - iancu and haber, post-issuance proceedings in the america invents act

Documents

"avram iancu" oradea

iancu ionut

ucla invents 2009

ucla invents 2008

petits grans invents

els invents

els nostres invents

personal information iancu ovidiu gabriel bd. carol …iancu...

avram iancu

plangere iancu 2

invents creats

balaban iancu mucundorfeanu

els nostres invents!

avram iancu school

03 iancu & iancu

simply invents

invents 2014 report

iancu octavian.pptx

projecte els invents

iancu victor