leahy-smith america invents act some prosecution and litigation perspectives jeffrey d. mills dean...

Leahy-Smith Leahy-Smith America Invents ActAmerica Invents ActSome Prosecution and Some Prosecution and Litigation PerspectivesLitigation Perspectives

Jeffrey D. MillsJeffrey D. Mills

Dean M. MunyonDean M. Munyon

Austin Intellectual Property Law AssociationAustin Intellectual Property Law Association

November 15, 2011November 15, 2011

OverviewOverview

Changes to Sections 102 and Changes to Sections 102 and 103 103

Post-Grant ProceduresPost-Grant Procedures Litigation-Related TopicsLitigation-Related Topics

Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011

How To Vote Via How To Vote Via TextingTexting

Standard texting rates only (worst case US $0.20)We have no access to your phone number

EXAMPLE


How To Vote Via How To Vote Via Poll4.comPoll4.com

EXAMPLE


How To Vote via How To Vote via TwitterTwitter

Since @poll is the first word, your followers will not receive this tweet

EXAMPLE


What is your favorite color?

Red 342428 Blue 342429 Green 342430 Yellow 342431 Other 342432

Changes to 102 and 103Changes to 102 and 103

Sec. 3 of AIASec. 3 of AIA Section 102 rewrittenSection 102 rewritten First-to-fileFirst-to-file

Invention date no longer relevant inquiryInvention date no longer relevant inquiry No more Rule 131 declarationsNo more Rule 131 declarations Interferences eliminatedInterferences eliminated 35 USC 102(g), 104 repealed35 USC 102(g), 104 repealed

Grace Period Grace Period UncertaintyUncertainty


““Effective Filing Date” Effective Filing Date” (EFD)(EFD)

Changes apply to applications with claims Changes apply to applications with claims having “effective filing date” on or after having “effective filing date” on or after March 16, 2013.March 16, 2013.

EFD of claimed invention is either:EFD of claimed invention is either: Date of Priority Claim (e.g., filing date of parent Date of Priority Claim (e.g., filing date of parent

application that discloses claimed invention); orapplication that discloses claimed invention); or Actual Filing Date.Actual Filing Date.

Defined in Sec. 100(i) for “claimed Defined in Sec. 100(i) for “claimed invention.” invention.”

Defined in Sec. 102(d) (“effectively filed”) for Defined in Sec. 102(d) (“effectively filed”) for patent/application prior art under 102(a)(2).patent/application prior art under 102(a)(2).


Section 100(i): EFD for Section 100(i): EFD for Claimed InventionClaimed Invention

(i)(1) The term “effective filing date” for a (i)(1) The term “effective filing date” for a claimed invention in a patent or application for claimed invention in a patent or application for patent means– patent means–

(A) if subparagraph (B) does not apply, the (A) if subparagraph (B) does not apply, the actual filing date of the patent or the actual filing date of the patent or the application for the patent containing a claim application for the patent containing a claim to the invention; orto the invention; or

(B) the filing date of the earliest application (B) the filing date of the earliest application for which the patent or application is entitled, for which the patent or application is entitled, as to such invention, to a right of priority as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section benefit of an earlier filing date under section 120, 121, or 365(c). 120, 121, or 365(c).


Question 1Question 1

Which of the following does the AIA Which of the following does the AIA change change the mostthe most from a prior art from a prior art perspective?perspective? (A) German national application with PCT (A) German national application with PCT

application published in English and application published in English and designating U.S. designating U.S. 341366341366

(B) Offer for sale in Canada (B) Offer for sale in Canada 341367341367 (C) Japanese national application with no (C) Japanese national application with no

international or U.S. application international or U.S. application 341368341368 (D) Publication by inventor within 1 year of (D) Publication by inventor within 1 year of

filing filing 341369341369


Two Classes of Prior Art Two Classes of Prior Art under 35 USC 102under 35 USC 102

Section 102(a)(1): Certain events before EFD Section 102(a)(1): Certain events before EFD of claimed invention. Has features similar of claimed invention. Has features similar to former sections 102(a), (b), and (d). to former sections 102(a), (b), and (d). Subject to exceptions in Section 102(b)(1).Subject to exceptions in Section 102(b)(1).

Section 102(a)(2): Patent/Application Prior Section 102(a)(2): Patent/Application Prior Art.Art.

Has features similar to former section Has features similar to former section 102(e). Subject to exceptions in Section 102(e). Subject to exceptions in Section 102(b)(2).102(b)(2).


35 USC 102(a)(1)35 USC 102(a)(1)

Claimed invention is not novel if: Claimed invention is not novel if: PatentedPatented Described in Printed PublicationDescribed in Printed Publication In Public UseIn Public Use On SaleOn Sale Otherwise Available to Public Otherwise Available to Public

before the EFD. Section 102(b)(1) before the EFD. Section 102(b)(1) lists certain exceptions.lists certain exceptions.


35 USC 102(a)(1)35 USC 102(a)(1)

(a) Novelty; Prior Art- A person shall (a) Novelty; Prior Art- A person shall be entitled to a patent unless--be entitled to a patent unless--

(1) the claimed invention was (1) the claimed invention was patented, described in a printed patented, described in a printed publication, or in public use, on sale, publication, or in public use, on sale, or otherwise available to the public or otherwise available to the public before the effective filing date of the before the effective filing date of the claimed invention….claimed invention….


35 USC 102(a)(1): Catchall 35 USC 102(a)(1): Catchall provisionprovision

The phrase “otherwise available to the public” The phrase “otherwise available to the public” apparently means something apparently means something otherother than patented, than patented, described in a printed publication, in public use, or described in a printed publication, in public use, or on sale, but is not defined.on sale, but is not defined.

What else does it cover?What else does it cover? Publicly known information from former 102(a)?Publicly known information from former 102(a)? Gaps as to whether something would be considered a Gaps as to whether something would be considered a

“printed publication”?“printed publication”? Borderline public use cases?Borderline public use cases?

In isolation, “otherwise available to the public” In isolation, “otherwise available to the public” could be read to suggest that the other enumerated could be read to suggest that the other enumerated events in 102(a)(1) also require public availability. events in 102(a)(1) also require public availability. Such a reading may be unlikely since prior case law Such a reading may be unlikely since prior case law did not have this requirement (e.g., secret did not have this requirement (e.g., secret commercial use).commercial use).


Effect of 35 USC 102(a)Effect of 35 USC 102(a)(1)(1)

102(a)(1) is an expansion of available 102(a)(1) is an expansion of available prior art:prior art: Public use and on sale activities outside U.S. Public use and on sale activities outside U.S.

now constitute prior art.now constitute prior art. Determination of prior art at EFD rather than Determination of prior art at EFD rather than

date of invention, as in former 102(a).date of invention, as in former 102(a). 102(a)(1) does not differentiate as to the 102(a)(1) does not differentiate as to the

“source” of the event (e.g., whether the “source” of the event (e.g., whether the “public use” was by the inventor or by “public use” was by the inventor or by another). another).

Catchall provision increases what can be Catchall provision increases what can be considered prior art, but by how much?considered prior art, but by how much?


Patent/Application Prior Patent/Application Prior Art: 35 USC 102(a)(2)Art: 35 USC 102(a)(2)

Claimed invention not novel if Claimed invention not novel if described in described in U.S. patent;U.S. patent; U.S. published application; orU.S. published application; or International application designating the International application designating the

U.S. (“deemed published” application) U.S. (“deemed published” application) thatthat

Names “another inventor”; andNames “another inventor”; and Is effectively filed (35 USC 102(d)) Is effectively filed (35 USC 102(d))

before the EFD of the claimed invention.before the EFD of the claimed invention.


35 USC 102(a)(2)35 USC 102(a)(2)

(a) Novelty; Prior Art- A person shall be (a) Novelty; Prior Art- A person shall be entitled to a patent unless--entitled to a patent unless--

******

(2) the claimed invention was described in a (2) the claimed invention was described in a patent issued under section 151, or in an patent issued under section 151, or in an application for patent published or deemed application for patent published or deemed published under section 122(b), in which the published under section 122(b), in which the patent or application, as the case may be, patent or application, as the case may be, names another inventor and was effectively names another inventor and was effectively filed before the effective filing date of the filed before the effective filing date of the claimed invention.claimed invention.


35 USC 102(d)35 USC 102(d)(d) Patents and Published Applications Effective as Prior (d) Patents and Published Applications Effective as Prior

Art- For purposes of determining whether a patent or Art- For purposes of determining whether a patent or application for patent is prior art to a claimed application for patent is prior art to a claimed invention under subsection (a)(2), such patent or invention under subsection (a)(2), such patent or application shall be considered to have been effectively application shall be considered to have been effectively filed, with respect to any subject matter described in filed, with respect to any subject matter described in the patent or application--the patent or application--(1) if paragraph (2) does not apply, as of the actual (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; filing date of the patent or the application for patent; oror(2) if the patent or application for patent is entitled to (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing more prior filed applications for patent, as of the filing date of the earliest such application that describes the date of the earliest such application that describes the subject matter.subject matter.


HilmerHilmer Doctrine Doctrine AbolishedAbolished

Previously, there were detailed rules about a reference’s Previously, there were detailed rules about a reference’s effective date under 35 USC 102(e). effective date under 35 USC 102(e). SeeSee MPEP MPEP 706.02(f)(1). Under the 706.02(f)(1). Under the HilmerHilmer doctrine, for example, doctrine, for example, the 102(e) date of an application claiming priority to a the 102(e) date of an application claiming priority to a foreign national application is its U.S. filing date.foreign national application is its U.S. filing date.

Inventive Entity #1

Inventive Entity #2 U.S.

Application Filed

Japanese Application

Filed

U.S. Application Filed with Priority Claim Under 35 USC 119

Effective Date under former 102(e); application of Entity #1 is not prior art under 102(e) to application of

Entity #2

1 year or less

Publication


HilmerHilmer Doctrine Doctrine AbolishedAbolished

Under the new law, a U.S. application claiming Under the new law, a U.S. application claiming priority to a foreign application under 35 USC priority to a foreign application under 35 USC 119 can be considered to be effectively filed 119 can be considered to be effectively filed under 102(a)(2) as of the foreign filing date.under 102(a)(2) as of the foreign filing date.

Inventive Entity #1

Inventive Entity #2 U.S.

Application Filed

Japanese Application

Filed

U.S. Application Filed with Priority Claim Under 35 USC 119

Effective Date under new 102(a)(2)

1 year or less

Application of Entity #1 is 102(a)(2) prior art to that of Entity #2

Publication


Effect of 35 USC 102(a)Effect of 35 USC 102(a)(2)(2)

102(a)(2) increases the scope of patent/application 102(a)(2) increases the scope of patent/application prior art by allowing certain patents/applications to prior art by allowing certain patents/applications to have an earlier effective date (in addition to the have an earlier effective date (in addition to the scenario outlined in the preceding slides, 102(a)(2) scenario outlined in the preceding slides, 102(a)(2) also removes the requirement that international also removes the requirement that international applications designating the U.S. must be published applications designating the U.S. must be published in English to be effective as prior art).in English to be effective as prior art).

102(a)(2) does not draw in all patent-related prior art. 102(a)(2) does not draw in all patent-related prior art. For example, if there is a foreign national For example, if there is a foreign national application, but no subsequent patented or published application, but no subsequent patented or published U.S. national application or an international U.S. national application or an international application designating the U.S., 102(a)(2) does not application designating the U.S., 102(a)(2) does not appear to apply.appear to apply.


35 USC 102(b) Disclosures: 35 USC 102(b) Disclosures: Exceptions to 102(a) ArtExceptions to 102(a) Art

102(b)(1) provides exceptions to 102(b)(1) provides exceptions to 102(a)(1) art; includes certain 102(a)(1) art; includes certain “disclosures” made a year or less “disclosures” made a year or less before EFD of claimed invention.before EFD of claimed invention.

102(b)(2) provides exceptions to 102(b)(2) provides exceptions to 102(a)(2) art; includes certain 102(a)(2) art; includes certain “disclosures” appearing in patents “disclosures” appearing in patents and applications.and applications.


35 USC 102(b)(1) 35 USC 102(b)(1) ExceptionsExceptions

A “disclosure” 1 year or less before the EFD A “disclosure” 1 year or less before the EFD of a claimed invention is not prior art under of a claimed invention is not prior art under 102(a)(1) if:102(a)(1) if: Disclosure made by an inventor *: 102(b)(1)(A) Disclosure made by an inventor *: 102(b)(1)(A) The subject matter of the disclosure was The subject matter of the disclosure was

previously publicly disclosed by an inventor *: previously publicly disclosed by an inventor *: 102(b)(1)(B) 102(b)(1)(B)

Previous public disclosure will be 102(a)(1) art Previous public disclosure will be 102(a)(1) art unless 102(b)(1)(A) applies (public disclosure unless 102(b)(1)(A) applies (public disclosure within a year of EFD of claimed invention).within a year of EFD of claimed invention).

*Or another who obtained the subject matter *Or another who obtained the subject matter disclosed from an inventor directly or disclosed from an inventor directly or indirectlyindirectly


35 USC 102(b)(1)35 USC 102(b)(1)(b) Exceptions-(b) Exceptions-

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection be prior art to the claimed invention under subsection (a)(1) if--(a)(1) if--

(A) the disclosure was made by the inventor or (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the matter disclosed directly or indirectly from the inventor or a joint inventor; orinventor or a joint inventor; or

(B) the subject matter disclosed had, before such (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject joint inventor or another who obtained the subject matter disclosed directly or indirectly from the matter disclosed directly or indirectly from the inventor or a joint inventor.inventor or a joint inventor.


35 USC 102(b)(2) 35 USC 102(b)(2) exceptionsexceptions

A disclosure in a patent/application is not A disclosure in a patent/application is not prior art under 102(a)(2) if:prior art under 102(a)(2) if: The subject matter disclosed by was obtained The subject matter disclosed by was obtained

directly or indirectly from an inventor: 102(b)(2)directly or indirectly from an inventor: 102(b)(2)(A). (A).

The subject matter disclosed, before its EFD under The subject matter disclosed, before its EFD under 102(a)(2), was previously publicly disclosed by an 102(a)(2), was previously publicly disclosed by an inventor or another who obtained the subject inventor or another who obtained the subject matter disclosed from an inventor: 102(b)(2)(B).matter disclosed from an inventor: 102(b)(2)(B).

Disclosed subject matter and claimed invention Disclosed subject matter and claimed invention commonly owned/subject to assignment not later commonly owned/subject to assignment not later than EFD: 102(b)(2)(C).than EFD: 102(b)(2)(C).


35 USC 102(b)(2)35 USC 102(b)(2)(2) DISCLOSURES APPEARING IN APPLICATIONS AND (2) DISCLOSURES APPEARING IN APPLICATIONS AND

PATENTS- A disclosure shall not be prior art to a claimed PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if--invention under subsection (a)(2) if--

(A) the subject matter disclosed was obtained (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint (2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a disclosed directly or indirectly from the inventor or a joint inventor; orjoint inventor; or

(C) the subject matter disclosed and the claimed (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the invention, not later than the effective filing date of the claimed invention, were owned by the same person or claimed invention, were owned by the same person or subject to an obligation of assignment to the same subject to an obligation of assignment to the same person.person.


Example of 102(b) Example of 102(b) ExceptionsExceptions

1/1/15: A publishes paper describing X (public disclosure)1/1/15: A publishes paper describing X (public disclosure) 2/1/15: B publishes paper describing X (not obtained from A)2/1/15: B publishes paper describing X (not obtained from A) 10/1/15: B files patent application describing X; application 10/1/15: B files patent application describing X; application

later publishes (B’s EFD)later publishes (B’s EFD) 12/1/15: A files application claiming X (A’s EFD)12/1/15: A files application claiming X (A’s EFD)

For B’s application:For B’s application: A’s paper is 102(a)(1) art; no 102(b)(1) exceptions applyA’s paper is 102(a)(1) art; no 102(b)(1) exceptions apply B’s application will be rejected based on A’s paperB’s application will be rejected based on A’s paper

For A’s application:For A’s application: A’s paper is 102(a)(1) art; exempted under 102(b)(1)(A)A’s paper is 102(a)(1) art; exempted under 102(b)(1)(A) B’s paper is 102(a)(1) art; exempted under 102(b)(1)(B)B’s paper is 102(a)(1) art; exempted under 102(b)(1)(B) B’s application is 102(a)(2) art; exempted under 102(b)(2)(B)B’s application is 102(a)(2) art; exempted under 102(b)(2)(B) A’s application will not be rejected based on its paper, B’s paper, A’s application will not be rejected based on its paper, B’s paper,

or B’s applicationor B’s application


Example of 35 USC 102(b)Example of 35 USC 102(b)(2)(C) Exception(2)(C) Exception

Scenario: Scenario: Application #1: discloses XApplication #1: discloses X Application #2: commonly-owned, filed six Application #2: commonly-owned, filed six

months later with different inventive entity, months later with different inventive entity, claims Xclaims X

Previously, disclosure of X in application #1 would Previously, disclosure of X in application #1 would prevent patenting of X in application #2.prevent patenting of X in application #2.

Because of 102(b)(2)(C), application #1 is not prior Because of 102(b)(2)(C), application #1 is not prior art to application #2 under 102(a)(2).art to application #2 under 102(a)(2).

102(c) extends this same protection to joint 102(c) extends this same protection to joint research agreements.research agreements.

These provisions may be beneficial to entities with These provisions may be beneficial to entities with large patent portfolios.large patent portfolios.


Answer to Question 1Answer to Question 1 Which of the following does the AIA change Which of the following does the AIA change the the

mostmost from a prior art perspective? from a prior art perspective? (a) German national application with PCT application (a) German national application with PCT application

published in English and designating U.S.-now prior art published in English and designating U.S.-now prior art under 102(a)(2) and 102(d) as of German filing date.under 102(a)(2) and 102(d) as of German filing date.

(b) Offer for sale in Canada-Under 35 USC 102(a)(1), (b) Offer for sale in Canada-Under 35 USC 102(a)(1), now prior art where previously the offer for sale had to now prior art where previously the offer for sale had to be in the U.S.be in the U.S.

(c) Japanese national application with no international (c) Japanese national application with no international or U.S. application-102(a)(2) does not apply if there is or U.S. application-102(a)(2) does not apply if there is no corresponding U.S. or PCT application designating no corresponding U.S. or PCT application designating the U.S.the U.S.

(d) Publication by inventor within 1 year of filing-now (d) Publication by inventor within 1 year of filing-now prior art under 102(a)(1) but exempted under 102(b)(1)prior art under 102(a)(1) but exempted under 102(b)(1)(A).(A).


““Disclosures” in 102(b)Disclosures” in 102(b)

What is a “disclosure”? What is a “disclosure”? The answer affects the applicability The answer affects the applicability

of 102(b)(1) in the first instance, and of 102(b)(1) in the first instance, and thus the scope of the grace period.thus the scope of the grace period.

This term is not defined in the AIA.This term is not defined in the AIA.


Interpretations of Interpretations of “Disclosures” Under 102(b)“Disclosures” Under 102(b)

(1)(1) One end of spectrum: “disclosures” include all One end of spectrum: “disclosures” include all

listed events in 102(a)(1).listed events in 102(a)(1). Arguments that may favor this interpretation: Arguments that may favor this interpretation:

Policy: continuation of established expectationsPolicy: continuation of established expectations Textual: inclusion of “publicly disclosed” in Textual: inclusion of “publicly disclosed” in

statute may imply broader reading of “disclosure”statute may imply broader reading of “disclosure” Would create grace period similar to existing grace Would create grace period similar to existing grace

period.period. Other end of spectrum: “disclosures” only Other end of spectrum: “disclosures” only

include such activities as publications and include such activities as publications and public presentations, not public uses or sales.public presentations, not public uses or sales. Arguments that may favor this interpretation: Arguments that may favor this interpretation:

Legislative historyLegislative history Would create much more limited grace period.Would create much more limited grace period.


““Public Disclosures”Public Disclosures” Publications and public presentations are almost Publications and public presentations are almost

certainly examples of public disclosure under certainly examples of public disclosure under 102(b)(1)(B) and 102(b)(2)(B).102(b)(1)(B) and 102(b)(2)(B).

Does the term include some public uses or sales?Does the term include some public uses or sales? Public disclosures under 102 have the dual effect Public disclosures under 102 have the dual effect

of:of: Creating prior art against other parties.Creating prior art against other parties. Eliminating prior art of other parties as to the inventor.Eliminating prior art of other parties as to the inventor.

What is the scope of the first to publicly disclose What is the scope of the first to publicly disclose protection provided by 102(b)(1)(B) and 102(b)(2)protection provided by 102(b)(1)(B) and 102(b)(2)(B)?(B)?



First-to-File CommentsFirst-to-File Comments

Currently have a de facto first-to-file Currently have a de facto first-to-file system since interferences and Rule 131 system since interferences and Rule 131 declarations are rare.declarations are rare.

Continued emphasis on turnaround from Continued emphasis on turnaround from receipt of disclosure to filing of receipt of disclosure to filing of application.application.

Increased use of provisional filings in Increased use of provisional filings in certain situations.certain situations.

Larger issues exist with scope of grace Larger issues exist with scope of grace period.period.


Grace Period CommentsGrace Period Comments

Great uncertainty in advising clients regarding Great uncertainty in advising clients regarding grace period (e.g., whether public use and grace period (e.g., whether public use and sale/offer for sale by inventor within 1 year of sale/offer for sale by inventor within 1 year of filing are exempted as “disclosures” under filing are exempted as “disclosures” under 102(b)(1)(A)). 102(b)(1)(A)).

This uncertainty may require IDS of such pre-This uncertainty may require IDS of such pre-filing activities to PTO while law is clarified.filing activities to PTO while law is clarified.

These effects are magnified for smaller clients.These effects are magnified for smaller clients. Increased filings through March 15, 2013 to Increased filings through March 15, 2013 to

avoid new regime (e.g., on sale activity on avoid new regime (e.g., on sale activity on March 1, 2013).March 1, 2013).

35 USC 10335 USC 103

Under previous version of 35 USC Under previous version of 35 USC 103, obviousness assessed “at the 103, obviousness assessed “at the time the invention was made.”time the invention was made.”

New 103 assesses obviousness as of New 103 assesses obviousness as of the “effective filing date of the the “effective filing date of the claimed invention.”claimed invention.”


35 USC 10335 USC 103

A patent for a claimed invention may not be A patent for a claimed invention may not be obtained, notwithstanding that the claimed obtained, notwithstanding that the claimed invention is not identically disclosed as set invention is not identically disclosed as set forth in section 102, if the differences between forth in section 102, if the differences between the claimed invention and the prior art are the claimed invention and the prior art are such that the claimed invention as a whole such that the claimed invention as a whole would have been obvious before the effective would have been obvious before the effective filing date of the claimed inventionfiling date of the claimed invention to a person to a person having ordinary skill in the art to which the having ordinary skill in the art to which the claimed invention pertains. Patentability shall claimed invention pertains. Patentability shall not be negated by the manner in which the not be negated by the manner in which the invention was made.invention was made.


Third-Party Prior Art Third-Party Prior Art SubmissionsSubmissions

Adds subsection (e) to 35 USC 122, allowing Adds subsection (e) to 35 USC 122, allowing any party to submit printed prior art in a any party to submit printed prior art in a patent application.patent application.

Submissions can be made beginning Submissions can be made beginning September 16, 2012, in any pending September 16, 2012, in any pending application as long as timing requirements of application as long as timing requirements of 122(e)(1)(A) and (B) are fulfilled.122(e)(1)(A) and (B) are fulfilled.

Unlike current 37 CFR 1.99, submission must Unlike current 37 CFR 1.99, submission must “set forth a concise description of the “set forth a concise description of the asserted relevance of each submitted asserted relevance of each submitted document.”document.”


35 USC 122(e) Submission 35 USC 122(e) Submission TimingTiming

Submissions must be submitted Submissions must be submitted before notice of allowance.before notice of allowance.

Prior to notice of allowance, art Prior to notice of allowance, art submission can be submitted up to:submission can be submitted up to: 6 months after publication or6 months after publication or Date of first rejectionDate of first rejection

whichever comes later.whichever comes later.


35 USC 122(e) Submission 35 USC 122(e) Submission Timing ExamplesTiming Examples

Last third-party submission

date

PublicationOffice Action

rejectionNotice of allowance

Publication + 6 mos.


date

PublicationOffice Action

rejectionNotice of allowance



date

PublicationNotice of allowance



Post-Grant ProceedingsPost-Grant Proceedings

Supplemental Examination: AIA Sec. 12 Supplemental Examination: AIA Sec. 12 Ex Parte Reexamination: AIA Sec 6(h)Ex Parte Reexamination: AIA Sec 6(h) Inter Partes Reexamination: AIA Sec. 6(c)Inter Partes Reexamination: AIA Sec. 6(c) Inter Partes Review: AIA Sec. 6(a)Inter Partes Review: AIA Sec. 6(a) Post-Grant Review: AIA Sec. 6(d)Post-Grant Review: AIA Sec. 6(d) Transitional Post-Grant Review for Transitional Post-Grant Review for

Business Method Patents: AIA Sec. 18Business Method Patents: AIA Sec. 18


Supplemental Supplemental ExaminationExamination

Basis: Any informationBasis: Any information AIA: AIA:

New (35 USC 257)New (35 USC 257) Available on September 16, 2012 for Available on September 16, 2012 for

any current or future patent.any current or future patent. Standard: Substantial New Question Standard: Substantial New Question

(SNQ) of Patentability(SNQ) of Patentability Availability: Any time after issuanceAvailability: Any time after issuance Estoppel: NoneEstoppel: None


Supplemental Supplemental ExaminationExamination

Provides basis for patent owner to request that Provides basis for patent owner to request that the PTO “consider, reconsider, or correct the PTO “consider, reconsider, or correct information believed to be relevant” to a patent. information believed to be relevant” to a patent. 35 USC 257(a). 35 USC 257(a).

Unlike patent owner-initiated ex parte Unlike patent owner-initiated ex parte reexamination, supplemental examination is not reexamination, supplemental examination is not limited to patents and printed publications. For limited to patents and printed publications. For example, may be based on:example, may be based on: Information relating to a potential on-sale barInformation relating to a potential on-sale bar Information relating to a pending application.Information relating to a pending application.

Request for supplemental examination to be Request for supplemental examination to be decided within 3 months; if substantial new decided within 3 months; if substantial new question of patentability raised, ex parte question of patentability raised, ex parte reexamination ordered. 35 USC 257(a), (b).reexamination ordered. 35 USC 257(a), (b).


Effect of Supplemental Effect of Supplemental ExaminationExamination

Patent will not be held unenforceable on Patent will not be held unenforceable on the basis of information presented during the basis of information presented during a supplemental examination. 35 USC a supplemental examination. 35 USC 257(c)(1).257(c)(1).

35 USC 257(c)(2) lists exceptions to the 35 USC 257(c)(2) lists exceptions to the above rule. For example, 257(c)(1) does above rule. For example, 257(c)(1) does not apply when a supplemental not apply when a supplemental examination not completed by date a examination not completed by date a patent enforcement action is brought in patent enforcement action is brought in the ITC or district court.the ITC or district court.



Supplemental Examination Supplemental Examination and Litigation and Litigation

In view of In view of TherasenseTherasense materiality materiality standard, potentially useful when:standard, potentially useful when: Prior art reference that does not meet Prior art reference that does not meet

“but for” materiality standard “but for” materiality standard Potential affirmative misrepresentation Potential affirmative misrepresentation

made to PTO that would not impact made to PTO that would not impact issuance of patent claims (may be issuance of patent claims (may be material even though “but for” standard material even though “but for” standard not met).not met).

Ex Parte ReexaminationEx Parte Reexamination

Basis: Printed Patents and PublicationsBasis: Printed Patents and Publications AIA: Removes option to seek district AIA: Removes option to seek district

court review (effective September 16, court review (effective September 16, 2011). Procedure is otherwise 2011). Procedure is otherwise unchanged.unchanged.

Standard: Substantial New Question of Standard: Substantial New Question of Patentability (SNQ)Patentability (SNQ)

Availability: Any time after issuanceAvailability: Any time after issuance Estoppel: NoneEstoppel: None


Inter Partes Inter Partes ReexaminationReexamination

Basis: Printed Patents and PublicationsBasis: Printed Patents and Publications AIA: Eliminates inter partes reexamination as of AIA: Eliminates inter partes reexamination as of

September 16, 2012; standard for instituting changed in September 16, 2012; standard for instituting changed in the interimthe interim

Standard: Standard: Request filed prior to September 16, 2011-SNQ.Request filed prior to September 16, 2011-SNQ. Request filed between September 16, 2011 and Request filed between September 16, 2011 and

September 15, 2012-Reasonable likelihood that the September 15, 2012-Reasonable likelihood that the requester will prevail with respect to at least one of requester will prevail with respect to at least one of the claims challenged in the request.the claims challenged in the request.

Availability: Any time after issuanceAvailability: Any time after issuance Estoppel: In civil action, as to any ground that was Estoppel: In civil action, as to any ground that was

raised or could have been raised in inter partes raised or could have been raised in inter partes reexaminationreexamination


Question 2Question 2

Which of the following components of Which of the following components of inter partes review and post-grant inter partes review and post-grant review are the same under the AIA?review are the same under the AIA?

(a) Bases for invalidity challenges (a) Bases for invalidity challenges 341398341398

(b) Standard used by PTO in granting (b) Standard used by PTO in granting request for review request for review 341399341399

(c) Timing of Request (c) Timing of Request 341400341400(d) Estoppel Standard (d) Estoppel Standard 341401341401 (e) None of the above (e) None of the above 341402341402


Inter Partes ReviewInter Partes Review Basis: 102/103 Grounds Based on Printed Basis: 102/103 Grounds Based on Printed

Patents and PublicationsPatents and Publications AIA: New (35 USC 311-319)AIA: New (35 USC 311-319)

Effective September 16, 2012Effective September 16, 2012 Standard: Reasonable likelihood that the Standard: Reasonable likelihood that the

requester will prevail with respect to at least one requester will prevail with respect to at least one of the claims challenged in the request. Takes of the claims challenged in the request. Takes patent owner preliminary response into account. patent owner preliminary response into account. 35 USC 314(a).35 USC 314(a).

Availability-35 USC 311(c): Availability-35 USC 311(c): After later ofAfter later of

Expiration of 9-month period after grant/reissuanceExpiration of 9-month period after grant/reissuance If PGR is instituted, at its termination.If PGR is instituted, at its termination.

Also, must be filed within one year of being sued for Also, must be filed within one year of being sued for infringement of the patent.infringement of the patent.


Inter Partes ReviewInter Partes Review

Estoppel-35 USC 315(e):Estoppel-35 USC 315(e): Attaches upon “final written decision” Attaches upon “final written decision”

on a claim (see 35 USC 318(a)).on a claim (see 35 USC 318(a)). Applies to PTO, district court, and ITC Applies to PTO, district court, and ITC

proceedings.proceedings. Raised or reasonably could have raised Raised or reasonably could have raised

standard.standard. Applies to real party in interest/privy of Applies to real party in interest/privy of

petitioner.petitioner.


Inter Partes ReviewInter Partes Review After petition, patent owner permitted preliminary After petition, patent owner permitted preliminary

response.response. Petition to be decided by Office within 3 months of Petition to be decided by Office within 3 months of

preliminary response (or deadline for filing such preliminary response (or deadline for filing such response).response).

Heard by Patent Trial and Appeal Board (PTAB).Heard by Patent Trial and Appeal Board (PTAB). Settlement permitted if no merits decision Settlement permitted if no merits decision

reached.reached. Final determination within 1 year (additional 6 Final determination within 1 year (additional 6

months for “good cause”).months for “good cause”). Appeal to Federal Circuit.Appeal to Federal Circuit. Intervening rights same as those for reissues Intervening rights same as those for reissues

under 35 USC 252.under 35 USC 252.Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011

Inter Partes ReviewInter Partes Review Filing of declaratory judgment action bars inter partes Filing of declaratory judgment action bars inter partes

review by DJ plaintiff (counterclaim does not create bar).review by DJ plaintiff (counterclaim does not create bar). Provisions for automatic stay of subsequent civil action Provisions for automatic stay of subsequent civil action

against patent by petitioner.against patent by petitioner. Regulations forthcoming on a number of topics, Regulations forthcoming on a number of topics,

including:including: Discovery (including deposition of witnesses submitting Discovery (including deposition of witnesses submitting

affidavits or declarations).affidavits or declarations). Protective Orders.Protective Orders.

AmendmentsAmendments One motion to amend to cancel and/or propose reasonable One motion to amend to cancel and/or propose reasonable

number of substitute claims.number of substitute claims. Additional joint motions to amend to advance settlement Additional joint motions to amend to advance settlement

may be granted.may be granted. No broadening of claims.No broadening of claims.


Post-Grant ReviewPost-Grant Review Basis: Basis:

Invalidity under 101, 102, 103, 112 (except best Invalidity under 101, 102, 103, 112 (except best mode), 251. 35 USC 321(b). mode), 251. 35 USC 321(b).

““Novel or unsettled legal question that is important Novel or unsettled legal question that is important to other patents or patent applications.” 35 USC to other patents or patent applications.” 35 USC 324(b).324(b).

AIA: New (35 USC 321-329)AIA: New (35 USC 321-329) ““Regular” PGR: available for patents filed on or Regular” PGR: available for patents filed on or

after March 16, 2013.after March 16, 2013. Transitional program: available for certain Transitional program: available for certain

business method patents in litigation or under business method patents in litigation or under threat of litigation beginning September 16, threat of litigation beginning September 16, 2012. Program runs for 8 years and is available 2012. Program runs for 8 years and is available for any covered patent.for any covered patent.


Post-Grant ReviewPost-Grant Review Standard: If information in petition is not Standard: If information in petition is not

rebutted, more likely than not that at least 1 of rebutted, more likely than not that at least 1 of the claims challenged in the petition is the claims challenged in the petition is unpatentable. 35 USC 324(a).unpatentable. 35 USC 324(a).

Availability-Must be filed within 9 months of Availability-Must be filed within 9 months of grant/reissue. 35 USC 321(c).grant/reissue. 35 USC 321(c).

Estoppel-35 USC 325(e):Estoppel-35 USC 325(e): Attaches upon “final written decision” on a claim Attaches upon “final written decision” on a claim

(see 35 USC 328(a)).(see 35 USC 328(a)). Applies to PTO, district court, and ITC proceedings.Applies to PTO, district court, and ITC proceedings. Raised or reasonably could have raised standard.Raised or reasonably could have raised standard. Applies to real party in interest/privy of petitioner.Applies to real party in interest/privy of petitioner.


Post-Grant ReviewPost-Grant Review Discovery to be limited to evidence directly Discovery to be limited to evidence directly

related to factual assertions advanced by either related to factual assertions advanced by either party in the proceeding (regulations forthcoming).party in the proceeding (regulations forthcoming).

No PGR for claims not broadened during reissue No PGR for claims not broadened during reissue where original patent not otherwise eligible for where original patent not otherwise eligible for PGR.PGR.

If patent infringement action filed within 3 months If patent infringement action filed within 3 months of grant, motion for preliminary injunction cannot of grant, motion for preliminary injunction cannot be stayed based on PGR request.be stayed based on PGR request.

While estoppel standard in PGR is the same as While estoppel standard in PGR is the same as inter partes review, potential scope of estoppel is inter partes review, potential scope of estoppel is much greater than in inter partes review since much greater than in inter partes review since there are more grounds for challenging validity in there are more grounds for challenging validity in PGR.PGR.


Post-Grant Review Post-Grant Review Similarities to Inter Partes Similarities to Inter Partes

ReviewReview Petition/Preliminary Response Period.Petition/Preliminary Response Period. Filing of declaratory judgment acts as bar to PGR Filing of declaratory judgment acts as bar to PGR

(counterclaim OK).(counterclaim OK). Automatic stay provisions for subsequent civil Automatic stay provisions for subsequent civil

action against patent by petitioner.action against patent by petitioner. Heard by PTAB.Heard by PTAB. Amendment procedure.Amendment procedure. Settlement.Settlement. Final determination time period.Final determination time period. Appeal.Appeal. Intervening rights.Intervening rights.


Answer to Question 2Answer to Question 2Which of the following components of inter partes review and post-Which of the following components of inter partes review and post-

grant review are the same under the AIA?grant review are the same under the AIA?(a) Bases for invalidity challenges(a) Bases for invalidity challenges

Inter partes review: 102, 103Inter partes review: 102, 103PGR: 101, 102, 103, 112 (no best mode), 251; novel legal PGR: 101, 102, 103, 112 (no best mode), 251; novel legal question.question.

(b) Standard used by PTO in granting request for review(b) Standard used by PTO in granting request for reviewInter partes review-Reasonable likelihood petitioner will prevail, Inter partes review-Reasonable likelihood petitioner will prevail, considering preliminary response if any.considering preliminary response if any.PGR-More likely than not at least one challenged claim is PGR-More likely than not at least one challenged claim is unpatentable, considering petition but not preliminary response.unpatentable, considering petition but not preliminary response.

(c) Timing of Request(c) Timing of RequestInter partes review-After PGR or PGR window concludes; within Inter partes review-After PGR or PGR window concludes; within one year of suit.one year of suit.PGR-During 9-month window after grant/reissue.PGR-During 9-month window after grant/reissue.

(d) Estoppel standard-Same; Raised or reasonably could have raised.(d) Estoppel standard-Same; Raised or reasonably could have raised.(e) None of the above(e) None of the above


Transitional Post-Grant Transitional Post-Grant Review for Business Review for Business

Method PatentsMethod Patents Basis: Basis:

Applies to “covered business method patents,” including Applies to “covered business method patents,” including those already patented as of effective date.those already patented as of effective date.

For challenges based on old 102/103, limitations on what For challenges based on old 102/103, limitations on what prior art may be used. Sec. 18(a) (1)(C).prior art may be used. Sec. 18(a) (1)(C).

For challenges under new AIA provisions, same limitations For challenges under new AIA provisions, same limitations as PGR.as PGR.

AIA: AIA: New (Section 18 of AIA)New (Section 18 of AIA) Effective September 16, 2012 Effective September 16, 2012

Standard: Same as PGR. Standard: Same as PGR. Availability: Availability:

Sunsets 8 years after effective date.Sunsets 8 years after effective date. If PGR applicable, not available during PGR window.If PGR applicable, not available during PGR window. Petitioner or real party in interest or privy must have been Petitioner or real party in interest or privy must have been

sued or “charged” with infringement of patent.sued or “charged” with infringement of patent.Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011

Transitional Post-Grant Transitional Post-Grant Review for Business Review for Business

Method PatentsMethod Patents

Estoppel-Upon “final written decision,” Estoppel-Upon “final written decision,” attachesattaches For PTO proceedings, for issues raised or that For PTO proceedings, for issues raised or that

could reasonably have been raised.could reasonably have been raised. For civil action/ITC proceedings, for issues For civil action/ITC proceedings, for issues

raised.raised. Unlike inter partes review and standard PGR, Unlike inter partes review and standard PGR,

estoppel does not apply to petitioner’s privy.estoppel does not apply to petitioner’s privy.


What is a “Covered What is a “Covered Business Method Patent”?Business Method Patent”?

Sec. 18(d)(1): A patent that claims a Sec. 18(d)(1): A patent that claims a method or corresponding apparatus for method or corresponding apparatus for performing data processing or other performing data processing or other operations used in the practice, operations used in the practice, administration, or management of a administration, or management of a financial product or service.financial product or service.

The term does not include “patents for The term does not include “patents for technological inventions.”technological inventions.”

Clarifying regulations to be issued by Clarifying regulations to be issued by Director. Sec. 18(d)(2).Director. Sec. 18(d)(2).

Patents in Class/Subclass 705/39 seem Patents in Class/Subclass 705/39 seem most vulnerable to being classified as most vulnerable to being classified as covered patents.covered patents.


Transitional Post-Grant Transitional Post-Grant Review: Miscellaneous Review: Miscellaneous

ProvisionsProvisions Lists factors for deciding stay in civil Lists factors for deciding stay in civil

action relating to patents having action relating to patents having transitional procedures. Sec. 18(b).transitional procedures. Sec. 18(b).

Automated teller machine does not Automated teller machine does not constitute regular and established place constitute regular and established place of business for purposes of venue of business for purposes of venue statute. Sec. 18(c).statute. Sec. 18(c).

Not to be interpreted as affecting Not to be interpreted as affecting categories of patentable subject matter. categories of patentable subject matter. Sec. 18(e).Sec. 18(e).


Question 3

A. Third party prior art submissions will likely be used in some cases to avoid patent litigation. 341634

B. Use of inter partes and post-grant review proceedings will increase, at least for business method patents. 341635

C. Ex parte reexamination is likely to remain the primary post-grant proceeding used concurrently with patent litigation. 341636

D. None of the above 341637 E. All of the above 341638

What will be the likely effect of the new post-grant proceedings on patent litigation strategy?

Question 3 - Answer E. All of the Above. A. Third party prior art submissions will likely be used in some

cases to avoid patent litigation. No estoppel or threshold Useful where third party is practicing prior art But requires knowledge of patent publication

B. Use of the Inter partes and post-grant review proceedings will likely increase, at least for business method patents. Concern for both is estoppel on what could have been raised Especial concern for PGR within 9 months because of broad scope Estoppel only on what is raised for transitional business method

patent PGR C. Ex parte reexamination is likely to remain the primary

post-grant proceeding used concurrently with patent litigation No Estoppel But Inter partes has been increasingly used Court vs PTO as preferred forum for validity regardless of

estoppel effect?

Prior Art Prior Art submissisubmission on (§122)(§122)

Ex Ex ParteParte

Post Post GrantGrant

Inter Inter PartesPartes

TimingTiming 6 mos of 6 mos of publication publication or date of or date of first first rejectionrejection

No limitNo limit Within 9 Within 9 months of months of issuanceissuance

After PGR After PGR or within 1 or within 1 yr of yr of infringemeinfringement suitnt suit

StandardStandard No No threshold threshold standardstandard

SNQSNQ Reasonable Reasonable likelihood of likelihood of prevailingprevailing

ReasonablReasonable e likelihood likelihood of of prevailingprevailing

EstoppelEstoppel NoneNone NoneNone Raised or Raised or could have could have raised*raised*

Raised or Raised or could have could have raisedraised


Ex Parte vs Inter PartesEx Parte vs Inter PartesYear Ex Parte Inter

Partes% Inter Partes

2006 511 70 12.0%

2007 643 126 16.4%

2008 680 168 19.8%

2009 658 258 28.2%

2010 780 281 26.5%

2011 759 374 33.0%

Impact of AIA on Patent Impact of AIA on Patent litigationlitigation

Effects on Patent Marking and False Effects on Patent Marking and False Marking Suits (Marking Suits (§§287, §§287, 292)292)

Eliminates Best Mode Defense Eliminates Best Mode Defense ((§282)§282)

Limits on Patent Infringement Limits on Patent Infringement Defendants (Defendants (§§299)299)

Limits Effect of Not obtaining Advice Limits Effect of Not obtaining Advice of Counsel (of Counsel (§§298)298)

Expands Prior Use Defense (Expands Prior Use Defense (§273)§273)


AIA Ends Private AIA Ends Private Qui Tam Qui Tam False Marking SuitsFalse Marking Suits

What: 35 U.S.C. What: 35 U.S.C. §292 allowed any private party to file an §292 allowed any private party to file an action for false patent marking and to recover a penalty of up action for false patent marking and to recover a penalty of up to $500 per offense to $500 per offense

Amendment eliminates right of private party to recover Amendment eliminates right of private party to recover penalty for false patent markingpenalty for false patent marking Private parties can sue only if a “competitive injury” is Private parties can sue only if a “competitive injury” is

proved and can only obtain damages “adequate to proved and can only obtain damages “adequate to compensate for the injury”compensate for the injury”

U.S. Government can still sue and seek up to $500 penaltyU.S. Government can still sue and seek up to $500 penalty When: Applies immediately to “all cases, without exception, When: Applies immediately to “all cases, without exception,

that are pending on, or commenced on or after,” Sept. 16, that are pending on, or commenced on or after,” Sept. 16, 2011.2011.

Implications: Virtually all pending false marking suits will be Implications: Virtually all pending false marking suits will be subject to dismissal.subject to dismissal.

67Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011

Virtual Patent MarkingVirtual Patent Marking What: What: §§287 requires marking to recover pre-lawsuit 287 requires marking to recover pre-lawsuit

damages unless infringer has notice; damages unless infringer has notice; amendment amendment allows for virtual patent markingallows for virtual patent marking

Fix the word patent or “pat.” with an internet address Fix the word patent or “pat.” with an internet address free of charge that associates the patented article with free of charge that associates the patented article with the number of the patentthe number of the patent

When: applies to “all cases, without exception, that are When: applies to “all cases, without exception, that are pending on, or commenced on or after” Sept. 16, 2011.pending on, or commenced on or after” Sept. 16, 2011.

Implications: Amendment makes it easier to provide Implications: Amendment makes it easier to provide marking and to update marking by allowing one marking and to update marking by allowing one reference to a web site that can be modified, edited to reference to a web site that can be modified, edited to add/delete Patent #s. add/delete Patent #s.


Best Mode Defense Best Mode Defense EliminatedEliminated

What: Prior to AIA, failure to disclose best mode was What: Prior to AIA, failure to disclose best mode was a validity defense in patent infringement action; could a validity defense in patent infringement action; could also result in unenforceability for inequitable conductalso result in unenforceability for inequitable conduct

AIA amends § 282 to eliminate the “best mode” AIA amends § 282 to eliminate the “best mode” defense:defense: ““Failure to disclose the best mode shall not be a basis on Failure to disclose the best mode shall not be a basis on

which any claim of a patent may be canceled or held invalid which any claim of a patent may be canceled or held invalid or otherwise unenforceable”or otherwise unenforceable”

When: Effective immediately and applies to all When: Effective immediately and applies to all proceedings filed on or after Sept. 16, 2011.proceedings filed on or after Sept. 16, 2011.

Implications: “Best mode” is dead as a defense in Implications: “Best mode” is dead as a defense in patent litigation except for suits filed before Sept. 16.patent litigation except for suits filed before Sept. 16.


AIA Limits Joinder of AIA Limits Joinder of DefendantsDefendants

in Patent Litigationin Patent Litigation What: New 35 U.S.C. §299 limits joinder of What: New 35 U.S.C. §299 limits joinder of accused infringers (other than Hatch-Waxman) accused infringers (other than Hatch-Waxman)

When: Applies to all new actions filed on or When: Applies to all new actions filed on or after Sept. 16, 2011after Sept. 16, 2011

Accused infringers can be joined in one action Accused infringers can be joined in one action or consolidated for trial or consolidated for trial only ifonly if::

(1) allegations (1) allegations ““aris[e] out of the same aris[e] out of the same transaction, occurrence, or series of transaction, occurrence, or series of transactions or occurrences relating to the transactions or occurrences relating to the making, using, importing into the United making, using, importing into the United States, offering for sale, or selling of the States, offering for sale, or selling of the same accused product or processsame accused product or process,” and,” and

(2) “questions of (2) “questions of factfact common to all common to all defendants or counterclaim defendants defendants or counterclaim defendants will arise in the action.”will arise in the action.”


Joinder Narrower than FRCP Joinder Narrower than FRCP 20(a)(2)20(a)(2)

§§299 narrower than Joinder Rule 299 narrower than Joinder Rule FRCP 20(a)(2) because the common FRCP 20(a)(2) because the common legal question of infringement is not legal question of infringement is not sufficient for joinder.sufficient for joinder.““ALLEGATIONS INSUFFICIENT FOR ALLEGATIONS INSUFFICIENT FOR

JOINDER.JOINDER.[A]ccused infringers may not be joined in [A]ccused infringers may not be joined in one action as defendants or counterclaim one action as defendants or counterclaim defendants, or have their actions defendants, or have their actions consolidated for trial, based solely on consolidated for trial, based solely on allegations that they have each infringed the allegations that they have each infringed the patent or patents in suit.patent or patents in suit.” ” (§ 299(b))(§ 299(b))


Question 4

A. The number of defendants in each patent case has significantly decreased. 341208

B. The number of patent cases filed has significantly decreased. 341209

C. The number of patent cases filed has significantly increased. 341210

D. Both A and C 341287 E. Both A and B 341288 F. No Significant Effect 341289

What impact has the new joinder law had on patent infringement litigation thus far?

73

Impact of New JoinderImpact of New Joinder Answer A. Based on anecdotal evidence.Answer A. Based on anecdotal evidence. 45 Days Before AIA, patent cases filed in 45 Days Before AIA, patent cases filed in

Delaware, ED TX, ND Cal, CD Cal, DNJ, Delaware, ED TX, ND Cal, CD Cal, DNJ, NDILL NDILL 265 cases filed265 cases filed 2272 total parties 2272 total parties ~8.6 parties per case~8.6 parties per case

45 Days After AIA, 45 Days After AIA, 248 patent cases filed248 patent cases filed 848 total parties848 total parties ~3.4 parties per case~3.4 parties per case


Protections When Advice of Protections When Advice of Counsel Not SoughtCounsel Not Sought

What: New 35 U.S.C. What: New 35 U.S.C. §§298 added:298 added:

“ “The failure of an infringer to obtain the The failure of an infringer to obtain the advice of counsel with respect to any advice of counsel with respect to any allegedly infringed patent, or the failure of allegedly infringed patent, or the failure of the infringer to present such advice to the the infringer to present such advice to the court or jury, may not be used to prove that court or jury, may not be used to prove that the accused infringer willfully infringed the the accused infringer willfully infringed the patent or that the infringer intended to patent or that the infringer intended to induce infringement of the patent.”induce infringement of the patent.”

When: Effective September 16, 2012When: Effective September 16, 2012


Protections When Advice of Protections When Advice of Counsel Not SoughtCounsel Not Sought

Implications for Willful Infringement: Implications for Willful Infringement: Codifies in part Federal Circuit’s Codifies in part Federal Circuit’s en banc en banc ruling in ruling in

In re Seagate TechnologyIn re Seagate Technology, 497 F.3d 1360 (Fed. Cir. , 497 F.3d 1360 (Fed. Cir. 2007) 2007)

Will either have no impact or make it marginally Will either have no impact or make it marginally harder to prove willful infringementharder to prove willful infringement

Implications for intent to induce infringement: Implications for intent to induce infringement: Changes law by overruling Changes law by overruling Broadcom v. QualcommBroadcom v. Qualcomm, , 543 F.3d 683 (Fed. Cir. 2008)543 F.3d 683 (Fed. Cir. 2008)

§§298 will likely become standard jury instruction in 298 will likely become standard jury instruction in patent cases where willful infringement or induced patent cases where willful infringement or induced infringement is alleged.infringement is alleged.


Prior Use Defense Prior Use Defense to Patent Infringementto Patent Infringement

What: AIA amends scope of prior What: AIA amends scope of prior defense in 35 U.S.C. § 273.defense in 35 U.S.C. § 273.

When: Applies to any patent When: Applies to any patent issued on or after Sept. 16, 2011issued on or after Sept. 16, 2011

Before AIA, defense limited to business Before AIA, defense limited to business method patentsmethod patents

AIA expands prior user rights defense AIA expands prior user rights defense to any “process, or … a machine, to any “process, or … a machine, manufacture, or composition of matter manufacture, or composition of matter used in a manufacturing or other used in a manufacturing or other commercial process.”commercial process.”


77

Prior Use Defense (cont.)Prior Use Defense (cont.) Retains same proof standard as patent Retains same proof standard as patent

invalidity “clear and convincing evidence.” (§ invalidity “clear and convincing evidence.” (§ 273(b))273(b))

Defense requires establishing Defense requires establishing prior commercial prior commercial useuse:: Commercially used subject matter either in connection with (1) Commercially used subject matter either in connection with (1)

an internal commercial use or (2) an actual arm’s length sale or an internal commercial use or (2) an actual arm’s length sale or commercial transfer of “a useful end result of such commercial commercial transfer of “a useful end result of such commercial use.”use.”

Commercial use occurred at least 1 year before earlier of (1) Commercial use occurred at least 1 year before earlier of (1) the patent application’s effective filing date or (2) the date the the patent application’s effective filing date or (2) the date the invention was disclosed to the public.invention was disclosed to the public.

Some activities defined as commercial use e.g., Some activities defined as commercial use e.g., regulatory review activities (35 USC §156(g)) or regulatory review activities (35 USC §156(g)) or Nonprofit lab use by nonprofit entity for Nonprofit lab use by nonprofit entity for noncommercial uses. (§ 273(b)) noncommercial uses. (§ 273(b))


78

Prior Use Defense (cont.)Prior Use Defense (cont.) Lots of Limits on Prior Use Defense Lots of Limits on Prior Use Defense

((§273(e))§273(e)) Defense is personal to the person who performed Defense is personal to the person who performed

or directed the commercial use.or directed the commercial use. Defense cannot be transferred except to patent Defense cannot be transferred except to patent

owner or as part of transfer of entire enterprise owner or as part of transfer of entire enterprise or business lineor business line

After transfer, defense is limited to site of activity After transfer, defense is limited to site of activity before later of effective filing date or transfer before later of effective filing date or transfer datedate

Defense not available where prior commercial use Defense not available where prior commercial use was derived from the patentee or persons in was derived from the patentee or persons in privity with the patentee.privity with the patentee.

Abandonment of the use eliminates the defense.Abandonment of the use eliminates the defense. Assertion of defense does not Assertion of defense does not

invalidate patent (§ 273(g))invalidate patent (§ 273(g))Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November 15, 2011

79

Prior Use Defense (cont.)Prior Use Defense (cont.) Before AIA, § 273(e) not widely Before AIA, § 273(e) not widely

used:used: Only business method patentsOnly business method patents Same clear and convincing standard as Same clear and convincing standard as

invalidity under 35 U.S.C. invalidity under 35 U.S.C. §102(f), (g). §102(f), (g). Amended Amended § 273(e) likely to be more § 273(e) likely to be more

widely used:widely used: Not limited to “business method patents” Not limited to “business method patents”

can broadly apply to any “commercial use” can broadly apply to any “commercial use” Invalidity based on Invalidity based on 35 U.S.C. 35 U.S.C. §102(f), (g) §102(f), (g)

no longer available after March 16, 2013. no longer available after March 16, 2013.


Questions?Questions?

Jeffrey D. Mills and Dean Munyon - AIA Jeffrey D. Mills and Dean Munyon - AIA Presentation -- Austin IPLA -- November Presentation -- Austin IPLA -- November

15, 201115, 2011


leahy-smith america invents act some prosecution and litigation perspectives jeffrey d. mills dean...

Documents