Post-Grant ProceedingsUnder The America Invents

ActLos Angeles Intellectual Property Law Association “Washington in the West” Conference

January 29, 2013, Los Angeles, California

Panelists:Jeffrey Robertson – Administrative Patent JudgeBrent Babcock – Knobbe MartensMehrand Arjomand – Morrison Foerster

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America Invents Act (AIA)

• Signed into law September 16, 2011

• General Themes (depending on whom you ask)

– “Harmonization”

– Simplify and reduce cost of patent litigation; alternative to patent litigation

– Reduce influence of non-practicing entities

– Varying effective dates

– Some uncertainty

• Technical Amendments (2013)

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Changes to Post-Grant Disputes

Before AIA

• Inter Partes Reexam

• Ex Parte Reexam

• Interferences

After AIA

• Inter Partes Review

• Post-Grant Review

• Transitional Program for Covered Business Method Patents

• Derivation Proceedings

• Ex Parte Reexam

• Supplemental Examination

• Interferences (Legacy)

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Post-Grant Proceedings-Where We Are Now• Current USPTO statistics as of January 24, 2013

– 114 IPR filings ; 3 instituted/ 0 denials

– 15 CBM filings; 2 instituted / 0 denials

• Number of Petitions by Technology

• Electrical/Computer 89

• Mechanical 6

• Chemical 19

• Bio/Pharma 9

• Design 1

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Inter Partes Reexam v. Inter Partes Review• Two important differences between an inter

partes reexamination proceeding and an inter partes review proceeding:

– No examination

– Statutory deadline for final decision

Examination by CRUFiling Appeal to CAFC

Review by PTABFiling Appeal to CAFC

Appeal to PTAB

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Post-Grant Proceedings – Procedure

• Threshold “Reasonable Likelihood” that petitioner willprevail on at least one claim

• Potentially more limited discovery in IPR than Post Grant Review

– Deposition of witnesses submitting affidavits (declarations)

– What is “otherwise necessary in the interests of justice”

• Patent owner may file response rebutting petition

• One motion by right to cancel or propose substitute claims

• Right to oral hearing

• Petitioner may submit supplemental information/ comment

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Post-Grant Proceedings – Procedure

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Post-Grant Proceedings – Procedure

• Petitioner or Director may request joinder of additional parties

• Final determination within 12 months, up to 18 months if “good cause”

• Estoppel: “raised or reasonably could have raised”

• Appeal: directly to Federal Circuit

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• Representative Orders, Decisions, and Notices

http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp

• Pro Hac Vice Requests

• Defective Petitions

• Relationship with Co-pending Proceedings

• Definition of Covered Business Method Patent

Post-Grant Proceedings – Developments

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IPR Strategic Issues

• What is the anticipated fees/cost of an IPR?

• How long will an IPR last?

• Are the fees/costs spread out evenly?

• Why should I use IPR rather than traditional litigation?

• What is the likelihood that a district court action will be stayed during an IPR?

• Should I change my practices of monitoring competitors’ IP?

• Is there anything I can do to prevent an IPR of my client’s patents?

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Advantages of IPR vs. Litigation

• Lower Burden of Proof (preponderance of the evidence)

• Broadest Reasonable Interpretation of patent claims

• Lower Cost (FRCP do not apply)

– Limited discovery

– Professionalism strictly enforced

– Fewer “ancillary” battles (venue, jurisdiction, discovery, etc.)

• Quicker (1-2 years)

• Better informed decision maker (both technical & legal)

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Advantages of Litigation vs. IPR

• Infringement can be adjudicated

• Full scope of claims and defenses

• Full discovery opportunities

• Estoppel effect of USPTO Inter Partes proceedings

• More expensive to opponent

• Jury presents potentially more risk to opponent

©2012 Knobbe Martens, Olson & Bear, LLP all rights reserved. 13

Thank you!