post-grant proceedings under the america invents act
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Post-Grant Proceedings Under The America Invents Act. Los Angeles Intellectual Property Law Association “Washington in the West” Conference January 29, 2013, Los Angeles, California. Panelists: Jeffrey Robertson – Administrative Patent Judge Brent Babcock – Knobbe Martens - PowerPoint PPT PresentationTRANSCRIPT
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 DisputesBefore 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 will
prevail 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
