post issuance inter partes disputes: what you need to know
DESCRIPTION
Knobbe attorneys presented "Post Issuance Inter Partes Disputes" at a recent seminar held in Japan. The topics for this presentation are: AIA's changes to post-issuance disputes (third party challenges to issued patents); practice and procedure; and how do the new proceedings operate?TRANSCRIPT
Post Issuance Inter Partes Disputes:
What you need to know
October 19, 2012
Kerry Taylor
Tokyo
The recipient may only view this work. No other right or license is granted.
2 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Topics
• AIA’s changes to post-issuance disputes (third party challenges to issued patents)
– What stays the same and what is new?
• Practice and procedure
– Trial proceedings overview
– Strategies and considerations
• How do the new proceedings operate?
3 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Changes to Post-Issuance Disputes
• Before AIA
• Inter Partes Reexam
• Ex Parte Reexam
• Interferences
• After AIA
• Post-Grant Review
• Transitional Program for Covered Business Method Patents
• Inter Partes Review
• Ex Parte Reexam
• Derivation Proceedings
• Interferences (Legacy)
4 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Statutory Requirements for PGR and IPR
Proceeding Petitioner Available Standard Basis
Post Grant Review (PGR)
• Not the patent owner and has not previously filed a civil action challenging the validity of the patent
• Must identify
real party in interest
From patent grant to 9 months from patent grant or reissue
More likely than not OR Novel or unsettled legal question
101, 102, 103, 112, double patenting but not best mode
Inter Partes Review (IPR)
The later of: (i) 9 months after patent grant; or (ii) termination of any post grant review of the patent
Reasonable likelihood (“lower threshold” “somewhat flexible”)
102 and 103 based on patents and printed publications
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Statutory Requirements for PGR and IPR
Proceeding Applicable Estoppel Timing
Post Grant Review (PGR)
Patent issued under first-inventor-to-file
• Raised or reasonably could have raised
• Applied to subsequent USPTO/district court/ITC action
• Note: Covered Business Methods standard: only raised, not reasonably could have raised
Must be completed within 12 months from institution, with 6 months good cause exception possible
Inter Partes Review (IPR)
Any patent
6 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Trial Proceedings
• As Vice Chief APJ Moore has stated, “This is not prosecution.”
• USPTO Patent Trial and Appeal Board
– Trial section views itself as a litigation tribunal
– Appeal section focuses on ex parte appeals from examination
• Current interference rules will provide basis for new procedural rules for all USPTO Inter Partes proceedings
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USPTO Trial Rules
Covered Business Method Patent Review
§§ 42.300 – 42.304
Post-Grant Review §§ 42.200 – 42.224
Inter Partes Review §§ 41.100 – 42.123
Derivation Proceedings §§ 42.400 – 42.412
Umbrella Trial Rules §§ 42.1 – 42.80
8 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Umbrella Trial Rules
• Must conclude within 12 months of initiation (18 months for good cause)
• Discovery
• Motion practice
• Protective orders
• Settlement
9 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Trial Proceedings Timeline
Petition PO
prelim. response
Decision
PO response
to decision
motion to amend
Petitioner reply
to PO’s response
opp’n to motion
Oral hearing
Written decision
3 mo. ≤ 3 mo. 3 mo. 3 mo.
PO reply
1 mo.
Trial begins ≤ 1 year
PO discovery
period
Petitioner discovery
period
PO discovery
period
10 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Trial Proceedings Timeline
Petition PO
prelim. response
Decision
PO response
to decision
motion to amend
Petitioner reply
to PO’s response
opp’n to motion
Oral hearing
Written decision
3 mo. ≤ 3 mo. 3 mo. 3 mo.
PO reply
1 mo.
Trial begins ≤ 1 year
PO discovery
period
Petitioner discovery
period
PO discovery
period
11 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Petition
• Contents:
– Challenge of claims (including claim construction)
– Supporting evidence (references, declarations)
– Should be as complete as possible
• Cost:
– PGR: $35.8 k ($800 per claim over 20)
– IPR: $27.2 k ($600 per claim over 20)
12 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Trial Proceedings Timeline
Petition PO
prelim. response
Decision
PO response
to decision
motion to amend
Petitioner reply
to PO’s response
opp’n to motion
Oral hearing
Written decision
3 mo. ≤ 3 mo. 3 mo. 3 mo.
PO reply
1 mo.
Trial begins ≤ 1 year
PO discovery
period
Petitioner discovery
period
PO discovery
period
13 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Preliminary Response
• Not required for Patent Owner to respond
• Contents:
– Supporting evidence (typically no declarations)
• Due 3 months after Petition filing date
• Also due at this time:
– Agreed-upon mandatory initial disclosures (e.g., relied upon documents, identity of declarants)
• Other possible procedures
– Discovery relating to standing
– PTAB may already rule to dismiss all or part of Petition
14 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Trial Proceedings Timeline
Petition PO
prelim. response
Decision
PO response
to decision
motion to amend
Petitioner reply
to PO’s response
opp’n to motion
Oral hearing
Written decision
3 mo. ≤ 3 mo. 3 mo. 3 mo.
PO reply
1 mo.
Trial begins ≤ 1 year
PO discovery
period
Petitioner discovery
period
PO discovery
period
15 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
PTAB Decision to Institute Trial
• Decision
– Claim-by-claim and Ground-by-ground
– “Sufficient notice” explaining PTAB’s reason for instituting
• Request for reconsideration can be made by either party (timing varies)
• Also includes default Scheduling Order
• Discovery begins (typically Patent Owner discovery at this point)
16 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Within 1 Month of PTAB Decision
• Scheduling Conference:
– Parties agree on Scheduling Order (can differ from default, but PTAB will likely reserve 2-3 months after Oral Hearing for Written Decision)
– Parties agree on Discovery
• Patent Owner proposes number of substitute claims
• Petitioner can provide Supplemental Information
17 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Trial Proceedings Timeline
Petition PO
prelim. response
Decision
PO response
to decision
motion to amend
Petitioner reply
to PO’s response
opp’n to motion
Oral hearing
Written decision
3 mo. ≤ 3 mo. 3 mo. 3 mo.
PO reply
1 mo.
Trial begins ≤ 1 year
PO discovery
period
Petitioner discovery
period
PO discovery
period
18 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Discovery
• Automatic
– Agreed-upon mandatory initial disclosures
• Routine
– Document cited in paper or testimony
– Cross examination of declarant
– Relevant information inconsistent with a position advanced
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Discovery continued
• Additional
– As agreed upon by parties
– No agreement: by motion: “interests of justice”
• Compelled testimony or production
– By motion (typically granted)
– Non-parties to proceedings
• Motion practice: authorization required (typically in conference call)
20 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Trial Proceedings Timeline
Petition PO
prelim. response
Decision
PO response
to decision
motion to amend
Petitioner reply
to PO’s response
opp’n to motion
Oral hearing
Written decision
3 mo. ≤ 3 mo. 3 mo. 3 mo.
PO reply
1 mo.
Trial begins ≤ 1 year
PO discovery
period
Petitioner discovery
period
PO discovery
period
21 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Patent Owner Response
• Response Contents:
– Can rebut any grounds for challenging claims (including claim construction)
– Supporting evidence (references, declarations)
• Also due: Motion to amend
– Total number of claims: “reasonable number” (generally one substitute claim per challenged claim)
– Typically this is the only opportunity to amend
• Petitioner discovery begins
22 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Trial Proceedings Timeline
Petition PO
prelim. response
Decision
PO response
to decision
motion to amend
Petitioner reply
to PO’s response
opp’n to motion
Oral hearing
Written decision
3 mo. ≤ 3 mo. 3 mo. 3 mo.
PO reply
1 mo.
Trial begins ≤ 1 year
PO discovery
period
Petitioner discovery
period
PO discovery
period
23 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Petitioner Reply/Patent Owner Reply
Petitioner Reply
• Oppose proposed amendments by Patent Owner
• Rebut Patent Owner’s arguments
– Limit to new evidence that can be submitted (rebuttal)
• Patent Owner additional discovery
Patent Owner Reply
• Rebut Petitioner’s evidence
• Typically will close discovery
24 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Trial Proceedings Timeline
Petition PO
prelim. response
Decision
PO response
to decision
motion to amend
Petitioner reply
to PO’s response
opp’n to motion
Oral hearing
Written decision
3 mo. ≤ 3 mo. 3 mo. 3 mo.
PO reply
1 mo.
Trial begins ≤ 1 year
PO discovery
period
Petitioner discovery
period
PO discovery
period
25 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Observations, Motions, Oral Hearing
Observations and Motions
• Motions to exclude evidence filed; oppositions to motions filed
• Observations filed (brief comments regarding evidence such as cross-examination transcripts)
Oral Hearing
• Available upon request
• Typically closes most activities by the parties
