Post Grant Challenges: Strategy and Considerations after the America Invents Act of 2011 IP Law &...
-
Upload
dora-stanley -
Category
Documents
-
view
215 -
download
2
Transcript of Post Grant Challenges: Strategy and Considerations after the America Invents Act of 2011 IP Law &...
Post Grant Challenges:Strategy and Considerations
after theAmerica Invents Act of 2011
IP Law & Management Institute
November 7, 2011
Justin J. OliverFITZPATRICK, CELLA, HARPER & SCINTO975 F Street, N.W. Washington, DC 20004-1462
Michael K. O’NeillFITZPATRICK, CELLA, HARPER & SCINTO650 Town Center Drive, Suite 1600Costa Mesa, CA 92626-7130
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com2
The Leahy-Smith America Invents Act of 2011
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com3
Topics
AIA’s changes to post-grant challenges
– What stays the same and what is new?
Practice and procedure
– What do we know (thus far) about the operation of the new proceedings?
Strategies and considerations
– How will post-grant practice change in general?
– How do the changes help/hurt challengers?
– How should in-house counsel plan for the changes?
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com4
Changes to Post-Grant Challenges
Before: Ex parte reexam Inter partes reexam
Transition: Ex parte reexam (virtually
unchanged) Inter partes reexam
– Will be phased out in 1 year
– Change of SNQ to “reasonable likelihood”
Post grant review – new
– Business method patents
– All other patents Inter partes review – new
After: Ex parte reexam Post grant review
– Transitional business methods program
Inter partes review Third party submission
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com5
Changes to Post-Grant Challenges
Immediate Changes
– Change in standard for inter partes reexamination Substantial new question of patentability is now “reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged.”
September 16, 2012
– Post-Grant Review Transitional business method program Interferences
– Inter Partes Review – all patents
– End of inter partes reexamination
– Third Party Submission of Prior Art
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com6
Changes to Post-Grant Challenges
March 16, 2013
– Post-Grant Review For non-business method applications having an effective filing
date on or after this date
• Keep in mind that applications with earlier effective filing dates are not eligible for Post-Grant Review
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com7
Topics
AIA’s changes to post-grant challenges
– What stays the same and what is new?
Practice and procedure
– What do we know (thus far) about the operation of the new proceedings?
Strategies and considerations
– How will post-grant practice change in general?
– How do the changes help/hurt challengers?
– How should in-house counsel plan for the changes?
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com8
Practice and Procedure
Post-Grant Review Features
– Transitional Business Method Patents Program
Inter Partes Review Features
Common Features
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com9
Practice and Procedure – Post-Grant Review
Timing
– Petition must be filed not later than 9 months from date of grant of patent (or broadening reissue)
Threshold
– “that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”; or
– there is a “showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications”
Scope
– Arguments under §§ 101, 102, 103, and 112 (but not best mode) Applicability
– Effective September 16, 2012
– Applies to patents having a claim with an effective filing date after March 16, 2013
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com10
Practice and Procedure – Post-Grant Review
Transitional Program for Covered Business Method Patents
– Allows for Post-Grant Review of business method patents after September 16, 2012
– Features unique to program: Must be sued or charged with infringement Applicable to all business method patents, regardless of filing
date Estoppel only for grounds actually raised § 102(a) art
• If not “by another” must be more than a year before filing date
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com11
Practice and Procedure – Inter Partes Review
Timing
– Petition can be filed after 9 months from date of grant or after termination of a Post-Grant Review (includes broadening reissue)
Threshold
– There is “a reasonable likelihood that petitioner would prevail with respect to at least 1 claim of the claims”
Scope
– Arguments under §§ 102 and 103, based on patents and printed publications (same as inter partes reexam)
Applicability
– Effective September 16, 2012
– Applies to all patents (replaces inter partes reexamination)
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com12
Practice and Procedure – Common Features
Initial Determination
– Petition filed by challenger
– Patent owner may file response
– USPTO issues decision on petition within 3 months of Patent Owner response (or deadline for response) Not appealable
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com13
Practice and Procedure – Common Features
Conduct During Review
– Before panel of judges at the Board Removes Examiners from process
– Limited discovery
– Patent owner may amend the patent to:
(1) Cancel a challenged claim; or
(2) Propose a reasonable number of substitute claims Similar to EP Opposition practice, and cuts down on new claim
binges common in current inter partes practice
– Each side will have chance to file comments and request an oral hearing
– Final determination to issue within 1 year USPTO may extend deadline by 6 months for good cause
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com14
Practice and Procedure – Common Features
Settlement
– Joint request for termination with respect to a Petitioner who is settling Terminated with respect to that Petitioner unless the USPTO
has decided the merits
– USPTO might or might not terminate the proceedings If no Petitioner remains USPTO may still proceed to a final
written decision
– No estoppel attaches with respect to a terminated Petitioner
– Settlement must be in writing and made of record
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com15
Practice and Procedure – Common Features
Estoppel
– If a review results in a final decision by the Board, the petitioner may not challenge the claim before the USPTO or court based on any ground the petitioner raised or reasonably could have raised
– Changes “Reasonably” could have raised Attaches with Board decision, as opposed to final appeal
– Estoppel does not attach in EP oppositions – still a big difference
– Common (and unresolved) concerns: That new art will be uncovered during discovery and trial prep That post grant challenges will tie client’s hand with respect to
art turned up during discovery, but after start of a review
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com16
Practice and Procedure – Common Features
Intervening Rights
– Standard: Any amended or new claim shall have the same effect as that
for reissued patents with respect to the right of any person who, before the issuance of the certificate:
• made, purchased, or used within the United States anything patented by the amended or new claim,
• imported into the United States anything patented by the amended or new claim, or
• made substantial preparation therefor Amended claims should eliminate past damages, even if new/amended
claim still covers accused device/process
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com17
Comparison
Ex parte reexamination
Inter partes reexamination
Post-grant review Inter partes review
Transitional post-grant review for business methods
Timing Anytime post-issuance
Anytime post-issuance
Within 9 months from grant (but before challenger files a lawsuit)
After 9 months from grant (but before challenger files a lawsuit)
Only after challenger has been sued for or charged with infringement
Eligibility Any patent Any patent Patent filed under FITF- OR -Dismissed interference- OR -Business method patent
Any patent Any business method patent
Threshold SNQ Reasonable likelihood that the requester would prevail
More likely than not that a claim is unpatentable- OR -novel or unsettled legal question
Reasonable likelihood that the requester would prevail
Same as Post-Grant Review
Basis Patents or printed publications
Patents or printed publications
Any ground that could be raised in litigation under 35 USC § 282(b)(2) or (3) (including §§ 101, 102, 103, 112)
Patents or printed publications
Same as Post-Grant Review, but with limitations to § 102(a) of current statute
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com18
Comparison - continuedEx parte reexamination
Inter partes reexamination
Post-grant review Inter partes review Transitional post-grant review for business methods
Anonymity Yes No No No No
Interviews Yes No No No No
Discovery None None Limited Limited Limited
Time Limit on USPTO
None (“special dispatch”)
None (“special dispatch”)
One year (extendable to 18 months)
One year (extendable to 18 months)
One year (extendable to 18 months)
Early termination
No Possible Joint request (specific to petitioner); any agreement must be submitted
Joint request (specific to petitioner); any agreement must be submitted
Joint request (specific to petitioner); any agreement must be submitted
Estoppel None Any ground raised or that could have been raised
Any ground raised or reasonably could have been raised, unless settled
Any ground raised or reasonably could have been raised, unless settled
Only grounds actually raised
Intervening rights
Yes Yes Yes Yes Yes
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com19
Topics
AIA’s changes to post-grant challenges
– What stays the same and what is new?
Practice and procedure
– What do we know (thus far) about the operation of the new proceedings?
Strategies and considerations
– How will post-grant practice change in general?
– How do the changes help/hurt challengers?
– How should in-house counsel plan for the changes?
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com20
Strategies and Considerations – General Practice
Practicing before the Board– Will reviews operate, procedurally, like interferences?
Experts and declarations become more critical• Board prefers “evidence”• Experts will now be subject to cross-examination
Claim deluge to be reduced– Current practice gives patent owners incentive to submit numerous
new claims during reexaminations “reasonable number” of “substitute” claims changes that
Cost– Declarations and cross-examinations increase cost– Removal of Central Reexam Unit layer reduces cost– Shortened period likely means no multiple non-final actions– Fewer claims, lower cost
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com21
Strategies and Considerations – Tactical Considerations
New Threshold
– Higher than former threshold of “substantial new question” (SNQ) “reasonable likelihood” for inter partes review/reexam “more likely than not” for post-grant review
– 95% of inter partes requests granted under SNQ threshold Explicit intent of Congress to cut back on that number
– Will work against challengers
– Unlike EP Opposition practice
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com22
Strategies and Considerations – Tactical Considerations
New Threshold (continued)
– Will the higher threshold matter in the overall analysis? Real issue is likelihood of invalidating claims, which may or may
not change Even if odds change, will they be better than in district court?
• USPTO is typically more receptive to § 103 rejections
• USPTO uses broader claim interpretation and de novo review
– Expected changes with new threshold Lower chance of appeal to Federal Circuit
• Can still get there through district court, but uphill battle First action allowances will likely go away
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com23
Strategies and Considerations – Tactical Considerations
New Grounds for Invalidity Under Post-Grant Review
– “any ground that could be raised under paragraph (2) or (3) of section 282(b)” §§ 102 and 103
• Beyond printed publications § 101
• Most useful in business method and biotech patents
• Quicker (and cheaper) route to Federal Circuit
• No longer have to wait for litigation or threat of litigation § 112
• Indefiniteness
• Lack of written description
• Enablement
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com24
Strategies and Considerations – Tactical Considerations
Streamlined Process
– Current inter partes reexam takes too long If a stay is not granted, litigation is likely to finish before reexam
• This renders the reexam is of little use, but an added expense
Long timeline was likely to make more courts deny stays
– New procedures Direct to Board Decision in 1 -1.5 years Result:
• Now more attractive option when sued in a plaintiff friendly jurisdiction
• Better argument for stay
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com25
Strategies and Considerations – Tactical Considerations
Estoppel
– Not significantly changed relative to current inter partes reexams Any ground that the petitioner raised or “reasonably” could have
raised
• Available or known to you?
– Different than European opposition practice
– Common concern: Later discovered prior art (e.g., discovery)
– Does not attach if petitioner settles and the challenge is terminated with respect to the petitioner
– Bottom line: Must be confident that you have been diligent in your search for
the best prior art
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com26
Strategies and Considerations – Tactical Considerations
Overall question:
– Which avenue gives you the best chance of success for invalidation USPTO vs. district court
Considerations
– Will overall success rates for post-grant challenges change?
– Are you in a plaintiff friendly venue?
– How deep is your knowledge of the prior art?
– How worried are you about new/amended claims?
– Cost? In general, the new law works in favor of challengers
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com27
Strategies and Considerations – Looking Beyond Challenges
Are you already tracking competitor patents?
– Will need to do so for Post-Grant Review
– Docketing systems will need to track deadlines for challenging Do you need to budget for reviews filed against your patents?
– 5% of European patents face opposition
– Will European numbers be a guide? Estoppel may continue to keep the U.S. numbers down European practice is unique in that it provides the last
opportunity to challenge in a single forum But, U.S. practice will combine Post-Grant Review and Inter
Partes Review, providing more opportunity for challenge than in European practice
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com28
Strategies and Considerations – Preference by Industry
Rate of Oppositions in EPO
0% 1% 2% 3% 4% 5% 6% 7% 8% 9% 10%
Overall Rate
Chemistry
Electrical engineering
Instruments
Mechanical engineering
Other fields
2007-2008
2005-2006
2003-2004
2000-2002
Source: G. Scellato, et al., "Study on the Quality of the Patent System in Europe“, European Commission (March 2011)
FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com29
NEW YORK1290 Avenue of the AmericasNew York, NY 10104-3800212.218.2100
WASHINGTON975 F Street, NWWashington, DC 20004-1405202.530.1010
CALIFORNIA650 Town Center Drive, Suite 1600Costa Mesa, CA 92626-7130714.540.8700
FCHS_WS # 7068199v1.ppt