© COPYRIGHT 2012. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Post Grant Proceedings Before the...

© COPYRIGHT 2012. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED.

Post Grant Proceedings Before the USPTO and Litigation Strategies Under the AIA

Panelists: David BeckPhillip JohnsonGary GriswoldSteven Weisburd

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Problems with determining strategies today

• UPSTO Rules on Post Grant Proceedings are not finalized

• Many issues (e.g., the scope of the estoppels) have not been addressed by the courts

• There is no directly applicable experience before the Patent Trial and Appeal Board

• While we can identify issues, no one can now provide meaningful recommendations as to whether to file a USPTO post grant proceeding rather than litigation


Litigation Strategies: Effect of AIA on litigations filed prior to Sept. 16, 2011

• False Marking

– No longer qui tam actions

– Actions for actual damages by competitors can continue

• Tax Strategies

– Not patentable unless method or apparatus for filing tax returns


Litigation Strategies: Affect of AIA on litigations filed on or after Sept. 16, 2011

• Best Mode

• Joinder provisions

– What is the “same product”?

• Why have trolls continued to file actions against large number of defendants?

– Will cases remain joined for discovery purposes?


Motions to Stay

• Over the last several years, courts have stayed about 60% of the cases when a motion to stay is filed early in the case. This percentage goes down to as low as 40% after 3 ½ years.

• Will that number go up or down under the AIA?

– Automatic stays

• PGR

• IPR

– Standards for Covered Business Methods


Supplemental Examination


Supplemental Examination

• Only the patent owner can file

• The purpose of this new procedure is to allow the patent owner to have the USPTO “consider, reconsider, or correct information believed to be relevant to the patent”

– What is information?

– Under what circumstances might a patent owner want to use this procedure?

– Inequitable conduct

• Present “but for” standard

• Only effects patentability of otherwise valid claims


Post Grant and Inter Partes Review


What unresolved issues are important to making Post Grant & IPR Proceedings Useful?

• Scope of required initial disclosures and permitted evidentiary supplementation

• Evidence permitted in preliminary response

• Construction of claims (BRCC)

• Scope and efficiency of discovery

• Extent and nature of motion practice

• Nature and effect of claim amendments

• Application of the estoppel provisions

• Manner in which Administrative Judges run the proceedings


Post Grant Review

• Only applies to patents subject to the first to file rule

– Not likely relevant for three or more years

• Must be filed within 9 months of patent issuance but before a DJ action

• Can challenge patent on any grounds

• Estoppel: any issue raised or that reasonably could have been raised


Post Grant Review

• Will allow limited discovery

– USPTO Rules not finalized

– Present rules include mandatory and optional discovery

• Mandatory:– Submit supportive documents and testimony with Petition and

various oppositions

– Submit any noncumulative information that is inconsistent with a position advanced by either party “as soon as practical”

• Optional– Discovery in the interest of justice


Some potential pros/cons of PGR vs. litigation

• Cost

• Speed

• Presumption of validity

• Highly focused vs. open issues

• Full vs. limited discovery

• Ability to amend claims in PGR

• Lay jury vs. technical/patent expert

• Estoppel (both for PGR and litigation)

– One bite at apple vs. two


Inter Partes Review


Inter Partes Review

• When to file:

– 9 months or more after patent is granted/reissued

– if a Post-Grant Review has been filed, the date of termination of a Post- Grant Review proceeding

– but before any DJ action by the Requester challenging validity of the claims at issue

• Counterclaims for invalidity do not prevent a party from petitioning for IPR

– Within one year after the petitioner is served with a complaint for infringement of the patent


Inter Partes Review

• Grounds: validity under §§102 and 103 based upon prior art patents and publications

• Amendments: can petition to make one set of amendments

– To issued claims

– To add a “reasonable” number of new claims (presumption is that one new claim will be needed for each cancelled challenged claim)

• Estoppel: issues that were or reasonably could have been raised


Inter Partes Review

• Discovery – same issues as PGR


IPR vs. Inter Partes Reexam

Inter Partes Review

• Expedited

• Limited discovery

• Estoppel: any issue that was or reasonably could have been raised

• Before an Administrative Judge

• You are before the Board in the first instance

Inter Partes Reexamination

• Not expedited

• No discovery

• Estoppel: any issue that was or could have been raised

• Before an examiner

• First the examiner makes a decision, then you go before Board


Some potential pros/cons of IPR vs. litigation

• Cost

• Speed

• Presumption of validity

• Highly focused vs. open issues

• Full vs. limited discovery

• Ability to amend claims in IPR

• Lay jury vs. technical/patent expert

• Estoppel (both for PGR and litigation)

– One bite at apple vs. two


Covered Business Methods



• Only a transitional procedure:

– Takes effect 1 year after enactment and expires 8 years thereafter

• Financial Industry Patents:

– A patent that claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of financial products or services

– Does not include patents for “technological inventions”

• Grounds for invalidity:

– Any ground



• Who may file:

– Petitioner must be the real party in interest that has been sued or charged with infringement under the patent

• Procedures:

– Proceedings are same as Post-Grant Review and are conducted by the Patent Trial and Appeal Board

• Estoppel:

– Petitioner cannot raise issues in a civil action that were raised in the proceeding once a final written decision of the Patent Trial and Appeal Board is issued



• Stays:

– When either party requests a stay in a civil action, the court shall decide on whether or not to grant the stay based upon the following factors:

• Whether a stay will simplify the issues in question and streamline the trial

• Whether discovery is complete and whether a trial date has been set

• Whether a stay would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party

• Whether a stay will reduce the burden of litigation on the parties and on the court

– A party may take an interlocutory appeal to the Federal Circuit to “ensure consistent application of established precedent”

– The review on appeal is de novo


QUESTIONS

© COPYRIGHT 2012. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Post Grant Proceedings Before the...

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