Inter Partes Review vs. Inter Partes Reexam (cont) - Technology ...

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Dec 5, 2012 (4 years and 8 months ago)

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Wolf, Greenfield & Sacks, P.C.
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600 Atlantic Avenue
|

Boston, Massachusetts 02210
|

617.646.8000
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wolfgreenfield.com

Life Under AIA:


Anticipating and Surviving
Post Grant Challenges




January 26, 2012

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Presenters

Edmund J. Walsh

Shareholder

Co
-
chair, Reexamination Group

ewalsh@wolfgreenfield.com

direct dial 617.646.8212

B.S., Electrical Engineering, Boston University

M.S., Electrical Engineering, Stanford University

J.D., Suffolk University Law School

1


Michael T. Siekman

Shareholder

Co
-
Chair
,
Biotechnology Group

msiekman@wolfgreenfield.com

direct dial 617.646.8336

B.S., Biology, Bates College

J.D., Intellectual Property Law Concentration, with honors,
Boston University School of Law

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

2

LARGEST IP
-
ONLY LAW FIRM BASED IN
NEW ENGLAND

200+


IP professionals and staff

82


Attorneys and technology specialists

89%


Degree in science/engineering

66%


Ph.D., M.D., Advanced degree

56%


Prior industry experience

85


Years serving clients

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

3

TECHNOLOGY AREAS

Deep Expertise

pharmaceuticals

biotechnology

chemical

and materials

nanotech

mechanical

medical

cleantech

electrical

and computer

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

4

SOME OF OUR UNIVERSITY AND RESEARCH
ORGANIZATION CLIENTS

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Topics For Today


Post
-
grant opposition


Differences relative to
Inter Parte
s reexam,
interferences


Comparison with EPO (European Patent Office)
oppositions, and lessons learned from Europe’s
experience


“More likely than not” standard


Discovery rules


Appeal procedures


Tactical issues


Filing a preliminary response


Amending patent


cancelling or modifying claims

5

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Topics For Today
(cont)


Interface with litigation: Estoppel rules,
automatic stays, and more


Crystal ball gazing: Implementation by
USPTO still to come


Practical issues for TTOs


6

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Post Grant Review


Inter
partes

review and post
-
grant review


Post
-
grant review first proposed in 2002


Second window obstacle for several Congresses


2011 compromise


No second window, but


Inter
partes

reexamination replaced by
inter
partes

review


AUTM
:

In addition to having the reviews conducted by a panel of
three
Administrative
Patent
Judges rather than patent examiners
, H.R. 1249 has
incorporated
two
significant
changes
of S. 23 that will make
inter
partes

reviews an
effective instrument
for legitimate
challenges to patents while substantially
reducing
the
prospect that
the procedure can be
used for mounting harassing serial challenges
:

• Reinstatement
of a
broad estoppel
against raising in any subsequent challenge to
the patent
issues that “reasonably could have been raised” as well as issues
actually
raised
,
and


R
aising
the threshold
for initiating an
inter
partes

review from the current

substantial new
question of patentability” to a “reasonable likelihood that the
petitioner
will prevail
with respect to at least one of the claims challenged in the
petition
.”

7

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Patent Challenges

OLD

LAW

NEW

LAW

Pre
-
issue
Challenges


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-
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-
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Ex

Parte
Reexamination


A癡vl慢ae


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Inter Partes
Reexamination


A癡vl慢ae


m潳t
-
杲慮t 牥癩敷


Inter partes
review

Litigation


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慮搠灯獴
-
杲慮t
灲潣敤畲敳

8

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Inter Partes
Review vs.
Inter Partes

Reexam


Faster


Mandate to complete in 1 year


(Likely to be 15+ to 21+ months)


No “examination”


directly to Patent Trial and
Appeal Board


Appeals directly to Court of Appeals for the
Federal Circuit (Federal Circuit)


Limited opportunities for patent holder to
amend claims


Likely limited opportunities for challenger to
submit evidence or new grounds for invalidity
(PTO is tasked with developing rules over the
next year)


9

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Inter Partes
Review vs.
Inter Partes

Reexam
(cont)


Wider availability


Does not have to raise “new” question


Standard: more likely than not the requester will
prevail


Seems harder to meet


In practice:


Unlikely to request inter partes review without
being likely to prevail


Need to set out well reasoned case


Not like regular prosecution: examiners will not
accept proposed rejections like they might
make in ordinary prosecution


All patents (regardless of filing date)

10

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Inter Partes
Review vs.
Inter Partes

Reexam
(cont)


Relationship to litigation


More of either/or choice with litigation


No post grant challenge and declaratory judgment
action


Must be initiated within one year of initiation of
litigation


Estoppel


Applies to grounds “raised or reasonably could have
been raised”


Applies to further challenges in PTO, District Court or
ITC


Must be a final decision by Patent Trial Board with
respect to a claim for estoppel to attach



11

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Inter Partes
Review vs.
Inter Partes

Reexam
(cont)


Not an examination, a
trial

before the Board


Discovery (limited)


Oral hearing


Settlement


Protective orders


Sanctions


12

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Post
-
Grant Review


Limited to 9 months after issuance of
patent or reissue


Not limited to
§§
102 or 103:


Any patentability ground (except best mode)


Novel or unsettled legal question


Direct analog to EPO oppositions


Same time period


Essentially any unpatentability ground

13

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Post Grant Review vs. EPO Oppositions


About 5% of EP patents opposed


PTO is hiring 100 new APJs and predicts
$37 million increase in costs by 2016


But likely to be less common in the U.S.


Estoppel provisions apply


Major impediment to
inter partes
reexamination until
recognized as a litigation tool


Cost is likely to be higher


Higher initial evidentiary hurdle



14

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Procedure for Post
-
Grant Review Proceedings


§

316
Conduct of
inter
partes

review


§

326 Conduct of post
-
grant review


Identical to each other


Each provision has an analog in the Contested Case
Rules and/or Standing Order


Contested
c
ases
r
ules


Board overhauled interference rules in 2004


“Provide test bed for cancellation proceedings



PTO is developing rules package

15

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Likely Procedure for Post
-
Grant Review Proceedings


Petition


Preliminary response


Institution


Paper trial


Direct via declaration; cross via deposition


Motion practice


Unpatentability


Amending claims


Very

limited discovery


Oral hearing

16

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Ex Parte
Reexamination


Largely unchanged (except estoppel
arising from post
-
grant review)


Useful for patent holders


Greater opportunity to add or amend claims


Slower pace


More opportunities to work with Examiner,
including
ex parte
interviews


Useful for challengers


Avoids express estoppel

17

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Tactical Issues


Patent owner’s preliminary response?


May not really be “optional,” if PTO requires
patent owner to include their evidence with
response


Will be tempting to respond on the merits


petition not grantable means challenger should
not win


What is your objective?


If petition dismissed, no estoppel


Faster time to closure


file minimal response to start
one year clock

18

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Tactical Issues
(cont)


Amending claims


Potentially huge benefit of amended claims


Intervening rights are downside of making
amendments


Limited opportunity to amend claims


Early assessment will be key



19

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Crystal Ball Gazing


Will the new standard matter?


Stay of litigation


Still discretionary, but more likely because of timing;
stay in ITC may also be possible


Making or defending challenge is likely to be
more expensive than existing processes


More care in selecting “experts”


Use of Post Grant Review may be industry
-
dependent


Biotechnology


if freedom to operate is key factor in
ability to enter deal/raise funds


Computer, electronic and mechanical inventions
likely limited to same situations where
inter partes
reexam is used now (as adjunct to litigation)


20

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Practical Issues for TTO’s


Prepare in advance


Make your patents less susceptible to challenge


More claims


Include scenario claims


narrower, but limited to
commercially valuable scenarios


Claim inventive aspects in multiple ways


Line up counsel


Specialized nature of proceedings; quick deadlines


Be proactive: supplemental examination,
ex
parte
reexam or reissue if a validity challenge is
expected


Revise agreements with licensees to address
cost and control of challenge

21

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Effective Dates

Provision




Effective Date

Changes
to
§
102:



Applies to applications having an effective filing

First inventor to
file



date later than
March 16, 2013
after enactment



Changes to inter partes review


September 16, 2012


applies to all patents





whenever issued



New post
-
grant review process


September
16, 2012


BUT applies only to





patents claiming/having effective filing date after




that date


New pre
-
issue submission process


September
16, 2012


applies to any then





pending

application


New
marking provision


In effect


Best
mode provision


In effect


Micro entity status



In effect


15% PTO fee increase


In effect

22

© 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved.

23





Questions