POST GRANT REVIEW
UPDATES
YOU THOUGHT YOU HAD A VALID PATENT, DIDN’T YOU?
TYPES OF POST-ISSUANCE PROCEEDINGS
• EX PARTE:
• REISSUE
• REEXAMINATION
• SUPPLEMENTAL EXAMINATION
• INTER PARTES:
• POST GRANT REVIEW (PGR)
• INTER PARTES REVIEW (IPR)
• COVERED BUSINESS METHOD REVIEW (CBM)
• INTER PARTES REEXAMINATION (NO LONGER AVAILABLE)
DIFFERENCES
(COURTESY OF USPTO)
Inter Partes
Review (IPR)
Petitioner
•
Post Grant Review
(PGR)
•
Must identify all real parties in
interest
•
Person who is not the patent
owner, has not previously filed a
civil action challenging the
validity of a claim of the patent,
and has not been served with a
complaint alleging infringement
of the patent more than 1 year
prior (exception for joinder)
Inter Partes Review
(IPR)
Covered Business
Method (CBM)
Person who is not the patent
owner and has not previously
filed a civil action challenging
the validity of a claim of the
patent
•
Must identify all real parties in
interest
•
Must be sued or charged with
infringement
Financial product or service
Excludes technological
inventions
Must identify all real parties in
interest
•
•
•
Estoppel
•
Raised or reasonably could
have raised
•
Applied to subsequent
USPTO/district court/ITC
action
•
Raised or reasonably could
have raised
•
Applied to subsequent
USPTO/district court/ITC
action
• Office—raised or reasonably
could have raised
• Court-raised
Standard
More likely than not
OR
Novel or unsettled legal question
important to other patents/
applications
Reasonable likelihood
Same as PGR
Basis
101, 102, 103, 112,
double patenting but
not best mode
102 and 103 based
on patents and
printed publications
Same as PGR (some
102 differences)
DIFFERENCES
(COURTESY OF USPTO)
Proceeding
Post Grant
Review (PGR)
Inter Partes
Review (IPR)
Covered
Business
Method (CBM)
Available
From patent grant to 9
months after patent
grant or reissue
For first-inventor-to-file, from
the later of: (i) 9 months after
patent grant or reissue; or (ii)
the date of termination of any
post grant review of the
patent.
For first-to-invent, available
after grant or reissue
(technical amendment)
Available 9/16/12 (for firstinventor-to-file only after PGR
not available or completed)
Applicable
Timing
Patent issued under
first-inventor-to-file
Must be completed
within 12 months from
institution, with 6
months good cause
exception possible
Patent issued under
first-to-invent or
first-inventor-to-file
Patents issued under first-toinvent and
first-inventor-to-file
Must be completed within 12
months from institution, with
6 months good cause
exception possible
Must be completed within 12
months from institution, with
6 months good cause
exception possible
DIFFERENT STANDARDS OF PROOF
• “REASONABLE LIKELIHOOD” AND “MORE LIKELY THAN NOT” ARE DIFFERENT STANDARDS
• BOTH ARE HIGHER THAN “SUBSTANTIAL NEW QUESTION OF PATENTABILITY
• CHIEF PTAB JUDGE (JAMES DONALD SMITH) ISSUED STATEMENT (ON THE USPTO WEBSITE):
• COMPARING THE TWO STANDARDS, THE "REASONABLE LIKELIHOOD" STANDARD IS LOWER THAN THE
"MORE LIKELY THAN NOT" STANDARD. THE REASONABLE LIKELIHOOD STANDARD ALLOWS FOR THE
EXERCISE OF DISCRETION BUT ENCOMPASSES A 50/50 CHANCE WHEREAS THE "MORE LIKELY THAN NOT"
STANDARD REQUIRES GREATER THAN A 50% CHANCE OF PREVAILING.
COMMON THREADS
• MUST IDENTIFY ALL REAL PARTIES IN INTEREST (I.E., NO ANONYMOUS FILINGS)
• STAY OF CONCURRENT PROCEEDINGS:
• IF PARTY PETITIONING FOR REVIEW PROCEEDING INITIATES SUBSEQUENT CIVIL ACTION OR ITC
INVESTIGATION (BASICALLY N/A TO CBM REVIEW), SUCH ACTION IS AUTOMATICALLY STAYED.
• IF PROCEEDING INITIATED FIRST, STAY AT DISCRETION OF COURT. TYPICAL FACTORS:
1) STAGE OF LITIGATION
2) WILL STAY SIMPLIFY ISSUES IN THE CASE
3) WILL STAY UNDULY PREJUDICE NONMOVING PARTY OR GIVE CLEAR TACTICAL ADVANTAGE TO MOVING PARTY
4) (CBM ONLY) WILL STAY, OR DENIAL THEREOF, REDUCE THE BURDEN OF LITIGATION ON THE PARTIES AND THE
COURT – (INTERLOCUTORY APPEAL TO CAFC FROM DISTRICT COURT DECISION ON STAY AVAILABLE IN CBM)
COMMON THREADS
• APPEAL IS TO CAFC
• SETTLEMENT POSSIBLE
• PROCEEDINGS MAY NOT BE TERMINATED BY PTAB, EVEN IF PARTIES JOINTLY REQUEST TERMINATION
• IF PROCEEDINGS CLOSE TO A DECISION
• IF FUTURE PROCEEDINGS ARE LIKELY DUE TO REMAINING CONCURRENT PROCEEDINGS
• MUST FILE A COPY OF THE SETTLEMENT AGREEMENT
CBM REVIEW
• A COVERED BUSINESS METHOD PATENT:
• …CLAIMS A METHOD OR CORRESPONDING APPARATUS FOR PERFORMING DATA PROCESSING OR
OTHER OPERATIONS USED IN THE PRACTICE, ADMINISTRATION, OR MANAGEMENT OF A FINANCIAL
PRODUCT OR SERVICE.
• NOT IDENTICAL TO 101 NON-STATUTORY SUBJECT MATTER INQUIRY
• NOT SUFFICIENT FOR PATENTED INVENTION TO BE INTENDED TO SAVE MONEY OR POPULAR
AMONG FINANCIAL SERVICES COMPANIES
• PETITIONER NEEDS TO BE IN LAWSUIT OR “CHARGED WITH INFRINGEMENT”
CASE STUDY (CBM2016-00044)
BMC SOFTWARE, INC. V. ZIT CONSULTING GMBH
• REPRESENTATIVE CLAIM
CASE STUDY (CBM2016-00044)
BMC SOFTWARE, INC. V. ZIT CONSULTING GMBH
CASE STUDY (CBM2016-00044)
BMC SOFTWARE, INC. V. ZIT CONSULTING GMBH
RELATED 101 NOTE
RELATED 101 NOTE
(FROM PGR2016-00013 – CONCURRENT PROCEEDING)
PRACTICAL ADVANTAGES FOR PETITIONER
• WELL-HEELED PETITIONER MAY SIMULTANEOUSLY FILE MULTIPLE PETITIONS FOR REVIEW OF THE
SAME PATENT
• SINGLE PETITION LIMITED TO 60 PAGES, ABSENT MOTION SHOWING WHY “INTERESTS OF JUSTICE”
REQUIRE MORE – DOES NOT LIMIT FILING MULTIPLE PETITIONS
• PATENT OWNER (OR PTAB SUA SPONTE) MAY LOOK TO CONSOLIDATE CONCURRENT PTAB PROCEEDINGS
OR ELIMINATE DUPLICATIVE GROUNDS
• PETITIONER MAY PRESENT EXPERT TESTIMONY WITH PETITION IN SUPPORT OF GROUNDS OF
REJECTION, BUT PATENT OWNER MAY NOT PRESENT COMPETING EXPERT TESTIMONY IN
PRELIMINARY RESPONSE
• IF REVIEW INSTITUTED, THEN PATENT OWNER MAY SUBMIT EXPERT TESTIMONY
PRACTICAL ADVANTAGES FOR PETITIONER
• SIGNIFICANCE OF INSTITUTION (AGAIN COURTESY OF USPTO)
PRACTICAL ADVANTAGES FOR PETITIONER
PRACTICAL ADVANTAGES FOR PETITIONER
PRACTICAL ADVANTAGES FOR PETITIONER
• PTAB IS NOT BOUND BY DISTRICT COURT DECISIONS IN FAVOR OF PATENTABILITY
• NOVARTIS V. NOVEN PHARMACEUTICALS, (FED. CIR. APRIL 4, 2017)
• DELAWARE DISTRICT COURT RULED AGAINST OBVIOUSNESS OF NOVARTIS CLAIMS IN LITIGATION WITH NOVEN.
NONOBVIOUSNESS OF SAME CLAIMS ALSO UPHELD BY DELAWARE DISTRICT COURT AND CAFC IN LITIGATION
WITH OTHER PARTIES.
• PTAB DECIDED IT NEED NOT CONSIDER THOSE DETERMINATIONS SINCE RECORD BEFORE PTAB WAS DIFFERENT
(ALTHOUGH ADMITTEDLY “SUBSTANTIALLY THE SAME”)
• CAFC AFFIRMED, BUT ON GROUNDS OF DIFFERING EVIDENTIARY STANDARD
•
NEVERTHELESS, EVEN IF THE RECORD WERE THE SAME, NOVARTIS’S ARGUMENT WOULD FAIL AS A MATTER OF LAW. THE PTAB
DETERMINED THAT A “PETITIONER IN AN INTER PARTES REVIEW PROVES UNPATENTABILITY BY A PREPONDERANCE OF THE
EVIDENCE (SEE 35 USC 316(E)) RATHER THAN BY CLEAR AND CONVINCING EVIDENCE[] AS REQUIRED IN DISTRICT COURT
LITIGATION,” MEANING THAT THE PTAB PROPERLY MAY REACH A DIFFERENT CONCLUSION BASED ON THE SAME EVIDENCE.
ODD RESULT
• NOVARTIS CONSIDERATIONS
• WHAT HAPPENS TO THE EARLIER NON-APPEALED JUDGMENT ADVERSE TO NOVEN (AS WELL AS THE
JUDGMENTS AGAINST OTHER PARTIES)?
• AS PATENTLY-O POINTS OUT, OBVIOUSNESS IS A QUESTION OF LAW.
• SOME MOTIVATION TO WAIT OUT DISTRICT COURT LITIGATION BEFORE FILING REVIEW
PROCEEDING?
SOME PRACTICAL LIMITATIONS
• PGR PETITION MUST BE FILED WITHIN 9 MONTHS OF GRANT
• IPR PETITION BARRED FOR A PETITIONER (REAL PARTY IN INTEREST OR PRIVY) WHO WAS
SERVED MORE THAN ONE YEAR EARLIER WITH AN INFRINGEMENT COMPLAINT
• CBM REQUIRES SUIT FILED OR PARTY “CHARGED WITH INFRINGEMENT”
OTHER CONSIDERATIONS
• PROCEEDINGS MOVE VERY QUICKLY
• ALTHOUGH PATENT OWNER CANNOT SUBMIT EXPERT TESTIMONY WITH PRELIMINARY RESPONSE, WILL WANT TO HAVE
EXPERT LINED UP IN CASE PROCEEDING IS INSTITUTED.
• PTAB MEMBERS ARE USUALLY QUITE INTELLIGENT AND FAMILIAR WITH RELEVANT LAW
• PAGE LIMITATIONS DICTATE DEDICATING MORE SPACE TO FACTUAL CONSIDERATIONS. IF BASIC GROUNDS OF LEGAL
POSITIONS ARE SET FORTH SOMEWHERE INITIALLY, YOU WILL PROBABLY BE ABLE TO FURTHER DEVELOP LATER IF YOU
NEED TO.
• MOTIONS TO AMEND
• RARELY SUCCESSFUL
• MUST NOT ONLY DISTINGUISH FROM PRIOR ART APPLIED IN INSTITUTED GROUNDS, BUT ALSO NON-INSTITUTED
GROUNDS AND ALL OTHER PRIOR ART PATENT OWNER IS AWARE OF (IN 15 PAGES).
OTHER CONSIDERATIONS
• DISCOVERY
• ROUTINE DISCOVERY IS MANDATORY AND NEED NOT BE REQUESTED. ONLY INCLUDES:
• CITED EXHIBITS
• CROSS-EXAMINATION OF AFFIDAVIT TESTIMONY
• RELEVANT INFORMATION INCONSISTENT WITH A PARTY’S POSITION, SERVED CONCURRENTLY WITH FILING
OF DOCUMENTS/THINGS CONTAINING THE INCONSISTENCY
• “ADDITIONAL DISCOVERY” MUST BE REQUESTED (UNLESS PARTIES AGREE – WHICH PTAB LIKES)
OTHER CONSIDERATIONS
• FIVE GARMIN FACTORS:
OTHER CONSIDERATIONS
• ALTHOUGH GARMIN FACTORS CONSIDERED IN ALL REVIEWS, STANDARD IS DIFFERENT FOR IPR
V. PGR/CBM
• IPR – INTERESTS OF JUSTICE (SLIGHTLY HIGHER)
• PGR – GOOD CAUSE
QUESTIONS/COMMENTS
• THANK YOU FOR YOUR TIME.