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What Do In-House Counsel Need to Know?
AIA Proceedings
Molly Kocialski, Senior Patent Counsel, Oracle
Dion Messer, General Counsel - IP, Limelight Networks
Douglas Luftman, Chief Intellectual Property Counsel, NetApp
Mehran Arjomand, Partner, Morrison & Foerster
Thomas Franklin, Partner, Kilpatrick Townsend & Stockton
Overview• Types of Proceedings and Statistics• Timing Issues – When to file?• Finding Post-grant Filings• Differences in Invalidity Standards• Joining other AIA Proceedings• Real Party in Interest• Who / When to Hire• Estoppel Issues• Settlement• Practice Tips
Types of Post-Grant Proceedings
• Post-Grant Review (PGR)
• Inter Partes Review (IPR) (most common)
• Covered Business Method (CBM)
Statistics Regarding Proceedings to Date
Source: http://www.uspto.gov/aia_implementation/statistics.jsp
Proceeding Available Applicable Timing
Post Grant Review (PGR)
From patent grant to 9 months after patent grant or
reissue
Patent issued under
first-inventor-to-file
Must be completed within 12 months from institution, with 6 months
good cause exception possible
Inter Partes Review (IPR)
For first-to-invent, available after 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
Patent issued underfirst-to-invent or
first-inventor-to-fileSame as PGR
Covered Business Method (CBM)
Available 9/16/12 (for first-inventor-to-file only after PGR not available
or completed)
Patents issued under first-to-invent and
first-inventor-to-file
Same as PGR
Inter Partes Review (IPR)
Petitioner Estoppel Standard Basis
Post Grant Review (PGR)
• 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
• Raised or reasonably could have raised
• Applied to subsequent USPTO/district court/ITC action
More likely than notORNovel or unsettled legal question important to other patents/applications
101, 102, 103, 112, double patenting but not best mode
Inter Partes Review (IPR)
• 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)
• Must identify all real parties in interest
• Raised or reasonably could have raised
• Applied to subsequent USPTO/district court/ITC action
Reasonable likelihood
102 and 103 based on patents and printed publications
Covered Business
Method (CBM)
• Must be sued or charged with infringement
• Financial product or service
• Excludes technological inventions
• Must identify all real parties in interest
• Office—raised or reasonably could have raised
• Court-raised
Same as PGRSame as PGR
(some 102 differences)
IPR Statistics – Terminated thru 5/1/14
Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014
Cumulative AIA Petitions thru 5/1/14
Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014
Tech Breakdown of AIA Petitions thru 5/1/14
Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014
When to File?
• PGR: Within 9 months from patent grant or reissue• IPR:
– Pre-AIA: Available anytime after grant or reissue– Post-AIA: Later of: 9 months from patent grant or reissue,
or termination date of all pending PGRs
• CBM: After PGRs available and complete• Other timing issues
– Must initiate before declaratory judgment challenge to patent
– Speedy decision from PTAB
http://www.uspto.gov/ip/boards/bpai/prps.jsp
Finding other proceedings – Step 1
Finding other proceedings – Step 2
Finding other proceedings – Step 3
Finding other proceedings – Result
Finding other proceedings – Docket
Differences in Invalidity Standards
• Patent Trial and Appeals Board (PTAB) standard
• District Court standard
• Claim construction standard
• Expertise of Judges
Cumulative AIA Decisions thru 5/1/14
Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014
What to file
• Qualifying Art
• Your art or someone else’s
• Raised or Could have been raised
• 102 or 103?
Who / When to Hire
• Searching for invalidating art– Search firms– Bounty searchers
• Experts
• Lawyers
Joining other AIA Proceedings
• Rules for Joinder
• Pros/Cons of Joining– Cost savings– Estoppel issues– Divergent interests
AIA Petitions Statistics thru 5/1/14
Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014
Real Party in Interest
• Joint Defense Groups (JDG)• Changes to JDG Agreements
• Patent Aggregation Groups
• Indemnity Claims– Indemnitor vs. Indemnitee Perspective– Changes to master agreements
Estoppel Issues
• Forum differences between IPR and PGR
• When does it attach?
• Scope differences between IPR and PGR
AIA Final Written Decisions thru 5/1/14
Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014
Settlement Issues
• Requirements for entry
• Settlement does not necessary prevent final decision
• Timing of settlement
AIA Settlement Statistics thru 5/1/14
Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014
Settlements with Adverse Judgments thru 5/1/14
Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014
Practical Considerations
• Always consider post grant challenges to problematic patents
• Threaten filing to NPE if you have good prior art
• Consider negative implications of challenge
• Coordinate with litigation / licensing strategy
• Consider timing issues in strategy
Questions?
Blogs and Digests
• www.patentspostgrant.com
• aiablog.com/trials-by-ptab
• interpartesreviewblog.com
• ptabtrialblog.com
• ptabdigest.com
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