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