Speeding It Up at the USPTO July 2013 July 23, 2013

Speeding Up Invalidity

Patent Office Invalidity Proceedings Post-Grant Review (PGR) Inter Partes Review (IPR) Covered Business Method Review (CBM) (Derivation Proceedings– not going to discuss)

Patent Office Invalidity Proceedings PGRIPR ≤ 9 Months From Issue >9 Months OR After PGR

GAP! Patent Office Invalidity Proceedings PGRIPR ≤ 9 Months From Issue >9 Months OR After PGR IPR Technical Amendment to AIA Fixed

Patent Office Invalidity Proceedings Old news-- why are you now mentioning? –Implementation of concrete rules, guidelines, and practices has now occurred. – After the initial knee-jerk reaction against these proceedings when the AIA was implemented, opinion is now changing to look favorably upon these proceedings.

Advantages Over Federal Court Lower Evidentiary Standard for Invalidity –USPTO- preponderance of the evidence –Court- clear and convincing Claim Interpretation More Favorable –USPTO- broadest reasonable interpretation –Court- patent owner in a Markman hearing can ask for a narrower interpretation to avoid prior art 3-judge panel are all experienced patent attorneys

Advantages Over Federal Court Less expensive –Cost is 10% of a federal lawsuit –Will likely stay a co-pending federal lawsuit Fast –Completed in 18 months after filing petition –Discovery is automatic –Patent owner’s first 60-page response is due in 3 months with no extensions!

The Default Timeline for IPR, PGR, and CBM DateEvent Petition filed 3 months laterPatentee’s Preliminary Response (optional) 3 months laterDecision on Petition (by claim and by grounds); and Patentee’s 3-month discovery period begins 3 months later (Due Date1:)* Patentee’s Response & Motion to Amend Claims is due; and Petition’s 3-month discovery period begins. 3 months later (Due Date 2:)* Petition’s Reply to Response and Opposition to Motion to Amend Claims is due, and Patentee’s 1- month discovery period begins. 1 month later (Due Date 3:)* Patentee’s Reply to Motion to amend, and the period for Observations & Motions to Exclude Evidence begins. 3 weeks later (Due Date 4:)* Petitioner’s motion for observation regarding cross- exam of reply witness due. Request for oral argument due.

The Default Timeline for IPR, PGR, and CBM DateEvent 2 weeks later (Due Date 5:)* Patentee’s response to observation due. Opposition to motion to exclude due. 1 week later (Due Date 6:)* Reply to opposition to motion to exclude due. Set on Request (Due Date 7:)* Oral Argument 12 months after Decision on Petition Final Written Decision Due *The parties may stipulate different dates for Due Date 1 through 5, but in no case can those dates be extended beyond Due Date 6 without authorization.

What About the Disadvantages? Estoppel –Estoppels arise on challenged claims, not entire patents –Estoppels for a CBM review is limited to arguments that were actually raised –Is estoppel a real concern when the odds for invalidating in court are worse? Claim Amendments –Are not automatic –Amendments must address grounds raised in petition or they will be rejected

What About the Disadvantages? Availability –PGR/IPR/CBM- not available if you file a complaint declaratory judgment before filing petition (excludes counterclaims)

How to Use Litigation –Quickly knock out invalid patents Snow Plow –Clear the way for new products

Critical details about Post-Grant Review Available for patent if filed under first-inventor- to-file (AIA) regime Must be filed within 9 months following the issue date or a broadening reissue date Can challenge a patent for most anything except obvious-type double patenting Should raise all possible challenges in petition due to potential estoppel effects

Critical details about Inter Partes Review Available for all enforceable patents Must be on §102 or §103 grounds Not available more than one year after served with a complaint A company can unknowingly purchase a bar to filing an IPR with the acquisition of another company.

Critical details about Covered Business Methods Review Broader Coverage Than What You Might Think –Includes method and apparatus claims –Includes AIA and Pre-AIA patents –May include data processing inventions outside of the financial services field Available if you have been sued or charged with infringement Only one CBM claim required to make entire patent subject to review Stay of a federal lawsuit is all but guaranteed with an automatic appeal to CAFC

Speeding It Up at the USPTO July 23, 2013 Copyright 2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP