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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Your Patent Has Been Challenged at the PTAB….Now What?

Posted On: Sep. 11, 2012   By: Scott A. McKeown
preliminary response IPRPatentees Faced with a New Game on September 16th

For those litigious patentees that have not paid much attention to the passage of the America Invents Act (AIA), or more particularly, the details of the new post grant validity trials of the Patent Trial & Appeal Board (PTAB), a rude wake up call may be headed in your direction. Starting this Sunday, petitions for Inter Partes Review (IPR) and the Transitional Program for Covered Business Method Patents (TPCBMP) will begin to be accepted by the USPTO.

IPR is available for all existing patents (but note the dead zone for very recently issued patents). This is a big change from the previous inter partes patent reexamination model which could not reach patents that stemmed from applications filed before November 29, 1999. TPCBMP will permit the presentation of invalidity arguments that are not based on patents and printed publications. Presentation of non-documentary evidence was not permitted under the old reexamination based system.

There are some standing requirements for petitioners, however, that may prevent some from filing a petition for IPR/TPCBMP. In IPR. standing considerations are primarily based upon certain parallel litigation factors. Namely, a petitioner that has filed a previous declaratory judgment of invalidity against a patent cannot later challenge the patent in IPR, nor can a petitioner that has been served with a complaint for infringement at least 12 months prior. As to TPCBMP, only those petitioners that have been sued or charged with infringement of a qualifying “business method” patent have the necessary standing.

Both IPR and TPCBMP proceedings will provide for limited discovery, be conducted exclusively by Administrative Patent Judges (APJs) of the PTAB, and completed within 12-18 months, by statute.

With the expanded scope and benefits of the PTAB trial proceedings, patentees that previously were unaffected by patent reexamination may find themselves on unfamiliar ground in a few days. So, if your patent becomes the subject of a petition for IPR or TPCBMP, now what?

First, the speed at which these proceedings will be conducted cannot be overstated. Within days of receiving the confirmation copy of the petition, counsel should be retained. Almost immediately, initial disclosures may be exchanged and ageed upon discovery may be conducted between the parties (even though discovery at this point is unlikely). Additionally, the Patentee has three months from the filing of the petition to consider a preliminary response strategy.

As a reminder, prior to ordering a trial in either of the new proceedings, Patentees will now have the option of submitting a preliminary response to persuade the PTAB that the petition is without merit. While on paper the filing of a preliminary response may seem to foster a more balanced system, in practice, such filings may not be as commonplace as one might expect.

Keep in mind that the USPTO has predicted in their rule packages that the IPR that the grant rate will be 90% (as compared to the current 93%  grant rate of inter partes patent reexamination, which has no preliminary response mechanism). Still, many are quick to embrace the preliminary response as a “no-brainer” opportunity to persuade the PTAB that a trial should not be instituted….but such filings can have very undesirable effects.

The strategy pertaining to preliminary responses will be dictated, in large part by co-pending litigation status.

No Litigation

Setting aside the unfavorable statistics for a moment, let’s assume there is a fairly straightforward, but somewhat latent technical error exists in a claim chart or petitioner argument. Pointing that error out prior to institution of the proceeding and convincing the PTAB to deny the petition will simply permit the petitioner to cure the defect, and refile. On the other hand, once the PTAB trial is instituted, estoppel will attach to a written decision, effectively preventing any further petitions….better to win later in that scenario.

Second considering the statistics, the harm in filing a preliminary response is that it is unlikely to prevent a trial as to every claim. In the process, you have given the petitioner an advance preview of your arguments. Indeed, the preliminary response cannot even include rebuttal  testimony (expert declarations) without a showing of cause (interests of justice; 42.107; 42.207). So, the odds of rebutting a petition that includes such evidence is quite low. Moreover, by providing advance notice the third party may avail themselves of the supplemental information provision (42.123; 42.223). Such supplemental information could allow a third party to further refine their positions based on the Patentee’s preliminary response, if filed.

However, there are instances in which a preliminary response is a “no brainer.”

Litigation

Using the example above of the latent defect, if the preliminary response is due to be filed after the 12 month litigation window has expired, the petitioner will be prevented from re-filing. Thus, there is no downside to filing a preliminary response at this point, assuming there is a strong sense that the patentee will prevail and not simply provide advance notice of their positions.

If the petitioner is seeking to stay the parallel litigation, patentees will almost certainly file a preliminary response to avoid appearing uncooperative to the judge charged with determining whether or not the stay should be granted. In such cases, it is expected that procedural issues will be the preferred form of attack for the reasons noted above; this tactic is discussed next.

Standing

Another instance where a preliminary response will almost always make sense is if it presents arguments pertaining to standing. For example, arguments that point out that the patent subject to the TPCBMP does not qualify as a “business method,” or the petitioner has not been “charged with infringement.” Likewise, it may be argued in a preliminary response that the IPR is not proper based on the parallel litigation status (DJ filed on invalidity, or outside the 12 month window). These type of procedural victories will also prevent refiling and almost always make sense.

The strategies and decision making in the new post grant proceedings of the PTAB will come quickly and continuously after petition filing, prudent patentees will take the matter seriously. Later this week I will discuss additional patentee strategies to employ in anticipation of a PTAB trial.

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