For those looking for post grant related CLE this week, the Midwest IP Institute will be held in Minnesota September 26-27. The live event will include several post grant panel discussions including an update on legislative efforts, and an overview of post grant practice and strategies under the AIA.
The
When discussing Patent Trial & Appeal Board (PTAB) proceedings at CLE events, I am always fascinated by the degree of interest in PTAB discovery procedures. Parties to an Inter Parties Review (IPR) proceeding may obtain what is termed “limited discovery” at the PTAB. Such discovery is limited as it must fall in an accepted class of discovery, namely, “routine discovery” or “additional discovery.” See Rule § 42.51. Routine discovery is easy to understand, it is simply (1) any exhibit not otherwise publicly available or served, (2) cross examination of a declarant, and (3) non-cumulative information that is inconsistent with a position taken by the party before the PTAB. In the typical case, category (2) is the only routine discovery.
“Additional discovery” defines everything outside of the above noted categories. It is the promise of “additional discovery” that seems to enthrall the masses. To seek such additional discovery in an IPR an “interest of justice” showing is required. Since patent challengers in IPR rely on patent and printed publications filed with their IPR petition, there is rarely, if ever, a need for additional discovery that will satisfy the requisite showing.
Nevertheless, I am routinely asked about “discovery plans” in IPR. In most cases the plan is simple — don’t plan on getting any.
Continue Reading Discovery in IPR Proceedings, Much Ado About Nothing
One of the biggest misconceptions about the new patentability challenges of the America Invents Act (AIA) is the notion that these administrative trial proceedings are somehow analogous to district court litigation — nothing could be further from the truth. Rather, the new AIA proceedings simply skip over the previous patent reexamination examiner phase and go straight to the Patent Trial & Appeal Board (PTAB) phase, with a very limited opportunity for expert depositions along the way.
While it is certainly true that Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) proceedings are “trials,” these PTAB trials are governed by their own unique procedures, and are almost exclusively conducted on paper. As is made clear from the 12 months of proceedings to date, discovery practice is quite limited for these trials since they are based on documentary evidence only (i.e., patents and printed publications).
Looking at the top 5 IPR petition drafting mistakes, it is not surprising that most stem from the failure to recognize the key differences between PTAB and district court proceedings.
Today marks the one year anniversary of the new patent challenge mechanisms of the America Invents Act (AIA). Over the past few months there have been many noteworthy rulings in the 550+ Inter Partes Review (IPR) proceedings and 50+ Covered Business Method (CBM) proceedings. This week, I will look at the rulings that helped shape post grant practice before the PTAB over the first year. Today we start at the beginning with formal petition practice. Later this week, I will look at other phases of the proceeding, up to the time of oral argument such as effective petition practices, motion practice, joinder practice, and requests for additional discovery. While these rules and best practices are certain to evolve further, the PTAB’s decisions over the past year provide invaluable guidance far beyond that provided in the statute, legislative history, rules and notices.
The first step in any IPR, CBM or PGR proceeding is the preparation and filing of the petition.
Continue Reading Top 5 Reasons for Non-Compliant IPR Petitions
The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings— but it is the speed and effectiveness that is changing the perspective of the judiciary on staying litigation pending USPTO proceedings.
As most are aware, the old patent reexamination system, at least on the inter partes side, has been replaced by IPR. IPR must be concluded by statute within 12-18 months, a marked improvement over the (roughly speaking) previous 6+year path through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). These changes are being quickly recognized by courts, several of which have agreed to halt litigation proceedings upon the mere filing of an IPR (months in advance of an Order to grant the IPR petitions).
Previously, when an inter partes or ex parte patent reexamination was the basis for the motion to stay the court proceeding, the strongest plaintiff arguments in opposition were that the significant USPTO delay would prove prejudicial to the plaintiff…not any more.
Continue Reading PTAB Speed Changes Court’s Mind on Motion to Stay Calculus
For those looking for post grant related CLE, September offers a full slate of options. First up, on September 11th, Strafford Legal offers the webinar Post Grant Proceedings and Pending Litigation: Impact of Fresenius v. Baxter
On September 16, the USPTO (Alexandria) will host a half day program entitled America Invents Act
Seems Congress is currently winning the never ending fee diversion battle with the USPTO. As a result, efforts to expand USPTO satellite office to Dallas, Denver and Silicon Valley have been significantly slowed. While permanenet office locations in Dallas and Denver have been identified, the search for a permanent
One of the more intriguing mechanisms of the America Invents Act (AIA) is the Transitional Program for Covered Business Method (CBM) Patents. To date, these speciailized post grant patent challenges have been pursued in relatively limited numbers as compared to the more generic Inter Partes Review (IPR) proceedings. The reason for the disparity between CBM and IPR filing rates is quite simple — IPR is available for any technology not just “business method patents.” Yet, the CBM proceding is far superior to IPR in many strategic respects.
Recognizing the potential of CBM filings to have a greater impact on the patent litigation landscape, Congress is actively considering alterations to the existing statutory framework that would encourage greater use of this powerful AIA mechanism.
Continue Reading Bar Associations Set to Oppose Changes to CBM Statute
As Congress turns back to patent reform efforts in the Fall there will also be a fair amount of activity at the USPTO. The “executive actions” released by the White House months ago were aimed primarily at the USPTO. In response, several proposed rule making packages and changes to examination practice are expected in the coming months.
1. The USPTO is expected to issue strict guidelines requiring the identification of the real-party-in-interest for issued patents.
Continue Reading Coming USPTO Patent Rule Packages & Initiatives
As we head to the end of the summer months, many of the first patentability trials of the AIA are maturing for decision. Going forward, the USPTO’s Patent Trial & Appeal Board (PTAB) will face a growing number of these oral hearings, also the surge of inter partes patent reexamination filings made last September will also be headed to the Board for decision. At last week’s Patent Public Advicory Committee (PPAC) meeting, the PTAB reported on the progress of their workload, and their plans for staffing up in anticipation of the coming reexamination surge.