Post-Grant Review

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Severe Page Limit Restrictions Likely to Force Parallel Filings

The page limit restrictions proposed by the USPTO for the new post grant proceedings of the America Invents Act (AIA) are quite severe. The currently proposed rules set a maximum 50 page limit for requests to initiate Inter Partes Review (IPR), and 70 pages for Post Grant Review (PGR). The page limits may be waived upon successful petition for additional pages, however, the Office has explained that such cases would be “exceptional.”

As if the page limits were not enough, the proposal also requires double spacing and a 14 point font (§42.24). These guidelines, taken together with the need to explain lengthy patent claims (up to 20 claims per request) and compare complex figures of the prior art, combine to present significant disincentives to the public. Simply stated, the “use it or lose it” nature of the statutory estoppel provisions of IPR and PGR are inconsistent with such restrictions. For example, to present more than a single proposed rejection in an IPR request directed to 10 claims or more would almost certainly exceed the 50 page limit.

As pointed out last week, the mean page count for an inter partes patent reexamination (IPX) is several hundred pages. IPR was formulated by Congress to replace IPX. As such, the Office’s administrative restrictions may very well frustrate the intent of Congress that these new post grant proceedings serve as a meaningful alternative to patent litigation (in which expert reports on validity and related pleadings may span thousands of pages).

An additional side effect of the proposed limits may be that filers present their proposed rejections across several requests filed in parallel.…

Continue Reading USPTO Post Grant Rule Proposals to Force PieceMeal Practice?

Proposed Page Limits Based on Interference Model

As discussed previously, the fees proposed to initiate for Post Grant Review (PGR) and Inter Partes Review (IPR) may be too cost prohibitive for many filers. Yet, perhaps more troubling than the proposed fee structure is the extreme page limits proposed for these proceedings.

The proposed rules set a maximum 50 page limit for requests to initiate IPR, 70 pages for PGR (inclusive of claim charts). The proposed rule explains that federal courts often impose page limits, and perhaps more importantly that the “Board’s experience” in patent interference leads the Office to believe that the current proposals are reasonable. The Office explains that the current page limit for prior art motions in a patent interference is 25 pages. Thus, the Office reasons that the doubling of this existing limit to 50 pages for IPR is quite reasonable.

The Office has borrowed heavily from patent interference practice in arriving at the proposed rules of procedural practice before the Patent Trial & Appeal Board (PTAB); this makes sense. However, one size does not fit all with respect to contested proceedings. There are important distinctions between a patent interference and an IPR/PGR. That is to say, the problem with the Office’s reasoning is that validity challenges in patent interference do not encumber challengers with statutory estoppel that extends to the federal courts; nor are such validity based challenges the focus of a patent interference (i.e., priority dispute). Indeed, as the very ownership of the patent rights are in dispute in a patent interference, there may be strategic reasons for limiting validity challenges.

Rather than gauging the proposed page limits for IPR and PGR on patent interference practices, it would make much more sense for the USPTO to look to the current practice in inter partes patent reexamination (IPX); the very proceeding being replaced by IPR. So far in 2012, the mean page count for IPX requests is 262….a far cry from the 50 pages proposed by the USPTO.…

Continue Reading USPTO Page Limit Proposals Need Recalibration

Rules to Implement Post Grant Proceedings to Add New Layer of Patentee Estoppel

The estoppel impact of inter partes patent reexamination (IPX) has long been a concern for third party requesters. Should an IPX requester fail in its attempt to invalidate a patent before the USPTO, the estoppel provisions preclude a subsequent attempt to invalidate the same patent in a district court (at least based upon patents and printed publications).

For the new post grant proceedings of the America Invents Act (AIA) the same basic concept exists for requesters― one bite at the apple. However, the estoppel is triggered substantially earlier. In post grant proceedings under the AIA estoppel under 35 USC 315 attaches upon the issuance of a final written decision, which should occur around a year and a half from the filing of the petition for review in a typical case. In contrast, IPX estoppel attaches only upon issuance of the reexamination certificate, after exhaustion of all appeals to Article III courts.

Perhaps even more significantly, the proposed rules to implement the Post Grant Review and Inter Partes Review proceedings add a new layer of estoppel against Patentees.

The impact of this proposed change would be devastating for large patent filers.…

Continue Reading USPTO Proposal to Destabilize Large Patent Portfolios

MPF Claim Interpretation Required to Initiate New AIA Proceedings

In past posts I have pointed out that in analyzing requests for patent reexamination, Examiner’s are trained to apply a Broadest Reasonable Interpretation (BRI) to patented claims. Unfortunately, over emphasis upon this standard ignores the fact that the scope of certain patent claims are defined by 35 U.S.C. § 112, 6th paragraph, and may not be interpreted in this manner, namely—“means/step-plus-function” claims.

In my experience, the USPTO will almost always grant a reexamination request for MPF claims by applying an improper BRI analysis of the recited function alone. In fact, I have never seen a Request denied for failure to provide the necessary structural mapping between the specification and MPF claims. Of course, such a mapping is expressly required when appealing a rejection to the Board of Patent Appeals & Interferences (BPAI).

As a result, Patentees will often argue for proper claim interpretation under 112 6th paragraph throughout the reexamination, only convincing the Board as to the proper interpretation of the MPF claims years later. Likewise, by not forcing the issue at the time of the Request, Patentees may only resort to arguing 112 6th at the appeal stage (after failing to distinguish art under the BRI standard); either situation is a waste of Office resources. One such case of a Patentee changing course was illustrated yesterday in Ex Parte EON Corp. IP Holdings LLC.
Continue Reading Post Grant Petitions to More Closely Scrutinize Means Plus Function Claims

Modern Patent Troll Business Model Insulated from New Post Grant Challenges

Roughly two weeks ago the USPTO published the last of the Post Grant related rule packages established by the America Invents Act (AIA). The rule packages propose hefty filing fees for both Post Grant Review (PGR) and Inter Partes Review (IPR), $35,800 and $27,200 respectively. These filing fees attempt to capture the aggregate cost of conducting these proceedings as estimated by the Agency. Although the filing fee price levels were largely expected by the public, especially after the proposed increase in the filing fee for ex parte patent reexamination, the accompanying claim-count surcharge was not.
Continue Reading Post Grant Fee Structure a Boon for Patent Trolls?

PTAB & Post Grant Proceedings Detailed by USPTO

In advance of the printing in the Federal Register later this week, the USPTO has released its proposed rules for the contested case provisions, i.e., inter partes review, post grant review, the transitional program for covered business methods, and derivation. The documents appearing below are not the official Federal Register publications of those proposed rules. The official Federal Register publications will follow later this week on February 9 and 10, 2012. Publication of the proposed rules in the Federal Register will begin the sixty-day public comment period for the proposed rules.

Links to the various rule sets are found below:

Proposed Rules for Trials before the Patent Trial and Appeal Board (aka Proposed Umbrella Rules)

Practice Guide for Proposed Trial Rules

Proposed Rules for Post Grant Review

Proposed Rules for Inter Partes Review

Proposed Rules for the Transitional Program for Covered Business Methods

Proposed Rules for the Definition of Technological Invention

Proposed Rules for Derivation

Quick facts are as follows;…
Continue Reading USPTO Issues Massive Post Grant Rule Package

Winter 2012 – New Rules

Early 2012 is shaping up to be an exciting time for patent law, particularly for those focused on post grant patent practice.

USPTO–As to the new rule packages necessary to implement the new post grant mechanisms of the America Invents Act (AIA), it is rumored that the supplemental examination…

Ex Parte Patent Reexamination Practices Adjusted to Account for Estoppel

The new estoppel provisions of Inter Partes Review (IPR) and Post Grant Review (PGR) differ from the previous estoppel provisions of inter partes patent reexamination in that they not only prevent a subsequent request for IPR/PGR from the same requester (or privies) on issues that were raised or reasonably could have been raised in the first proceeding, but prevent the filing or maintenance of any other “office proceeding.”

By definition a Post Grant Review (PGR) can only be conducted prior to an IPR. This is because an IPR can only be filed once the 9 month PGR window has ended, or after any ongoing PGR concludes. As such, the primary office proceeding that can be requested, or maintained in this regard (i.e., after IPR/PGR estoppel attaches) is ex parte patent reexamination (EXP).

As pointed out previously, in order to properly estop an ongoing EXP proceeding or filing, the Office must implement a system to track EXP filings with respect to the real party in interest. This tracking is complicated by the fact that many EXP proceedings are filed anonymously. Last Thursday, the USPTO issued their plan.…
Continue Reading USPTO to Revise Ex Parte Patent Reexamination Procedures