This is the second post in a series of articles on PGR strategies. In my last post I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) don’t. PGRs are very different from ex parte prosecution. In ex parte prosecution, if a patent application includes 200 claims that are somehow not divided by restriction practice, there is a way to prosecute all of them using extensions of time, requests for continuing examination (RCEs), and an almost unlimited capacity to amend the claims if necessary. In post-grant review, however, the Patent Owner has limited time to argue its position and limited opportunities to amend the issued patent. Furthermore, the Petitioner may appear to have an initial advantage when a petition for a PGR is granted because the Patent Office will employ a heightened standard when deciding whether to grant a PGR. The heightened standard provides that granted PGR petitions include grounds that are likely to result in a successful challenge at least one claim of the patent. But at this stage, despite this initial “win” for Petitioner, the PGR is still young and there is much to consider.
Like litigation, the parties have to objectively question the merits of the challenge to decide what to do next. If the Petitioner thinks its PGR case is relatively weak, extended amounts of time in motion practice will probably damage the initial momentum it obtained in getting the PGR petition granted. When advancing a weak set of grounds of invalidity/nonpatentability, the Petitioner may work to avoid the super-sized PGR (see the first post – Part I) if at all possible, because that results in more time to review the merits of the matter and is probably adverse to Petitioner’s success (recall that the “super-sized” version may involve an extra 6 months). And under this hypothetical, what little defenses the Petitioner may have in the PGR will not be available in district court litigation if unsuccessful in the PGR due to the estoppel provisions. Therefore, weak challenges, in addition to having limited use in the PGR, may also create estoppel in court.
If the Petitioner thinks its PGR case is strong, the Petitioner may be indifferent to a decision to allot more time to the review. On the other hand, perhaps the grounds are strong against the issued claims, but there are new claims offered in an amendment that the Petitioner needs more time to properly challenge. In this latter case, the super-sized PGR may afford extra time to properly challenge the newly added claims. If the grounds for the PGR are exceptionally strong, then the Petitioner may want the “regular-sized” PGR to provide rapid disposal of the patent claims to avoid the commensurate additional cost of motion practice for an additional six months.
So a PGR Petitioner may consider timing in a PGR in much the same ways as is done in litigation. Like the super-sized French fries and one’s health, super-sizing a PGR does not necessarily benefit a Petitioner.
But what about the Patent Owner? That is the subject for another post.