Comparative Study of Post Issuance Review Options

Today I had the pleasure of co-presenting at the Midwest IP Institute on various post-issuance proceedings with Kevin Rhodes, Chief Intellectual Property Counsel and President of 3M Innovative Properties Company.  A PDF of our joint presentation is found here.

The presentation provides a comparison between IPR (inter partes review), PGR (post grant review), and CBM (covered business method) patent review.  It contrasts these proceedings to ex parte reexamination (EPX).  The goal was to present the available options for review of patents now that inter partes reexamination is no longer available.

The presentation further covered administrative trials in the PTAB.  A hypothetical was used to demonstrate the use of litigation, IPR, PGR, CMB, and EPX depending on strength of 35 USC § 101 and § 112 arguments as opposed to 35 USC § 102 and § 103 prior art invalidity arguments.  Different scenarios were used to demonstrate the complexity of the analysis.

My thanks to Kevin Rhodes and 3M for allowing me to post these slides.

This entry was posted in America Invents Act, Broadest Reasonable Interpretation standard, Claim Construction, clear and convincing evidence, covered business methods, estoppel, estoppel, estoppel from administrative proceeding, ex parte reexamination, indefiniteness, inter partes reexamination, inter partes review, Litigation, motion practice, Patent Reform, patent-eligible subject matter, petitions practice, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, statutory subject matter, supplemental examination and tagged , , , , , , , , , , , , , , , , , , , . Bookmark the permalink.

One Response to Comparative Study of Post Issuance Review Options

  1. Priyanka says:

    One very important point that this man did not see epzhasimed as fully in this document as he believes it warrents was the outright and severe damage done to an innocent Defendant simply by the act of filing a suit against them when the Plaintiff(s) in the suit suffer no such equivalent damage in the process. The Defendant is punished by Plaintiffs who have no regard for the money they spend in the process when courts allow this process to go forward in the mistaken belief that it will all be resolved fairly at trial. Defendants are also blackmailed into becoming unpaid investigators for the Plaintiffs whose shoddy investigative work has misidentified them in the first place. These cases exploit loopholes in the American judicial system that permit grave damage to selected Defendants with no proper recourse.And regarding downloaded files, nobody including the Defendant knows what is actually in a file until it is downloaded and played. File names tell you nothing. To claim knowing violation of copyright by (unproven) downloading of files seems wrong at best, and likely duplicitous on Plaintiff’s part.This man is left to speculate how, provided that Doe #3 wins his/her meritorious case here, the subpoena is quashed, Doe #3 is the prevailing party, and well deserved attorney’s fees are awarded, how Doe #3 will be able to anonymously cash the check. An interesting question if payment of fees would result in revealing Doe #3’s identity.This man is also sorry that other Does decided to (apparently) settle, rather than all fight together.{The Common Man Speaking}

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