Archive for the ‘estoppel’ Category

Unified Patents’ Institution Decision Gives Insight to PTAB’s Real Party in Interest Analysis

Monday, February 16th, 2015

Those watching decisions from the Patent Trial and Appeal Board (PTAB or Board) have observed a trend where a patent owner challenges an IPR petition based on alleged defects in the petition’s identification of real parties in interest (RPI) to the petitioner.  As seen in earlier posts, improper identification of RPIs can result in denial of the petition, and the one-year bar imposed by 35 U.S.C. § 315(b) can preclude submission of a corrected IPR petition, resulting in a loss of the right to IPR for that petitioner.  (See my earlier post on First Data Corporation v. Cardsoft, LLC, IPR2014-00715, Paper 9, October 17, 2014.)

Identify RPIs Early in the Proceedings

The prompt identification of RPIs in post-grant proceedings is important as a mandatory notice for a number of added reasons.  An RPI that is barred under § 315(b) would bar a petitioner from institution. (35 U.S.C. § 315(b): “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. . . .”)  The Board does not want to invest time and energy in petitions that are legally barred from institution, nor does it want to impose responses to them on patent owners.

Another reason to properly name RPIs is that any estoppel that may attach to a petitioner of the proceeding will likewise attach to the RPI as well.  35 U.S.C. § 315(e) states (underlining for emphasis):

(e) ESTOPPEL.—

(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any H. R. 1249—19 ground that the petitioner raised or reasonably could have raised during that inter partes review.

The proper naming of RPIs becomes more complicated when a petitioner receives compensation, prior art, suggestions, and/or instructions from others.  The analysis is especially important for petitioners that challenge patents for others, such as in the case of a trade industry association that challenges patents on behalf of its membership.  Those petitioners must carefully follow the Board’s determinations of what constitutes an RPI.  The stakes for petitioners representing a group are high because they represent a number of interested parties.  Therefore, one petition fail is a failure for each party.

The PTAB Trial Practice Guide provides some considerations for performing an RPI analysis.  Office Patent Trial Practice Guide, 77 FR 48756 (Aug. 14, 2012) (see pp. 48759-48760).  Funding of the post-grant activities is one factor.  Another factor is whether a party controls the proceeding, but the Trial Practice Guide notes that there is no simple test based on control:

There are multiple factors relevant to the question of whether a non-party may be recognized as a ‘‘real party in interest’’ or ‘‘privy.’’ [. . .]  A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding. See, e.g., id. at 895; see generally Wright & Miller section 4451. The concept of control generally means that ‘‘it should be enough that the nonparty has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.’’ Wright & Miller § 4451. Courts and commentators agree, however, that there is no ‘‘bright-line test’’ for determining the necessary quantity or degree of participation to qualify as a ‘‘real party-in-interest’’ or ‘‘privy’’ based on the control concept. [Cites omitted.] Accordingly, the rules do not enumerate particular factors regarding a ‘‘control’’ theory of ‘‘real party-in-interest’’ or ‘‘privy’’ under the statute.

The Trial Practice Guide also discusses res judicata and other estoppel considerations:

Additionally, many of the same considerations that apply in the context of ‘‘res judicata’’ will likely apply in the ‘‘real party-in-interest’’ or ‘‘privy’’ contexts.

The test is fact dependent:

The Office has received requests to state whether particular facts will qualify a party as a ‘‘real party-ininterest’’ or ‘‘privy.’’ Some fact combinations will generally justify applying the ‘‘real party-in-interest’’ or ‘‘privy’’ label. For example, a party that funds and directs and controls an IPR or PGR petition or proceeding constitutes a ‘‘real party-in-interest,’’ even if that party is not a ‘‘privy’’ of the petitioner. But whether something less than complete funding and control suffices to justify similarly treating the party requires consideration of the pertinent facts. See, e.g., Cal. Physicians, 163 Cal.App.4th at 1523–25 (discussing the role of control in the ‘‘privy’’ analysis, and observing that ‘‘preclusion can apply even in the absence of such control’’). The Office will handle such questions on a case-by-case basis taking into consideration how courts have viewed the terms.

The Trial Practice Guide does recognize that mere membership in an industry association does not make a member an RPI of an association that files a petition.  The facts must be considered on a case-by-case basis.

Unified Patents Inc. v. Dragon Intellectual Property, LLC

This brings us to the IPR petition that Unified Patents filed requesting review of claims 1, 2, 7, 8, 10, 13 and 14 of Dragon Intellectual Property, LLC’s (Dragon’s) U.S. Patent No. 5,930,444 (the ’444 patent).  (Unified Patents Inc. v. Dragon Intellectual Property, LLC, IPR2014-01252.) The ’444 patent covers streaming media recording and playback.  Unified Patents named no additional RPI in its petition, stating:

Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified Patents is the real party-in-interest, and further certifies that no other party exercised control or could exercise control over Unified Patents’ participation in this proceeding, the filing of this petition, or the conduct of any ensuing trial.

Unified Patents was founded by intellectual property professionals over concerns with the increasing risk of non-practicing entities (NPEs) asserting poor quality patents against strategic technologies and industries. The founders thus created a first-of-its-kind company whose sole purpose is to deter NPE litigation by protecting technology sectors, like content delivery, the technology at issue in the ‘444 Patent. Companies in a technology sector subscribe to Unified’s technology specific deterrence, and in turn, Unified performs many NPE-deterrent activities, such as analyzing the technology sector, monitoring patent activity (including patent ownership and sales, NPE demand letters and litigation, and industry companies), conducting prior art research and invalidity analysis, providing a range of NPE advisory services to its subscribers, sometimes acquiring patents, and sometimes challenging patents at the United States Patent and Trademark Office (USPTO). Since its founding, Unified is 100% owned by its employees; subscribers have absolutely no ownership interest.

Unified has sole and absolute discretion over its decision to contest patents through the USPTO’s post-grant proceedings. Should Unified decide to challenge a patent in a post-grant proceeding, it controls every aspect of such a challenge, including controlling which patent and claims to challenge, which prior art to apply and the grounds raised in the challenge, and when to bring any challenge. Subscribers receive no prior notice of Unified’s patent challenges. After filing a post-grant proceeding, Unified retains sole and absolute discretion and control over all strategy decisions (including any decision to continue or terminate Unified’s participation). Unified is also solely responsible for paying for the preparation, filing, and prosecution of any post-grant proceeding, including any expenses associated with the proceeding.

In the instant proceeding, Unified exercised its sole discretion and control in deciding to file this petition against the ‘444 Patent, including paying for all fees and expenses. Unified shall exercise sole and absolute control and discretion of the continued prosecution of this proceeding (including any decision to terminate Unified’s participation) and shall bear all subsequent costs related to this proceeding. Unified is therefore the sole real-party-in-interest in this proceeding.

(Pet. 2-4.)

In its Patent Owner Preliminary Response (which included redacted portions), the Patent Owner asserted:

As explained below, an inter partes review proceeding should not be instituted in this matter because Unified Patents has failed to establish that it is the “real party-ininterest,” and failed to identify the real party-in-interest when it filed its petition for inter partes review.

Unified Patents is an organization formed in 2012 for the purpose of filing and conducting inter partes review proceedings on behalf of its members so that the members can seek to avoid the estoppel provisions of 35 U.S.C. § 315. The primary value offered by Unified Patents’ to its members is the challenging through inter partes review and similar proceedings of patents asserted in litigation by non-practicing entities against Unified Patents’ members. Indeed, Unified Patents [text redacted]. Since its founding less than three years ago, Unified Patents has collected [redacted] from its members.

As a non-practicing entity itself, Unified Patents has no independent reason to challenge any patents in inter partes review, outside of Unified Patents’ interest in providing litigation “deterrence” services to members. [redacted]

Unified Patents [redacted] which include challenging patents in inter partes review proceedings. There can be no dispute that the money used to prepare and file the Petition, and the money that will be used to pay for prosecution of this proceeding, is sourced from [redacted]. Unified Patents has not identified the real parties-in-interest to this proceeding in its Petition, as it failed to identify the parties who provided the funding for Unified Patents to file this proceeding. The Board should not permit Unified Patents and its members the ‘”second bite at the apple”‘ the real party-in-interest requirement is intended to guard against. The Petition should be denied, and no trial should be instituted on the Unified Patents Petition.

(Patent Owner Preliminary Response, Paper 14, pp. 1-2.)

In its institution order, the Board rejected the Patent Owner’s challenge of the named RPIs:

Patent Owner is correct that the inquiry regarding real parties-ininterest is not limited to determining who directed or controlled a proceeding. On the record at this stage of the proceeding, however, we are not persuaded by Patent Owner’s contention that one or more other organizations paid Petitioner to file the Petition in this IPR. Patent Owner does not allege to have any direct evidence of any organization giving funds to Petitioner for the purpose of filing the Petition in this case. Additionally, even if we assume to be accurate all of Patent Owner’s allegations about circumstances related to the conduct of Petitioner’s business and the filing of the Petition in this case, they do not demonstrate that another entity paid Petitioner for the purpose of conducting this IPR proceeding. For example, even if we accept Patent Owner’s allegations that Petitioner engages in no activity of practical significance other than filing IPR petitions with money received from its members, this does not demonstrate that any member paid, directed, or suggested to Petitioner to challenge the ’444 patent, specifically. See, e.g., Prelim. Resp. 10. Nor do Patent Owner’s other circumstantial allegations, even if accurate, demonstrate as much.

(Decision on Institution of Inter Partes Review, Paper 37, p. 12.)

The Board then distinguished the present case over a collection of earlier proceedings between RPX and VirnetX that Patent Owner asserted (RPX Corp. v. VirnetX Inc.: IPR2014-00171, IPR2014-00172, IPR2014-00173, IPR2014- 00174, IPR2014-00175, IPR2014-00176, and IPR2014-00177 (“the RPX cases”)):

By contrast, in the RPX cases, the evidence demonstrated that the actions of RPX and Apple were like certain prohibited behavior discussed in In re Guan, Reexamination Control No. 95/001,045 (Aug. 25, 2008) (Decision Vacating Filing Date), which stated that

[a]n entity named as the sole real party in interest may not receive a suggestion from another party that a particular patent should be the subject of a request for inter partes reexamination and be compensated by that party for the filing of the request for inter partes reexamination of that patent without naming the party [as a real party-in-interest] who suggested and compensated the entity for the filing of a request for inter partes reexamination of the patent.

Guan at 7–8 (emphasis added); see, e.g., IPR2014-00171, Paper 57, 7. Here, the present record does not demonstrate that any of Petitioner’s members suggested or compensated Petitioner for the filing of the Petition challenging the ’444 patent.

Given this, the alleged similarities between RPX and Petitioner do not persuade us that the result here should be the same as in the RPX cases. That Petitioner likens itself to a trade association does not persuade us that its members constitute real parties-in-interest. As the Office Trial Practice Guide (“Practice Guide”) explains, membership in a trade association does not make an entity automatically a real party-in-interest to a petition filed by the trade association. 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012); see also Paper 20, 4. Additionally, without more compelling accompanying allegations, Patent Owner’s assertion that Petitioner faces no risk of having the ’444 patent asserted against it is unremarkable, as the filing of or threat of a lawsuit is not a prerequisite for a Petition for an IPR proceeding. See 77 Fed. Reg. at 47,459.

For the foregoing reasons, on this record, we are persuaded that Petitioner did not fail to name all real parties-in-interest in the Petition. We note, however, that this Decision does not foreclose Patent Owner from continuing to argue the real party-in-interest issue in the Patent Owner Response. If the record should evolve in favor of Patent Owner on this issue, we would take appropriate action at that time.

(Decision on Institution of Inter Partes Review, Paper 37, pp. 12-14.)

In its analysis, the Board applied In re Guan to clarify that RPX v. VirnetX involved suggestion of the review proceeding and compensation to the petitioner by the RPI.  The Board found that Dragon failed to show that the members of Unified Patents suggested an IPR to Unified Patents and compensated Unified Patents for the IPR.  However, the Board did not prevent Dragon from arguing the RPI issue in its Patent Owner Response.

Trade associations and other associations desiring to petition for review of patents will be monitoring this case closely in the months to come to learn more about how the Board handles real party in interest issues.

Early Termination of PTAB Proceeding Shows Versatility of PTAB Patent Trials

Wednesday, May 8th, 2013

One of the criticisms lodged against traditional reexamination proceedings is that when a request for reexamination is filed, the proceeding may take on a life of its own and typically cannot be withdrawn even if the parties want to dismiss the action.  The AIA provides for patent office trials with more options for parties, because they can move to request termination of the action before a final decision by the Board.  However, the Board is not a party to a settlement and has independent powers to determine jurisdiction and patentability.

The rule lays out the requirements for settlement:

37 C.F.R. § 42.74 Settlement.

(a) Board role. The parties may agree to settle any issue in a proceeding, but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice.

(b) Agreements in writing. Any agreement or understanding between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and a true copy shall be filed with the Board before the termination of the trial.

(c) Request to keep separate. A party to a settlement may request that the settlement be treated as business confidential information and be kept separate from the files of an involved patent or application. The request must be filed with the settlement. If a timely request is filed, the settlement shall only be available: (1) To a Government agency on written request to the Board; or (2) To any other person upon written request to the Board to make the settlement agreement available, along with the fee specified in § 42.15(d) and on a showing of good cause.

Settlements have already begun in PTAB proceedings.  An early settlement was negotiated after filing of an inter partes review petition, but before institution of proceedings in Komatsu America Corp. v. Leroy G. Hagenbuch (IPR2013-00130 relating to U.S. Pat. No. 7,039,507).  Komatsu filed a petition for IPR on January 29, 2103, challenging claims 2, 4-7, 13-18, and 25-36 of the ’507 patent.  The Patent Owner had until May 4, 2013 to file a preliminary response, but instead the parties settled their action in a parallel district court proceeding and filed a joint Motion to Terminate the IPR on April 30, 2013.  The motion included copies of the district court settlement and a copy of the confidential settlement between the parties.  The parties also included a motion to keep the settlement business confidential information pursuant to the rule.  The Board granted the request for confidentiality and terminated the proceedings on May 6, 2013, which was prior to institution of proceedings.

Of course, the prior art cited against the ‘507 patent is now publicly available due to the filing of the IPR petition, so that may affect the practicality of future enforceability of the ‘507 patent, but the parties have avoided legal estoppel due to termination of the proceedings before any final written decision by the Board.  (37 C.F.R. § 42.73)  This case is an example of how early termination of AIA post-grant proceedings can follow settlement, saving the parties and the Board further time and expense.

Early PTAB Orders Demonstrate Differences Between AIA Patent Trials and District Court Trials

Monday, April 29th, 2013

Patent practitioners are still absorbing some of the differences and advantages that are unique to litigation in the PTAB as opposed to district court litigation.  For example, PTAB proceedings only decide questions of validity and are not directed to rule on questions of infringement or damages, as is the practice in traditional litigation.  Another example is that PTAB trials require that the petitioner provide a lot of technical arguments and factual evidence in the original petition, as opposed to traditional litigation where parties make sure they have a good faith basis to sue and then rely on discovery to later develop the case.  Thus, a petition for review of patentability in PTAB practice is more akin to a summary judgment motion than a complaint in trial practice.  But a PTAB petition is still very different than a summary judgment motion.  And these differences can be exploited to more inexpensively and quickly resolve validity issues.

In considering summary judgment, a judge must decide if there is “no genuine dispute as to any material fact,” as set forth in FRCP Rule 56.  In contrast, the technical patent judges on the Board can decide technical disputes instantly and can resolve disputes of technical and legal nature.  PTAB panels use their technical and patent law experience to quickly identify dispositive issues and focus the parties on how their respective positions are being viewed by the Board early in the proceedings.  This means that PTAB trials will put a premium on identification of technical defects in patents early in the proceedings, as opposed to traditional litigation approaches that favor discovery before attempting summary judgment or that shy away from summary judgment as a mechanism for resolution of complex technical disputes.

Examples of the Board’s unique capabilities are already being demonstrated in recent orders.  For example, in an inter partes review by Chimei Innolux Corporation against Semiconductor Energy Laboratory Co.,Ltd. concerning U.S. Patent No. 8,068,204 (IPR2013-00068), the Board squarely addressed technical disputes between what the petition asserted versus what the patent owner’s preliminary statement set forth when the Board decided to institute trial.

The Board took great care to understand and sift through extremely technical differences between the claimed subject matter and the prior art as it was characterized by the parties.  This is a highly complicated task, because the patent relates to improvements for substrate bonding and electrical connections in liquid-crystal displays and because the parties were advancing very technical arguments on both sides of the validity issue.  In this early order to institute trial the Board construed a phrase from the claims and used that construction to decide the merits of the positions taken by the petitioner and patent owner.  The Board then considered technical arguments made by both parties, such as whether a reference used in combination in an obviousness challenge teaches away from the combination (page 15), or whether it would have been obvious to employ a known (contact) structure (page 18).  The Board decided that certain arguments were not persuasive and used the order to focus the parties on the issues it ruled upon.  The following excerpt from pages 19-21 of the the order instituting trial demonstrates the attention to detail that the Board is devoting to these proceedings:

SEL responds that “[. . .] a person of ordinary skill in the art does not know whether an insulating film (first insulating film) is formed between the bottom layer of the first wiring line 127 (formed in the step of forming the scanning lines Yj) and the top layer of the first wiring line 127 (formed in the step of forming the data lines Xi).” (Prelim. Resp. 31.) According to SEL, Shiba’s “‘two-layered structure’” might be “sequentially stacked” without an insulating layer therebetween. (Id.) As noted, claim 31 requires such an intervening insulating layer.

SEL’s argument is not persuasive. Shiba implies or suggests that the two wiring layers in the two-layered structure 127, formed in the same manner as the two-layered scanning and data lines as the quoted passage shows, have an insulating layer therebetween just like the scanning and data lines. [cite omitted]  [. . .  .]  Skilled artisans also would have understood that overlapping portions readily could have been “partially connected” together by known methods, including using a connecting hole through such an insulating layer. [cite omitted]

Because the two-layered structure in Shiba’s lines 127 connect to pad 751, SEL maintains that under various hypothetical scenarios, pad 751 also must have a two-layered structure, and as such, with Sukegawa’s transparent layer modified to be on Shiba’s pad as CMI proposes in its ground of unpatentability, the pad structure would become a three-layered structure. . . .  SEL also argues that the Petition inconsistently conflates or interchanges Sukegawa’s transparent layer and the top layer of Shiba’s two-layered wiring structure 127, and thereby fails to show how the combination renders obvious the external connection line and transparent conductive film as recited in claims 31 and 54. (See Prelim. Resp. 25-26.)

It is clear from the analysis set forth by the Board that it is not afraid to weigh in on very technical issues and clarify how it perceives the arguments.  Of course, the preliminary response by the patent owner is considered a first initial response and is not a comprehensive response with evidence.  Therefore, the Board’s institution of trial is based on limited argument and is well before the patent owner has had an opportunity to fully respond.  But this process focuses the parties on issues that the Board (at least initially) perceives to be negative to the patent.  It is a preliminary ruling on the disputed issues by the Board that will shape discovery to come, as opposed to traditional litigation where discovery often leads and shapes the issues brought before the court.

Parties who believe that an asserted patent has validity issues may find it difficult to challenge disputed technical issues in summary judgment motion practice.  Validity issues are frequently accompanied with fact questions and in litigation there is a clear and convincing standard for invalidity that makes it hard to prove invalidity.  And it is unlikely that counsel will recommend a motion for summary judgment before conducting at least some discovery.  In contrast, in patent reviews and reexaminations the burden of proof is based on a preponderance of the evidence and can be done without discovery.  Given the different standards and the costs of e-discovery, there are significant advantages to the PTAB patent review option for defendants with genuine validity arguments.  But one must be careful to choose the PTAB trial option carefully to avoid estoppel should the proceeding not result in destruction of the relevant patent claims.

AIA Patent Trials Differ from Reexamination

Saturday, April 20th, 2013

In the past few months, I have had discussions with many different stakeholders about how AIA post-grant review differs from conventional reexamination.  AIA patent trials (post-grant review or PGR, inter partes review or IPR, and covered business method patent review or CBM) are substantially different than traditional reexamination.  Some of these differences are summarized in the table below (click on the table to enlarge it):

Other than legacy inter partes reexaminations, the Central Reexamination Unit (CRU) is currently only charged with processing ex parte reexaminations.  What remains to be seen is how ex parte reexamination will change as the CRU processes the legacy reexaminations and its docket frees up.

Patent Challenger Seeks PTAB Jurisdiction over “Involved” Pending Applications

Saturday, October 20th, 2012

The AIA provides new post-issuance proceedings to challenge issued patents.  But can these challenges be used to stop related pending patent prosecution dead in its tracks?  One recent inter partes review petition requests just that and time will tell whether the PTAB takes control of the related applications.

Chi Mei Innolux Corp. (CMI) filed a petition for inter partes review of U.S. Pat. No. 6,404,480 on October 19, 2012.  The ‘480 patent is owned by Semiconductor Energy Laboratory Co., Ltd. (SELC).  SELC sued CMI for patent infringement in a suit styled Semiconductor Energy Laboratory Co., Ltd. v. Chi Mei Innolux Corp., et al., SACV12-0021-JST (C.D. Cal.), filed on January 5, 2012.

The other patents-in-suit in the litigation are U.S. Patents 7,876,413; 7,697,102; 7,956,978; 8,068,204; and 7,923,311.  CMI has indicated that it will be filing petitions for inter partes review of these other patents-in-suit as well, and CMI hopes to have the resulting PTAB trials consolidated with the PTAB trial instituted for the present ‘480 inter partes review.

The family of patents and applications is shown in the following graphic:

 

Things get very interesting when CMI identifies the 12/257,514 and 12/257,521 applications as “involved applications” and requests a stay of prosecution of these involved applications:

37 C.F.R. 42.3 conveys exclusive jurisdiction to the PTAB over every involved application and patent during the proceeding, as the Board may order. See 35 U.S.C. 6 (b), as amended, 35 U.S.C. 326(c), and Public Law 112–29, section 18. The term “proceeding” is defined by 37 C.F.R. 42.2 as a trial or preliminary proceeding. Rule 42.2 also defines the term “preliminary proceeding” as beginning with the filing of an IPR petition. To this end, the PTAB now has jurisdiction over the following involved applications. [see graphic above]

Divisional applications 12/257,514 and 12/257,521 are actively being prosecuted before Art Unit 2871. As the family of applications claiming priority to the ‘480 patent remain active, these applications may be utilized as a basis to present patentably indistinct claims, and, may, if allowed to continue, proceed to issuance prior to the determination of the PTAB in this IPR. The issuance of such indistinct claims during the pendency of this IPR is at least inconsistent with 37 C.F.R. 42.373(d)(ii), and, would provide an “end-around” the reasonable number of substitute claims that may be presented in this proceeding. As such, further USPTO processing of these proceedings may prejudicial to the Petitioner’s interests and inconsistent with controlling PTAB rules. Petitioner respectfully submits that it is appropriate under the circumstances for the PTAB to suspend, sua sponte, further prosecution of the above noted applications, or at least require any further patent application filings, or claim changes be authorized by the PTAB prior to submission to the USPTO.

CMI is correct that the PTAB may acquire jurisdiction of involved patents and applications.  37 C.F.R. § 42.3 states:

(a) The Board may exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order.

(b) A petition to institute a trial must be filed with the Board consistent with any time period required by statute.

Since “involved” means an application, patent, or claim that is the subject of the proceeding, it will be interesting to see whether the PTAB decides to order control of the pending applications as requested by CMI.

Creative attempts to use the AIA to challenge patents, such as this one, have only begun.  Many more will come.  The complexities of these challenges raise the stakes for patent owners.  They must now reconsider how they choose their patent counsel to make sure they understand not only how to make patent rights that will survive prosecution and litigation, but also rights that will survive reexamination and post-grant review proceedings.

Steady Stream of AIA Post-Issuance Review Petitions Filed in PTAB

Friday, October 19th, 2012

It has been a little over one month since post grant patent reviews were authorized by the AIA and the Patent Office Patent Review Processing System (PRPS) shows about 47 petitions on file in the PTAB.

Look at it this way to put things in perspective:

  • The 47 petitions filed over this past month are just shy in number of the total number of inter partes reexamination requests filed  in the first four years of the inter partes reexamination statute (only 53 total inter partes reexamination requests were filed in the years of 2000 to 2004 according to PTO statistics).
  • If this rate of filing continues for the next 11 months, we could see about 500 petitions in the first year period, which is more than the 374 inter partes reexamination requests filed in 2011.
  • Assuming we only see about 250 such petitions this year, that would roughly equate to the number of filings of inter partes reexamination requests filed in 2009 (258).

So regardless of how many filings are made over the year, AIA post-grant proceedings are off to a very fast start compared to the adoption of inter partes reexamination.  This is interesting because there is obvious popularity despite enhanced filing fees, costs of preparation, and estoppel.

More Inter Partes Patent Reviews Filed on the PTAB PRPS

Thursday, September 27th, 2012

As of 01:00 on September 27, the number of petitions for covered business method (CBM) patent reviews remained at 6, but five more petitions for inter partes reviews (IPRs) were filed, making a total of 17 IPRs.  The total number of pending potential trials is now at 23 (actual trials have not be instituted yet, as these are still preliminary proceedings and the Board must decide whether they meet the requisite standard).

The most recent filings were by Sony (IPR2012-00033), Nissan North America (IPR2012-00037 and IPR2012-00035), and Synopsys, Inc. (IPR2012-00042 and IPR2012-00041).

Some of these recent filings are petitions for review of relatively few claims.  In certain matters grounds for unpatentability under 35 US.C. § 102 are made, with backstop arguments under 35 US.C. § 103.  In some such cases, the obviousness rejections are not supported by declaration evidence, so the Petitioner must feel fairly confident in the scope of the cited prior art.  When few claims are presented for review, more detailed assertions of prior art can be made in the 60 page maximum for the petition.  See IPR2012-00035 for one such example.  Of course, it is too early to tell if the Board will institute an inter partes review using such an approach and whether the Petitioner’s approach will be ultimately sucessful.  But time will tell, unless such matters settle before proceedings go further.

Comparative Study of Post Issuance Review Options

Friday, September 21st, 2012

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.

Preissuance Submission Final Rules Published July 17, 2012

Friday, July 20th, 2012

The Patent Office has published its final rules for preissuance submissions under the AIA. A copy of the final rules can be found here (2012-16710). I briefly summarized the rule requirements in a presentation that can be found here (Preissuance Submissions Final Rule July 17 2012).

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Do You Want That Post-Grant Review Super-Sized? – Part III

Tuesday, November 22nd, 2011

This is the third post in a series of articles on PGR strategies.  In Part I, I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) basically come in two sizes.  By statute, the PGR must complete in 1 to 1 ½ years.  Part II addressed some of the issues that the Petitioner faces during a PGR and when the Petitioner may benefit from a 6 month extension.  This post will provide some insight to the Patent Owner’s analysis of what to do if its patent is tested in a PGR.

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