Archive for the ‘inter partes reexamination’ Category

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.

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.

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.

Claim Interpretation for Post-Grant Review and Inter Partes Review under the AIA – Part I

Wednesday, June 20th, 2012

Today, USPTO Director David Kappos posted a comment advocating the use of  the broadest reasonable interpretation standard (BRI) for claim interpretation in post grant review and inter partes review under the America Invents Act.  This is a topic of great interest among those conducting post-grant review of patents because of numerous conflicts occuring in practice due to different intepretive standards used in reexamination (now also post-grant review and inter partes review) and litigation.

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Declaratory Judgment Plaintiff and Stays Pending Reexamination

Monday, March 12th, 2012

In Interwoven, Inc. v. Vertical Computer Systems, Inc. (Case No. C 10-04645 RS, Northern District of California), Judge Richard Seeborg was less than persuaded by Interwoven’s attempt to obtain a stay after filing an ex parte reexamination of the patents in suit.

BACKGROUND

Vertical owns U.S. Pat. Nos. 6,826,744 and 7,716,629 relating to Internet technologies.  Vertical sued Microsoft in the Eastern District of Texas and settled in 2009.  Later, Vertical informed Interwoven that its products infringed the patents as well.   Interwoven filed a declaratory judgment action in the Northern District of California and Vertical countered with a counterclaim for patent infringement. (more…)

New, More Popular Post-Grant Patent Challenges Drive Patent Generation Strategy

Saturday, September 24th, 2011

Patent Generation and Enforcement Before the Popularity of Post-Grant Proceedings

Patent Owners adopt different approaches for drafting patent applications.  For large companies a patent production line approach is frequently adopted which limits the cost and the commensurate drafting efforts on any particular application.  There is a reasonable argument to use this “assembly line” approach for very large portfolios.  But for smaller companies and/or for extremely strategic portfolios this approach may fail.  Why?  Because when the effort expended to establish patent rights is limited, the resulting patent applications can be hastily drafted, or just plain incomplete.  They can also fail to consider relevant prior art.  Such applications can turn into weak patents.  And weak patents in litigation or in reexamination may lose the day for the patent owner.

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America Invents Act: Post-Grant Procedures for Patent Challengers

Monday, September 19th, 2011

Now that the America Invents Act has become law there are several new provisions for patent challengers to consider.  For example, the Act includes:

  • preissuance submissions by third party challengers (Sec. 8 — see the last post);
  • Post-Grant Review (Sec. 6 – see slides*);
  • Inter Partes Review (Sec. 6 – see slides*);
  • Business Method Transitional Proceedings (Sec. 18 – see slides*); and
  • Formation of the Patent Trial and Appeals Board (PTAB) (Sec. 7 – see slides*).

(*Many of the features of the last 4 bullet items on this list are discussed in my PowerPoint slides presented at the AIPLA Electronics and Computer Law Summit on August 16, 2011.)

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Patent Challengers get additional Preissuance Challenge Option after Leahy-Smith Bill Passes

Monday, September 5th, 2011

Pre-Issuance Challenge Option Added

Section 8 of the Act provides for additional pre-issuance submissions by third parties by amending 35 U.S.C. 122.  Written submission of the relevance of a patent application,  patent, published patent application, or other printed publication must be made before the Notice of Allowance or the later of (1) six months after the date of publication of the application under section 122,  or (2) the date of first rejection under 35 U.S.C. 132.  The submission must set forth a concise description of the asserted relevance of each document submitted, include the necessary fee, and include a statement that the submisson was made in compliance of the section.  This option shall take effect one year after enactment of the Act and applies to any patent applications filed before, on, or after the effective date.

However, this option must be used carefully.  If the submission fails to convince the ex parte prosecution Examiner that a document is relevant, it may complicate a later challenge of the patent using similar grounds.  The test for initiating a post-grant review is that “more likely than not that at least one of the claims challenged is unpatentable.”  And for inter partes review, the test is that “there is a reasonable likelihood that the petitioner will prevail with respect to at least one claim challenged.”  Thus, a poorly postured preissuance submission can complicate acceptance of a later petition for a post-grant proceeding.

 

Strategic Use of Reexamination in view of the Patent Reform Bill

Monday, August 22nd, 2011

Last week I had the privilege of speaking on reexamination at the AIPLA Electronics and Computer Law Summit.  The title of my speech was “Strategic Use of Reexam after Patent Reform – Post-Grant Review and Inter Partes Review.”  The powerpoint presentation materials can be found here.  The materials assume that the bill currently pending before the Senate is passed substantially intact.  The speech focuses primarily on post-grant review and inter partes review.  It also touches on supplemental examination and the proposal to provide PGR-like review of “covered business methods.”  We shall see how Congress votes on the bill in September.

Estoppel in Post-Grant Review (cont’d)

Saturday, August 20th, 2011

In the previous post we discussed some aspects of post-grant review (PGR)  in the current bill before the Senate.  The grounds available for petition in PGR are more comprehensive than those available for traditional reexamination and and also for the grounds of petition slated for inter partes review.  So if the estoppel is on grounds that “Petitioner raised or reasonably could have raised during that post-grant review” then the estoppel arising from PGR is likely to be broader than other post-grant procedures (click on graphic above to enlarge).  That means a petitioner of a post-grant review has a lot to think about before filing a petition.

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