Posts Tagged ‘prior art’

Patent Due Diligence and Evaluation After the AIA

Monday, July 18th, 2016

Many factors must be considered for due diligence and valuation of a patent portfolio. The patent owner’s desire to have broad claims that capture a large number of infringements must be tempered against its need for claims that will not be deemed invalid in view of prior art.

Before the America Invents Act (AIA), patents were crafted to survive federal court scrutiny.  An assertion of broad claims was more likely than sweating the details about validity because it was harder to prove a patent was invalid than it was to prove it was infringed.

With the enactment of the AIA, the Patent Trial and Appeal Board (PTAB or Board) is empowered to review patent validity in administrative trials (AIA Trials). Patents are more readily invalidated in these AIA Trials using a lower burden of proof than required in federal district court. Furthermore, the Board’s administrative patent law judges have both scientific and patent law training, which enables them to scrutinize patents more carefully than a typical district court judge or jury.

The “new normal” is that a patent’s validity is likely tested in the PTAB (in IPR, CBM, or PGR) before it is enforced in federal district court. Savvy companies are taking extra measures to review their patents carefully before acquiring and asserting them to reduce or avoid the cost and delay that comes with PTAB proceedings.


  • RISK: AIA Trials statistically favor the Petitioner/Defendant. Don’t invest in a portfolio or a litigation that won’t deliver value.
  • DELAY: Patent Office Trials are one more reason for a stay of parallel federal district court proceedings. Justice delayed is justice denied.
  • COST: Patent owners dragged into an IPR, PGR or CBM can expect six figure defense costs with the best-case outcome being that the claims are upheld—which is essentially the patent’s original status.
    rarely allowed in IPRs, CBMs, and PGRs. Don’t expect to fix defective patents without a lengthy proceeding that is conducted after the AIA Trial.
  • HARM TO FUTURE ACTIONS: If claims survive the AIA Trial validity challenge, admissions may be made that could reduce the effectiveness of any district court infringement action.

Poorly crafted patent claims are typically cancelled in an AIA Patent Trial. High quality patents are more likely to bypass review, and those patent owners avoid the cost, delay, and risk of defending weak claims in AIA Trials.

To get a good read of a patent’s ability to survive AIA review, seek the opinion of patent counsel that is experienced in patent prosecution, patent litigation, and post-grant proceedings.

In case you missed it, I put together a simple 2 minute video with 4 tips to make your patent portfolio AIA-ready.

Microsoft v. i4i and the Presumption of Validity – Part 1

Saturday, March 5th, 2011

Posted March 5, 2011

In Microsoft v. i4i, which has been granted certiorari by the Supreme Court, Microsoft’s position is that the presumption of validity should not be enjoyed by a patent owner for prior art not considered by an Examiner in ex parte prosecution of a patent application.  The upshot of its position is that the standard for the burden of proof of patent invalidity should be “preponderance of the evidence” (as opposed to the “clear and convincing evidence” standard) for prior art not considered by the Examiner in the original ex parte prosecution.

This blog posting will not take a position as to what the law should be.  That is the Supreme Court’s job.  But let’s consider the presumption of validity and how a change in the standard of the burden of proof affects reexamination, among other things.

Microsoft’s petition for certiorari includes alleged facts that i4i had offered for sale software containing the invention over a year before its filing date.  Thus, the patent claims to the invention were alleged to be invalid under 35 U.S.C. 102(b) because of the offer of sale.  (i4i alleges that the software offered for sale did not have the invention.)  That offer of sale evidence was not before the Examiner in the prosecution of i4i’s patent.  And i4i did not have the software at the time of the litigation.  Ultimately, Microsoft was unable to prove the offer of sale included the invention under the clear and convincing standard applied by the trial court.  So Microsoft’s position is that the presumption of validity should not apply for prior art not considered by the examiner, and it should not have to prove invalidity based on the higher “clear and convincing evidence” standard.

This is the fact pattern:

  • Applicant makes a prior offer of sale of software
  • Applicant gets a patent without presenting the prior offer of sale information and it is not considered by the Examiner
  • Evidence of prior art software is destroyed or lost and litigation commences without the software in evidence
  • Defendant alleges prior art software includes the invention
  • Defendant is held to a clear and convincing standard for proof of invalidity
  • Evidence not enough for trial court under the clear and convincing standard

Microsoft offers up KSR v. Teleflex and several circuit decisions that find the presumption of validity compromised when the examiner does not have all of the relevant evidence for consideration in the ex parte prosecution.

That is because the presumption of validity is premised on a presumption of administrative correctness.  That means the Patent Office is deemed to have done its job in examining the patent application and in deference to that presumption of administrative correctness, a higher burden of proof standard (clear and convincing) is used.

So what might the Supreme Court do with all of this?  And how does this relate to reexamination?  These will be discussed in my next few posts.