Challenging the Validity of a Patent Before the PTAB Featuring Scott Eidson & Jennifer Hoekel
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The document discusses procedures for challenging the validity of patents before the Patent Trial and Appeal Board (PTAB), outlining three main types: post grant review (PGR), covered business method review (CBM), and inter partes review (IPR). It details the eligibility criteria, timelines, estoppel effects, and strategic considerations for both petitioners and patent owners involved in these proceedings. The document also compares costs and durations between patent litigation and inter partes reviews.
Challenging the Validity of a Patent Before the PTAB Featuring Scott Eidson & Jennifer Hoekel
- 1. © 2014 Armstrong Teasdale LLP 1
- 2. © 2014 Armstrong Teasdale LLP © 2014 Armstrong Teasdale LLP Challenging the Validity of a Patent Before the PTAB Jennifer Hoekel and Scott Eidson July 30, 2014
- 3. © 2014 Armstrong Teasdale LLP PTAB Procedures What is the PTAB? • Patent Trial and Appeal Board • Appellate-like panel of three judges that oversee each proceeding • Decisions appealable to the Federal Circuit 3 New Procedures For Challenging a Patent After it Issues • Post Grant Review (PGR) • Covered Business Method Review (CBM) • Inter Partes Review (IPR)3
- 4. © 2014 Armstrong Teasdale LLP Post Grant Review & Covered Business Method Review CBM patent is a patent that claims a method, apparatus, or operation used in the practice, administration, or management of a financial product or service Not including a technological invention Only available to parties charged with infringement Any invalidity ground Timeline: completed in 18 months Estoppel only to grounds actually raised Applicable to patents filed on or after March 16, 2013 Any invalidity ground Available for the first 9 months after a patent issues or reissues Timeline: completed in 18 months Estoppel applies (“raised or could have raised”) 4 Post Grant Review Covered Business Method Review
- 5. © 2014 Armstrong Teasdale LLP Inter Partes Review Based on patents or printed publications and may be sought any time after post grant review period ends Preponderance of the Evidence Standard Estoppel applies (“raised or could have raised”) Requires threshold PTO determination to institute review (similar to reexam) Time Limits: within 12 months of litigation; no review if petitioner filed a DJ on invalidity Right to oral hearing, heard by PTAB 5
- 6. © 2014 Armstrong Teasdale LLP IPR Timeline 6
- 7. © 2014 Armstrong Teasdale LLP Current Statistics and Trends 7
- 8. © 2014 Armstrong Teasdale LLP Current Statistics and Trends 8
- 9. © 2014 Armstrong Teasdale LLP Current Statistics and Trends 9
- 10. © 2014 Armstrong Teasdale LLP Current Statistics and Trends 10
- 11. © 2014 Armstrong Teasdale LLP Current Statistics and Trends 11
- 12. © 2014 Armstrong Teasdale LLP Strategies: Challenging a Patent Identify claims to challenge • Are they in litigation? • Timing considerations Exhaust your prior art search (estoppel) Consider use of experts Set forth all of your arguments in the petition—60 page limit • Cannot add new arguments as the proceeding goes forward • Cannot incorporate from declaration • Focus on a detailed analysis • Multiple petitions—common practice (roughly 200 patents subject to multiple petitions attacking the claims) − Attack claim groupings − Attack on different invalidity arguments 12
- 13. © 2014 Armstrong Teasdale LLP Strategies: Challenging a Patent Joint Petition: Should we join with others to file one petition? • PTAB will likely join multiple petitions attacking the same patent Claim Charts • Must be explained in petition with cites to supporting evidence Experts • Must be supported by underlying facts or data 13
- 14. © 2014 Armstrong Teasdale LLP Strategies: Defending Your Patent File a preliminary patent owner’s response? • Attack redundant challenges and reduce the number of grounds • Attack weaknesses in petition and prior art • No new evidence allowed Do nothing? • Don’t preview your arguments • Save cost Swear behind prior art? • Difficult to do in front of the PTAB 14
- 15. © 2014 Armstrong Teasdale LLP Strategies: Defending Your Patent Amend claims during trial • Not likely. Why? • One for one substitution • Must narrow • No examination • Burden on patent owner to show patentable and distinct Settle • If you wait too long, the PTAB may not stop the proceeding 15
- 16. © 2014 Armstrong Teasdale LLP Related Considerations Licensing: • Patent owner: pays for and controls prosecution • Licensee: Has the right (& obligation) to enforce patent rights at its own expense − Who controls post grant proceedings? Who pays? Conflicts? − Review and revise all license agreements to clarify responsibilities and avoid conflicts Enforcement: • Could/will become a common response to enforcement efforts • Efforts will be delayed due to litigation stays • Budget accordingly/plan accordingly 16
- 17. © 2014 Armstrong Teasdale LLP Timeline & Costs: Litigation vs. Inter Partes Review Cost to File: • $400 Average Length of Time (filing to trial): • Just under three years *2011 AIPLA Survey Average Cost (fees and expenses): • $1-10 million in controversy: − $2.1 million through trial • $10-25 million in controversy: − $3.6 million through trial *2013 AIPLS Report of the Economic Survey Cost to File: • $9,000 filing fee + $200/claim over 20 • $14,000 institution fee + $400/claim over 15 Length of Time: • 18 months. Average Cost (fees and expenses): • $250,000-650,000. 17 Inter Partes Review Patent Litigation
- 18. © 2014 Armstrong Teasdale LLP Questions? Scott Eidson Partner Intellectual Property 314.342.4161 seidson@ArmstrongTeasdale.com Jennifer Hoekel Partner Intellectual Property 314.342.4162 jhoekel@ArmstrongTeasdale.com www.atpostgrant.com CLE Confirmation Code: HE0712 18