PTAB Litigation

Led by our Patent Office Litigation Chair, Robert Asher, our lawyers combine deep experience in patent office proceedings and patent litigation. In the USPTO, our skills at handling inter partes reexaminations, ex parte reexaminations, patent interferences and patent prosecution have been put to work in inter partes reviews. Our years of experience working with experts, questioning witnesses and standing up to advocate in court for our clients in district court patent litigation round out our readiness to litigate before the Patent Trial and Appeal Board.

In addition, our practitioners are ready to contribute to the case strategy in the full expanse of technical areas.  We have represented clients in numerous fields, including data communications and networking, molecular and cell biology, electronic systems, integrated circuits, electro-mechanical and microprocessor-controlled devices, medical devices, computer hardware and software, voice recognition and synthesis, chemistry, food science, biochemistry, textiles, plastics, optics and imaging, x-ray systems, metallurgy, ceramics, magnetic recording, fluid control systems and mechanical devices.

Inter Partes ReviewInter partes review (IPR) is available to seek to cancel claims of any currently enforceable United States patent. (For new patents granted under the new first-inventor-to-file laws, an inter partes review cannot be filed until after the 9-month post-grant review period concludes or an already instituted post-grant review proceeding has been concluded.) This flowchart shows a comprehensive timeline of deadlines in IPR proceedings that guides the reader from before the filing of a petition for an IPR all the way to the appeals process after conclusion of an IPR.

IPR is available to challenge the patentability of claims in a patent on which a party has been sued for patent infringement, if the petition for IPR is filed (with a few exceptions) within one year after the complaint for patent infringement has been served on the party.

The challenge to a patent attacked in an IPR is limited to arguing that the claims of the patent are unpatentable for anticipation or obviousness based on prior art that is found in patents and printed publications.

In acting on a petition for IPR, the USPTO will not institute an IPR proceeding unless the petitioner has established a “reasonable likelihood” that it will prevail on at least one ground asserted against at least one claim. An IPR proceeding involving a patent has an “estoppel” effect, wherein the petitioner in an IPR is prevented from later challenging (in court, in the USPTO, or in the ITC) the validity of any claim in the patent on any grounds that were raised or reasonably could have been raised in the IPR. On the other hand, because the only challenges that can be made in an IPR are those relating to anticipation or obviousness based on patents and printed publications, the petitioner is not prevented from later challenging validity on the basis of lack of an enabling disclosure for the claims, lack of clarity in the claims, etc. Estoppel against an unsuccessful petitioner becomes effective as soon as the Patent Trial and Appeal Board issues the final written determination.

The final written decision has another estoppel effect, in this case on the patent owner. The patent owner is prevented from obtaining another claim in another patent, for the subject matter in the IPR, unless the claim is patentably distinct from any claim rejected in the decision.

If the IPR results in the cancellation of any claims, and the patent fails to emerge from the IPR with amended or new patent claims substantially identical to the original claims, the cancellation becomes effective to invalidate the patent claims in court after the patent owner has exhausted all available appeals from the IPR or if the time for any further appeals has lapsed. More. . .

Interference – A patent interference is a priority contest in the U.S. Patent and Trademark Office to determine who, as between two pending patent applications, or a pending application and an issued patent, was the first to actually invent the claimed subject matter.  The first to invent is either the first entity to conceive and reduce the invention to practice, or the first to conceive but the last to reduce the invention to practice, if the invention was worked on with reasonable diligence through to the date of the reduction to practice.  An interference can only arise under the preexisting law that awards a patent to the first person to invent the claimed subject matter when two different inventive entities are claiming the same or substantially the same subject matter.  The AIA effectively changed the law from a first to invent standard to a first to file standard for deciding who should receive a patent, thus removing the option of an interference for most new patent applications.  Interferences, however, still remain viable for many patent applications containing claims entitled to a filing date which predates the AIA.  Interferences have long provided an opportunity to not only contest priority, but to also contest patentability of a competitor’s claim under a lower standard of proof than is available in the U.S. District Court.   Thus, an interference still may be considered a possible alternative to an Inter Parties Review or a reexamination proceeding, when the effective priority date of an application predates the AIA.

Post Grant ReviewPost-grant review (PGR) has certain limitations in terms of timing and scope. A detailed timetable for PGR proceedings can be found here. A PGR may only be filed against patents issuing with priority dates later than March 15, 2013. There is a specific window in which PGR is available: a request must be filed within 9 months of the date a patent issues or reissues. A party cannot seek PGR if it has already brought a declaratory judgment action seeking the invalidity of the patent in court. The PGR requester can introduce any evidence that would be used to show invalidity. Thus, not only patents and printed publications but questions like lack of patentable subject matter, indefiniteness of the claims, lack of enablement and earlier on sale may be raised. The standard for PGR requires requester to show that any challenged claim is more likely than not to be declared unpatentable or that its request raises novel or unsettled legal questions important to other patents or applications.

A party seeking to use PGR should be aware that the procedure has estoppel effects not only in federal court litigation, but also in proceedings in the USPTO and ITC. The estoppel is not only for issues raised in the proceedings, but any that “reasonably” could have been raised. Given the broad array of validity grounds a party can raise in PGR, this may leave an unsuccessful litigant with little more than non-infringement to argue in litigation. The estoppel becomes effective as soon as the Patent Trial and Appeal Board issues the final written determination.

Covered Business Method Reviews – Business method patents are particularly susceptible to attack. A post-grant review type of attack may be brought if a petitioner has been charged with infringement of the patent. A claim subject to a covered business method review pertains to a “method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” There is no time limit for seeking a covered business method review. The patents may be challenged as invalid on any ground. Nevertheless, a petitioner receives favorable treatment and is subject to estoppel only for those grounds raised in the covered business method review. Moreover, the petitioner has the right to file an interlocutory appeal to the Federal Circuit if denied a stay of the litigation while the covered business method review is pending. Thus, when applicable in litigation, these covered business method reviews will be exceptionally well suited for filing by defendants.

Other ways of challenging patents in the USPTO include:

Third Party Pre-issuance Submissions – Prior art submissions are potentially valuable when coupled with a diligent monitoring program to alert clients to pending patent applications that raise concerns of potential infringement for products they intend to make, use, sell or import. A challenger may make a submission of prior art patents or printed publications along with a concise description of the correspondence between the prior art and the claims, but no argumentation. It is too late to make a pre-issuance submission if a notice of allowance has issued. It also becomes too late upon issuance of a first rejection on the merits or six months from the date of publication of the application, whichever is later. A preissuance submission can be an inexpensive way of alerting the USPTO to key prior art that may be effectively used to limit the scope of any claims that might issue in a patent from the pending application. On the other hand, the prior art may alert the patent applicant to rewrite the claims to make them less vulnerable to challenge upon issuance. For those of us who are concerned about this latter possibility, one approach is to submit all but the very best prior art, holding those key references in reserve for an inter partes proceeding in the USPTO or a proceeding in court.

Ex parte reexamination – For clients concerned about the patents of others, we have been able to use reexamination to disarm the patentee. When our client wishes to avoid being branded as a target for the patent holder, an advantageous method of proceeding is to file an ex parte reexamination anonymously. Carefully prepared, strong, and extensive arguments are presented to the USPTO along with the closest prior art. This tactic is particularly effective early on in a long product development cycle so that consideration may be given to modifying the product depending on how the reexamination progresses. We have seen patents amended and narrowed on reexamination, thereby significantly reducing the risk of going forward with a product design. In other cases, litigants have taken advantage of filing ex parte reexaminations because they will continue even if a court upholds the validity of the patent.