United States: Update: Three Litigation Alternatives For Potential Defendants Under The America Invents Act

The Leahy-Smith America Invents Act (the "AIA"),1 provides three types of third party challenges: Post Grant Review,2 Inter Partes Review including Covered Business Method Patent Inter Partes Review,3 and Preissuance Submissions.4 Companies should familiarize themselves with the potential benefits of these three types of litigation alternatives, which in some cases, may enable them to avoid litigation completely.

This Stroock Special Bulletin provides statistics, where available, with regard to these three litigation alternatives.

Overall, the Patent Office has released the following statistics on the technology breakdown for Inter Partes Review including Covered Business Method Inter Partes Review:

Post-Grant Review – Within Nine Months from Patent Grant

Section 6 of the AIA adds Chapter 32 to title 35 of the United States Code. This new chapter allows any third party to request the cancellation of one or more claims of a patent, on any ground that could be raised under defenses (2) or (3) of 35 U.S.C. § 282, by petitioning for post-grant review of the patent. This petition must be filed within nine months of the date the patent is granted or the date the reissue patent is granted.

Post-grant review is available so long as the petitioner has not previously challenged the patent's validity in a civil action. Post-grant reviews will be undertaken by a three-member panel from the newly created Patent Trial and Appeal Board (the "Board"), consisting of persons with legal knowledge and scientific ability (typically, ex parte examinations or ex parte reexaminations are before a single Examiner).

The post-grant review will be granted upon a showing that it is more likely than not that at least one of the challenged claims is unpatentable, or that the petition raises a novel or unsettled legal question important to other patents or applications. If a petitioner files a civil action after it files a post-grant review petition, the civil action is automatically stayed until the patent owner either moves the court to lift the stay or files a civil action or counterclaim alleging infringement against the petitioner.

The third party petitioner will have the burden of proving unpatentability by a preponderance of the evidence. Patent owners will be permitted to amend claims without enlarging the scope or introducing new matter. In addition, limited discovery will be permitted during the proceeding, including the opportunity to depose witnesses submitting a declaration relied upon by the third party or patent owner. Protective orders will be provided to protect the exchange and submission of confidential information. In addition, either party may request an oral hearing before the Patent Trial and Appeal Board.

A final written decision must be issued by the Patent Trial and Appeal Board not later than one year from the institution of the review, extendable by an additional six months upon a showing of good cause. A post-grant review may be terminated upon the joint request of the petitioner and the patent owner, unless the Board has decided the merits before such request. If the post-grant review is terminated – such as pursuant to a settlement agreement – no estoppel will attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner's institution of that post-grant review.

A post-grant review may not be instituted if, before the date on which the petition for a review is filed, the third party petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent (i.e., a preemptory declaratory judgment action for patent invalidity). If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for a post-grant review of the patent, that civil action will be stayed automatically until the patent owner moves the court to lift the stay, the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent, or the petitioner or real party in interest moves the court to dismiss the civil action.

A counterclaim challenging the validity of a claim of a patent does not constitute a civil action for purposes of determining whether an accused infringer may file a request for post-grant review. However, a post-grant review may not be instituted if the petition requesting post-grant review is filed more than one year after the date on which the petitioner was served with a complaint alleging infringement of the patent.

The petitioner in a post-grant review of a claim that results in a final written decision may not request or maintain a proceeding before the Patent Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review. In addition, a petitioner in a post-grant review of a claim that results in a final written decision may not assert in a civil action that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.

Any proposed amended or new claim determined to be patentable and incorporated into a patent following a post-grant review will have the same intervening rights as that specified in 35 U.S.C. Section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States. Any party may appeal the post-grant review final written decision of the Board only to the Court of Appeals for the Federal Circuit.

As of June 30, 2014, the Patent Office has reported that a total of 186 Covered Business Method reviews have been initiated:

Because post-grant reviews can only be filed on patents issued from applications having an effective filing date of March 16, 2013 and later, there are not currently available any significant statistics for this procedure of the America Invents Act.

Inter Partes Review – After Expiration of Post-Grant Review

Section 6 of the America Invents Act also replaces the inter partes reexamination with the new inter partes review procedure to be conducted by the new Patent Trial and Appeal Board (the "Board"). Under inter partes review, patents can only be challenged on the basis of novelty and non-obviousness and third party challengers may only submit patents or printed publications as the basis for review. The Patent Office will only institute an inter partes review upon a showing of a reasonable likelihood that the petitioner will prevail in the proceeding with respect to at least one claim. The America Invents Act does not, however, change ex parte reexaminations, including the standard of substantial new question (SNQ) of patentability.

Inter partes review is intended to be a relatively quick proceeding for challenging a patent's validity in the Patent Office. Inter partes review may take place after the nine-month period for initiating post-grant review proceedings has expired, or after a post-grant review has concluded. A petition for inter partes review must show by a preponderance of the evidence – i.e., that it is more likely than not – that at least one of the claims of the challenged patent is unpatentable.

The petition for inter partes review must be accompanied by a fee, identify all real parties in interest, and identify the grounds on which each claim is challenged, with supporting evidence, including any supporting affidavits or declarations. The patent owner may file a preliminary response to the petition in an effort to persuade the Director not to grant the petition for review.

The "reasonable likelihood" standard is a more difficult standard to meet than the substantial new question of patentability (SNQ) required in ex partes reexaminations. The Director will determine whether to institute an inter partes review within three months after the patent owner's preliminary response to the petition is received. If no preliminary response is filed by the patent owner, the Director will determine whether to institute an inter partes review within three months after the last date on which the preliminary response could have been filed. The decision of the Director whether to institute an inter partes review is not appealable.

Inter partes reviews will be conducted by the Patent Trial and Appeal Board (formerly the Board of Patent Appeals and Interferences), rather than the Central Reexam Unit (CRU) which conducts inter partes reexaminations at present. The third part petitioner will have the burden of proving unpatentability by a preponderance of the evidence. Patent owners will be permitted to amend claims without enlarging the scope or introducing new matter. In addition, limited discovery will be permitted during the proceeding, including the opportunity to depose witnesses submitting a declaration relied upon by the third party or patent owner. Protective orders will be provided to protect the exchange and submission of confidential information. In addition, either party may request an oral hearing before the Patent Trial and Appeal Board.

A final written decision must be issued by the Patent Trial and Appeal Board not later than one year from the institution of the review, extendable by an additional six months upon a showing of good cause. A post-grant review may be terminated upon the joint request of the petitioner and the patent owner, unless the Board has decided the merits before such request. If the post-grant review is terminated, such as pursuant to a settlement agreement, no estoppel shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner's institution of that post-grant review.

An inter partes review may not be instituted if, before the date on which the petition for a review is filed, the third party petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent, i.e., a preemptory declaratory judgment action for patent invalidity. If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes review of the patent, that civil action will be automatically stayed until the patent owner: moves the court to lift the stay; the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or the petitioner or real party in interest moves the court to dismiss the civil action.

A counterclaim challenging the validity of a claim of a patent does not constitute a civil action for purposes of determining whether an accused infringer may file a request for inter partes review. However, an inter partes review may not be instituted if the petition requesting inter partes review is filed more than one year after the date on which the petitioner was served with a complaint alleging infringement of the patent.

The petitioner in an inter partes review of a claim that results in a final written decision may not request or maintain a proceeding before the Patent Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. In addition, a petitioner in an inter partes review of a claim that results in a final written decision may not assert in a civil action that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review will have the same intervening rights as that specified in 35 U.S.C. Section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States. Any party may appeal the inter partes review final written decision of the Board only to the Court of Appeals for the Federal Circuit.

As of June 30, 2014, the Patent Office has reported that a total of 1,405 Inter Partes Reviews have been initiated:

In addition, the Patent Office has released the following statistics regarding the progress of Inter Partes Reviews and Covered Business Method Inter Partes Reviews that have been initiated:

Pre-Issuance Submissions – During Patent Application Pendency

Section 8 of the America Invents Act provides the ability for third parties to submit relevant prior art during the pendency of patent applications. Under the new 35 U.S.C. § 122(e), any third party may submit any patent, published patent application or printed publication for consideration by the Patent Office during prosecution, provided the third party includes a description of the relevance of each submitted document. The deadline for the submission is the later of either a first rejection of the application or within six months of the date the application is published. Once the patent application receives a notice of allowance, the third party is no longer permitted to provide the submission.

As of June 30, 2014, the Patent Office has reported that a total of 1,721 Preissuance Submissions have been filed:

Conclusion

The three types of third party challenges under the Leahy-Smith America Invents Act may be an attractive option for parties that would benefit from an early ruling on patent validity. For example, a party may want to attempt to clarify and limit the scope of claims of the patent applicant or patent owner through the use of the third party challenges to enhance its ability to avoid the patent and/or develop a non-infringing alternative. Third parties, however, must weigh the benefits of utilizing the third party challenges versus their potential adverse impact. In some instances, the risks of broader potential estoppels that might attach in litigation will override the advantages that these third party challenges may provide.

Even though the earliest that any of these challenges become effective is September 16, 2012, the Patent Office has been busy writing regulations to implement third party challenges under the Leahy-Smith America Invents Act. The following final rules have been published by the Patent Office:

Footnotes

1.Leahy-Smith America Invents Act (AIA), Pub.L. 112-29, H.R. 1249, Sections 6 and 8, enacted September 16, 2011.

2.Patents that are eligible for Post Grant Review (PGR) generally include patents issued from applications having an effective filing date of March 16, 2013 and later, as well as certain business method patents regardless of filing date under the Transitional Covered Business Method Patent Inter Partes Review proceedings as of September 16, 2012.

3.Patents that are eligible for Inter Partes Review (IPR) are those patents that issued before, on, or after September 16, 2012. Thus, unlike in Inter Partes Reexamination which only includes patents that issued from applications filed after November 29, 1999, all patents are eligible for IPR.

4.Patents that are eligible for Pre-Issuance Prior Art Submissions by third parties are all patent applications regardless of filing date starting on September 16, 2012.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions