Post-Grant Patent Practice: Review Proceedings
Location: Hilton Crystal City, Arlington VA. The room rate available to PRG attendees is $169.00 per night. Reserve your room online or by calling: 703.418.6800. The room reservation cut-off date is June 18, 2014.
Course Schedule: 8:45 – Noon; 1:15 – 4:30
Projected CLE Credit: 6.0
The battleground of patent validity is shifting from courts to the PTO. Review proceedings, including inter partes review, covered business method patent review, and post-grant review, are powerful, fast-track trials before the Patent Trial and Appeal Board. Review proceedings offer several advantages over validity challenges in a court proceeding including cost, predictability, effectiveness, speed, and the ability to pursue strategies that would not be feasible in court. This course explores these factors and provides training for participating in review proceedings.
Because most review proceedings are conducted in conjunction with litigation, the course emphasizes the use of review proceedings as part of litigation strategies. The course focuses on inter partes review but also addresses covered business method patent review, and post-grant review. The course covers strategies, tactics, best practices and case studies for review proceedings. The course is for both patent practitioners who appear before the PTO in these proceedings, as well as litigators who must deal with the increasingly common role of review proceedings in the context of disputes.
The Patent Trial and Appeal Board (PTAB) has shifted the balance in favor of the PTO as the preferred patent validity battlefield by creating new more powerful, fast-track, litigation-like review proceedings. Inter partes review provides an opportunity to challenge the validity of a patent twice: First at the PTO based on printed publications and subsequently in litigation based on other available grounds. Stays are being granted liberally when inter partes reviews are filed, in light of the statutory requirement for rapid completion of these new proceedings. As a result, validity challenges are often proceeding in serial fashion. In the first phase of a bifurcated validity challenge, complicated arguments regarding the prior art can be rapidly resolved by trained specialists at the PTAB, whereas in the second phase, less technical arguments regarding commercial activity or other invalidating grounds can be resolved by a judge or jury. This sequential approach can simplify claim construction and narrow issues for an infringement portion of the litigation, and thus reduce overall costs. Lead counsel in an inter partes review proceeding must be a registered patent attorney, but it is possible for litigation counsel to participate in the proceeding even if the litigation counsel is not registered. Coordination between review counsel and litigation counsel is important to ensure that the review proceeding facilitates or at least complements litigation goals.
Validity challenges in review proceedings offer petitioners several additional benefits over litigation in district court or the ITC. The PTAB broadly interprets claims, uses a more liberal preponderance of evidence standard, and does not presumes claims to be valid. These benefits were also available in inter partes reexamination but review proceedings add speed. Review proceedings are statutorily required to be completed within one year after being instituted. In contrast, inter partes reexamination often took several years to be completed. Now a challenger can rapidly eliminate liability for past infringement, create intervening rights to continue accused infringement in the future, open up design-around opportunities, create a more favorable prosecution history, defeat a charge of willful infringement, help avoid an injunction, bolster an inequitable conduct defense, and sometimes enable a stay of expensive litigation. All of this can be achieved at a small fraction of the cost of litigation or advantageously deployed in conjunction with litigation.
In light of the complexity of many prior-art arguments and the benefits of the serial validity and infringement cases, consideration of a challenge at the PTO should not be a back-up plan, as ex parte reexamination often is. Rather, inter partes review should be used prior to or concurrently with litigation and should be considered whenever it is available.
Some express concerns regarding inter partes review because its legal estoppel provisions prevent a challenger who is unsuccessful in an inter partes review from attacking a claim in any forum based on other printed prior art publications. Such concerns overlook the advantages of these new proceeding and do not acknowledge that failure to invalidate a claim in litigation results in much harsher estoppel. The estoppel of inter partes review has a considerably smaller scope than the estoppel of a failed district court challenge.
For patent challengers, the course provides training to:
- Analyze the advantages and disadvantages of review compared to litigation
- Understand the critical role of review in the context of a dispute and develop strategies based on anticipated or concurrent litigation
- Appreciate estoppel implications of review proceedings
- Utilize review to obtain a stay or other benefits in related litigation
- Unravel the AIA’s review statutes and decipher the PTO’s review rules to understand how reviews are really conducted
- Prepare a petition for review that complies with all requirements and gets granted
- Advantageously utilize the different standards applied for claim interpretation at the PTO and claim construction in litigation as well as the differing burdens of proof
- Recognize possible changes to the construction of the claims in the litigation based on the review that opens up design-around opportunities, creates a more favorable prosecution history for the purpose of claim construction, or impacts estoppel theories
- Create intervening rights that eliminate liability for past infringement or allow continuation of accused infringement in the future
- Correctly and strategically use declarations
- Understand the repercussions that review can have on settlement
The course balances the perspectives of patent challengers and patent owners so the above items are also presented from the view of the patent owner. Additionally, the course provides training for patent owners to:
- Avoid, when possible, intervening rights that arise via the cancellation or amendment of claims – or from mere argument regarding claim scope
- Select information to be disclosed to the PTO from concurrent litigation or other PTO proceedings
- Understand the timing of events in review proceedings so that you are not caught off guard
- Navigate the maze of review procedures to avoid unfortunately common mistakes.