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STRATEGIC CONSIDERATIONS OF POST ISSUANCE PATENTABILITY REVIEW: THE NEW, OLD, AND NO LONGER

STRATEGIC CONSIDERATIONS OF POST ISSUANCE PATENTABILITY REVIEW: THE NEW, OLD, AND NO LONGER. Presented By: Todd R. Walters, Esq. Buchanan, Ingersoll & Rooney PC 1737 King Street, Suite 500 Alexandria, VA 22314 todd.walters@bipc.com September 25, 2012. The New. Post-grant review (“PGR”)

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STRATEGIC CONSIDERATIONS OF POST ISSUANCE PATENTABILITY REVIEW: THE NEW, OLD, AND NO LONGER

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  1. STRATEGIC CONSIDERATIONS OF POST ISSUANCE PATENTABILITY REVIEW:THE NEW, OLD, AND NO LONGER Presented By: Todd R. Walters, Esq. Buchanan, Ingersoll & Rooney PC 1737 King Street, Suite 500 Alexandria, VA 22314 todd.walters@bipc.com September 25, 2012 BIPC.COM

  2. The New • Post-grant review (“PGR”) • Inter partes review (“IPR”) • Derivation proceedings • Supplemental examination 1 BIPC.COM

  3. The Old • Reissue • Ex parte Reexamination • Interferences/Derivation proceedings (claims having an effective filing date prior to March 16, 2013) 2 BIPC.COM

  4. The No Longer • Inter Partes Reexamination(eliminated September 16, 2012) • Interferences (claims having an effective filing date on or after March 16, 2013) 3 BIPC.COM

  5. Know the Law • Understanding Options for Post Grant Review Starts with Knowing the Law • Some options apply only to cases filed on or afterMarch 16, 2013 • Other Options apply to all cases • Old Law/New Law—What standard applies? 4 BIPC.COM

  6. New Prior Art Provisions Apply to Applications and Patents • Applies to any application for patent, and to any patent issuing thereon • That contains or that contained at any time a claim to invention that has an effective date on or after March 16, 2013 5 BIPC.COM

  7. New Prior Art Provisions Apply to Applications and PatentsClaiming Priority • A specific reference under 120, 121 or 365(c) of Title 35 to any patent or application • That contains or that contained at any time a claim to an invention that has an effective date on or after March 16, 2013 6 BIPC.COM

  8. Filing Strategies • Informal survey suggests filing new applications prior to March 16, 2013 • Most common reasons • AIA expands available prior art to include foreign applications as of filing date in foreign country • AIA expands on sale bar to activities in foreign countries • AIA removes swear behind options • AIA subjects claims to PGR (IPR available for all claims) 7 BIPC.COM

  9. POST-GRANT REVIEW (PGR) 8 BIPC.COM

  10. Post-Grant Review (PGR) Procedure 9 BIPC.COM

  11. Post-Grant Review (PGR) THRESHOLD  More likely than not that at least one challenged claim is unpatentable PTO BRANCH  Patent Trial and Appeal Board (PTAB) IDENTIFICATION OF REAL PARTY IN INTEREST  All Real Parties in Interest must be identified ESTOPPEL  After final PTAB decision, the Real Party in Interest (RPI) is estopped from challenging its patent in the USPTO, ITC, or District Court on ANY ground that the RPI raised or couldhave reasonably raised during PGR 10 BIPC.COM

  12. Post-Grant Review (PGR) WHO CAN INITIATE?  Third Party QUALIFICATION*  Any patent having a claim with an effective filingdateon or after March 16, 2013 TIMING  Within 9 months after issuance of patent or reissue GROUNDS FOR FILING  Any ground except failure to comply with best mode requirement *Business Method Patents 11 BIPC.COM

  13. Post-Grant Review (PGR) PTO FILING FEES  $35,800 Petition Fee (for up to 20 claims)  $800 for each claim in excess of 20 APPEALS COURT  Federal Circuit SETTLEMENT  Yes 12 BIPC.COM

  14. Post-Grant Review (PGR) PGR Petition can only be filed within 9 monthsof issue date of patent or reissue. 13 BIPC.COM

  15. Interim Procedures for Business Method Patents WHO CAN INITIATE?  Third Party sued or charged with infringement QUALIFICATION  Only “a covered business method patent” TIMING  Only between September 16, 2012 and September 16, 2020 GROUNDS FOR FILING  §§ 102/103 based on patents and publications 14 BIPC.COM

  16. INTER PARTES REVIEW (IPR) 15 BIPC.COM

  17. Inter Partes Review (IPR) Procedure 16 BIPC.COM

  18. Inter Partes Review (IPR) WHO CAN INITIATE?  Third Party QUALIFICATION  Any patent TIMING  The later of 9 months after issuance of patent or reissue OR  After termination of Post-Grant Review GROUNDS FOR FILING  §§ 102/103 based on patents and publications 17 BIPC.COM

  19. Inter Partes Review (IPR) THRESHOLD  Areasonable likelihood that the petitioner would prevail with respect to at least one challenged claim IDENTIFICATION OF REAL PARTY IN INTEREST  All Real Parties in Interest must be identified ESTOPPEL  After final PTAB decision, the Real Party in Interest (RPI) is estopped from challenging its patent in the USPTO, ITC, or District Court on ANY ground that the RPI raised or couldhave reasonably raised during IPR 18 BIPC.COM

  20. Inter Partes Review (IPR) PTO FILING FEES  $27,200 Petition Fee (for up to 20 claims)  $600 for each claim in excess of 20 APPEALS COURT  Federal Circuit SETTLEMENT  Yes 19 BIPC.COM

  21. Inter Partes Review (IPR) IPR Petition can only be filed 9 months after issue date of patent or reissue OR termination of PGR, whichever is later. 20 BIPC.COM

  22. Inter Partes Review (IPR) IPR Petition must be filed within 1 year of service ofComplaint alleging infringement. IPR Petition may not be filed if a civil action challenging the validity of a claim is filed. 21 BIPC.COM

  23. Compare With Litigation • Burden of Proof • Preponderance of Evidence vs. Clear and Convincing Evidence • Claim Construction • Broadest Reasonable Construction vs. Construction That Upholds Validity (file history estoppel) • Decision Maker • Technically Trained and Familiar With Patent Law vs. Judge/Jury • Timing • One Year (with short extension) vs. Multiple Years • Cost • Tens of Thousands Up to Several Million vs. Several Million and Up • Discovery • Limited vs. Broad 22 BIPC.COM

  24. Compare With Reexamination • Burden of Proof • Preponderance of Evidence • Claim Construction • Broadest Reasonable Construction • Decision Maker • Panel of Three APJs vs. Examiner • Timing • One Year (with short extension) vs. Multiple Years • Cost • Tens of Thousands Up to Several Million vs. Tens of Thousands • Participation • Full vs. Limited 23 BIPC.COM

  25. PGR/IPR Relationship to Civil Action • PRG/IPR barred by previously filed civil action • PRG/IPR Petitions barred if petitioner has already filed a civil action challenging validity of a claim of the patent • IPR Petition barred if filed more than one year after being served with complaint • Counterclaims • Do not constitute a civil action challenging the validity of a claim 24 BIPC.COM

  26. PGR/IPR Relationship to Civil Action • Civil action stayed by PRG/IPR • Civil action filed after PRG/IPR Petition is automatically stayed until: • Patent owner moves court to lift stay; • Patent owner files a civil action or counterclaim alleging petitioner has infringed the patent; or • Petitioner moves the court to dismiss the action. 25 BIPC.COM

  27. Preliminary Injunctions • If a civil action alleging infringement of a patent is filed within 3 months after the date on which the patent is granted, the court may not stay its consideration of the patent owner’s motion for a preliminary injunction on the basis of PRG. 26 BIPC.COM

  28. SUPPLEMENTAL EXAMINATION 27 BIPC.COM

  29. Supplemental Examination WHO CAN INITIATE?  Patent Owner QUALIFICATION  Any patent OR  Any information believed to be relevant to the patent (Declarations, public sale before critical date, submission of litigation papers, incorrect entity status claimed) TIMING  Before patent expires GROUNDS FOR FILING  Any information relevant to patentability 28 BIPC.COM

  30. Supplemental Examination THRESHOLD  Substantial new question of patentability ESTOPPEL  Patent is prevented from being held unenforceable in a court proceeding on the basis of conduct relating to information that had not been considered or was incorrect, if submitted or corrected during Supplemental Examination 29 BIPC.COM

  31. Supplemental Examination PTO FILING FEE  $5,140 EFFECT OF CONCURRENT PROCEEDING  Patent is not unenforceable on basis of information that was considered, reconsidered or corrected during Supplemental Examination APPEALS COURT  Patent Trial and Appeal Board (PTAB) 30 BIPC.COM

  32. Summary 31 BIPC.COM

  33. Summary 32 BIPC.COM

  34. Summary 33 BIPC.COM

  35. Questions? 34 BIPC.COM

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