PTAB Litigation 2016 Part 10 – Covered Business Method and Post Grant Review

CBM/PGR Differences Differences in time periods of availability, parties who have standing, grounds of challenge available, standards of review, and estoppel; In general, when available (largely because of estoppel): CBM > PGR > IPR; Note that there will not be an instance where both PGR and IPR are available for challenging a patent at the same time.

CBM/PGR Differences - Standing IPR – Person who is not the patent owner, who has not previously filed a declaratory judgment action, and who has not been served with a complaint alleging infringement more than 1 year prior (exception for joinder); CBM – Person sued or charged with infringement of patent for financial product or service, excluding technological inventions; PGR – Person who is not the patent owner and who has not filed a declaratory judgment action.

CBM/PGR Differences – Grounds available IPR - §§ 102, 103 based on patents and printed publications; CBM - §§ 101, 102, 103, 112 (not best mode); PGR - §§ 101, 102, 103, 112 (not best mode), double patenting.

CBM/PGR Differences - Estoppel IPR – Grounds raised or reasonably could have raised in IPR at PTO, district court, and ITC; CBM – Grounds raised or reasonably could have raised at PTO; grounds actually raised at district court; PGR - Grounds raised or reasonably could have raised in PGR at PTO, district court, and ITC.

CBM/PGR Differences – Standard of Review for Institution IPR – Reasonable likelihood; CBM – More likely than not; PGR – More likely than not.

CBM/PGR Differences - Timing IPR – For first-inventor-to-file patents, 9 months after issue or after any prior PGR is terminated; CBM – Any time that PGR is not available for the patent; PGR – For first-inventor-to-file patents, from patent grant to 9 months after patent grant or reissue; not available for first-to-invent patents.