1. POST Grant RevieW UPDATES
You thought you had a valid patent, didn’t you?

2. Types of post-ISSUANCE Proceedings
EX PARTE:
ReISSUE
REEXAMINATION
SUPPLEMENTAL EXAMINATION
INTER PARTES:
POST GRANT REVIEW (PGR)
INTER PARTES REVIEW (IPR)
COVERED BUSINESS METHOD REVIEW (CBM)
INTER PARTES REEXAMINATION (NO LONGER AVAILABLE)

3. DIFFERENCES (Courtesy of USPTO)
Inter Partes Review (IPR)
Petitioner
Estoppel
Standard
Basis
Post Grant Review (PGR)
Person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent
Must identify all real parties in interest
Raised or reasonably could have raised
Applied to subsequent USPTO/district court/ITC action
More likely than not OR
Novel or unsettled legal question important to other patents/ applications
101, 102, 103, 112, double patenting but not best mode
Person who is not the patent owner, has not previously filed a civil action challenging the validity of a claim of the patent, and has not been served with a complaint alleging infringement of the patent more than 1 year prior (exception for joinder)
Reasonable likelihood
102 and 103 based on patents and printed publications
Covered Business Method (CBM)
Must be sued or charged with infringement
Financial product or service
Excludes technological inventions
Office—raised or reasonably could have raised
Court-raised
Same as PGR
Same as PGR (some 102 differences)

4. DIFFERENCES (Courtesy of USPTO)
Proceeding
Available
Applicable
Timing
Post Grant Review (PGR)
From patent grant to 9 months after patent grant or reissue
Patent issued under first-inventor-to-file
Must be completed within 12 months from institution, with 6 months good cause exception possible
Inter Partes Review (IPR)
For first-inventor-to-file, from the later of: (i) 9 months after patent grant or reissue; or (ii) the date of termination of any post grant review of the patent.
For first-to-invent, available after grant or reissue (technical amendment)
Patent issued under first-to-invent or first-inventor-to-file
Covered Business Method (CBM)
Available 9/16/12 (for first-inventor-to-file only after PGR not available or completed)
Patents issued under first-to-invent and first-inventor-to-file

5. DIFFERENT STANDARDS OF PROOF
“Reasonable likelihood” and “more likely than NOT” are different standards
Both are higher than “substantial new question of patentability
CHIEF PTAB JUDGE (JAMES DONALD SMITH) issued statement (on the USPTO WEBSITE):
Comparing the two standards, the "reasonable likelihood" standard is lower than the "more likely than not" standard. The reasonable likelihood standard allows for the exercise of discretion but encompasses a 50/50 chance whereas the "more likely than not" standard requires greater than a 50% chance of prevailing.

6. COMMON THREADS
MUST IDENTIFY ALL REAL PARTIES IN INTEREST (i.e., no anonymous filings)
STAY OF CONCURRENT PROCEEDINGS:
If PARTY petitioning for review proceeding initiates subsequent civil action or ITC investigation (BASICALLY n/A to CBM Review), such action is automatically stayed.
If proceeding initiated first, stay at discretion of court. Typical factors:
Stage of litigation
Will stay simplify issues in the case
Will stay unduly prejudice nonmoving party or give clear tactical advantage to moving party
(CBM ONLY) will stay, or denial thereof, reduce the burden of litigation on the parties and the court – (interlocutory appeal to CAFC from district court decision on stay available in CBM)

7. COMMON THREADS Appeal is to cAFC Settlement possible
Proceedings may not be terminated by PTAB, even if parties jointly request termination
If proceedings close to a decision
If future proceedings are likely due to remaining concurrent proceedings
Must file a copy of the settlement agreement

8. CBM REVIEW A covered business method patent:
…claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.
Not identical to 101 non-statutory subject matter inquiry
Not sufficient for patented invention to be intended to save money or popular among financial services companies
Petitioner needs to be in lawsuit or “charged with infringement”

9. Case study (CBM2016-00044) BMC SOFTWARE, INC. V. ZIT CONSULTING GMBH
REPRESENTATIVE CLAIM

10. Case study (CBM2016-00044) BMC SOFTWARE, INC. V. ZIT CONSULTING GMBH

11. Case study (CBM2016-00044) BMC SOFTWARE, INC. V. ZIT CONSULTING GMBH

12. RELATED 101 NOTE

13. RELATED 101 NOTE (FROM PGR2016-00013 – CONCURRENT PROCEEDING)

14. PRACTICAL ADVANTAGES FOR PETITIONER
Well-heeled petitioner may simultaneously file multiple petitions for review of the same patent
Single petition limited to 60 pages, absent motion showing why “interests of justice” require more – does not limit filing multiple petitions
Patent owner (or ptab sua sponte) may look to consolidate concurrent ptab proceedings or eliminate duplicative grounds
Petitioner may present expert testimony with petition in support of grounds of rejection, but patent owner may not present competing expert testimony in preliminary response
If review instituted, then patent owner may submit expert testimony

15. PRACTICAL ADVANTAGES FOR PETITIONER
Significance of institution (again courtesy of uspto)

16. PRACTICAL ADVANTAGES FOR PETITIONER

17. PRACTICAL ADVANTAGES FOR PETITIONER

18. PRACTICAL ADVANTAGES FOR PETITIONER
PTAB is not bound by district court decisions in favor of patentability
NOVARTIS V. NOVEN PHARMACEUticals, (FED. CIR. April 4, 2017)
Delaware district court ruled against obviousness of Novartis claims in litigation with NOVEN. Nonobviousness of same claims also upheld by Delaware district court and CAFC in litigation with other parties.
PTAB decided it need not consider those determinations since record before PTAB was different (although admittedly “substantially the same”)
CAFC affirmed, but on grounds of differing evidentiary standard
NEVErtheless, even if the record were the same, Novartis’s argument would fail as a matter of law. The ptab determined that a “petitioner in an inter partes review proves unpatentability by a preponderance of the evidence (see 35 usc 316(e)) rather than by clear and convincing evidence[] as required in district court litigation,” meaning that the ptab properly may reach a different conclusion based on the same evidence.

19. ODD RESULT NOVARTIS CONSIDERATIONS
What happens to the earlier non-appealed judgment adverse to noven (as well as the judgments against other parties)?
As patently-O points out, obviousness is a question of law.
Some motivation to wait out district court litigation before filing review proceeding?

20. SOME PRACTICAL LIMITATIONS
PGR PETITION MUST BE FILED WITHIN 9 months of grant
IPR petition barred for a petitioner (real party in interest or privy) who was served more than one year earlier with an infringement complaint
CBM requires suit filed or party “charged with Infringement”

21. OTHER considerations Proceedings move very quickly
Although patent owner cannot submit expert testimony with preliminary response, will want to have expert lined up in case proceeding is instituted.
PTAB members are usually quite intelligent and familiar with relevant law
Page limitations dictate dedicating more space to factual considerations. If basic grounds of legal positions are set forth somewhere initially, you will probably be able to further develop later if you need to.
Motions to amend
Rarely successful
Must not only distinguish from prior art applied in instituted grounds, but also non-instituted grounds and all other prior art patent owner is aware of (in 15 pages).

22. OTHER considerations Discovery
Routine discovery is mandatory and need not be requested. Only includes:
Cited exhibits
Cross-examination of affidavit testimony
Relevant information inconsistent with a party’s position, served concurrently with filing of documents/things containing the inconsistency
“ADDITIONAL DISCOVERY” must be requested (unless parties agree – which ptab likes)

23. OTHER considerations
Five garmin factors:

24. OTHER considerations
Although garmin factors considered in all reviews, standard is different for IPR v. PGR/CBM
IPR – interests of justice (slightly higher)
PGR – good cAUSE

25. QUESTIONS/COMMENTS
Thank you for your time.