PTAB Proceedings (IPR/CBM)

In part as a reaction to the skyrocketing costs of patent litigation to both plaintiffs and accused infringers, Congress introduced the America Invents Act in 2011. The Act, which went into effect in 2012, implements new laws designed to raise the quality of issued patents, including laws implementing new patent review procedures (i.e., Inter Partes Review (IPR), Covered Business Method Patent Review (CBM) and Post-Grant Review (PGR) proceedings) that allow accused infringers and other parties to challenge the validity of issued patents before the newly formed Patent Trial and Appeal Board (PTAB).  In today’s patent litigation climate, these proceedings have become mainstay tools of accused infringers seeking to avoid infringement liability.  Indeed, it has become virtually routine for defendants in patent cases to seek IPR and/or CBM review of asserted patents in parallel proceedings before the USPTO, which is far more likely to invalidate these patents compared to courts and juries.

It is therefore imperative that would-be patent plaintiffs (and accused infringers alike) consider how IPR and CBM proceedings will affect not only the strength of an underlying patent suit in court, but the timeline to resolution of the dispute both in court and before the USPTO. The legal talent at DeMatteo Law has extensive experience with both IPR and CBM review proceedings, from locating and working with technical experts, to preparing and filing petitions (or oppositions to petitions), as well as participating in every stage of post-grant proceedings up to trial. We also work with actual and potential litigants to craft IPR and CBM strategies to ensure that any post-grant efforts are consistent with concurrent litigation strategies and our clients’ business objectives.

TYPES OF PROCEEDINGS

Inter Partes Review (IPR):  An IPR is a proceeding conducted before the PTAB to review the patentability of patent claims based on only prior art patents or printed publications under 35 U.S.C. §§ 102 and/or 103.  The IPR process begins with the filing of a petition identifying claims to review and setting forth grounds for unpatentability of each claim.  The patent owner may then file a “preliminary response,” setting forth reasons why the IPR proceeding should not be instituted.  The PTAB will institute a review if the petition demonstrates a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged.  If review is instituted, the parties are permitted to file additional papers in support of their respective positions.  The PTAB will complete the proceeding and render a final decision within a year of institution (or within 18 months if a party can demonstrate good cause for the extension).  A party dissatisfied with the final decision of the PTAB may appeal only to the United States Court of Appeals for the Federal Circuit.

 

Transitional Program for Covered Business Method Patent Review (CBM):  A CBM is a proceeding conducted before the PTAB to review the patentability of patent claims based on grounds which may be raised under 35 U.S.C. § 282(b)(2) or (3), including grounds based on patentable subject matter, anticipation, obviousness, written description, enablement, and defective reissue.  CBM review is available as a transitional proceeding only until September 15, 2020, and may be initiaited only by those sued for or charged with infringing the patent(s) for which review is sought.  The CBM process begins with the filing of a petition identifying claims to review and setting forth the grounds for unpatentability of each claim. The third party petitioner must also demonstrate in the petition that the patent (i) is not directed to a technological invention and (ii) 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.  Similar to IPR proceedings, a patent owner opposing CBM review may file a “preliminary response,” setting forth reasons why the CBM proceeding should not be instituted.  The PTAB will institute a review if the petition demonstrates that it is more likely than not that at least one of the claims challenged in the petition is unpatentable.  If review is instituted, the parties are permitted to file additional papers in support of their respective positions.  The PTAB will complete the proceeding and render a final decision within a year of institution (or within 18 months if a party can demonstrate to the PTAB good cause for the extension).  A party dissatisfied with the final decision of the PTAB may appeal only to the United States Court of Appeals for the Federal Circuit.

 

Post Grant Review (PGR): A PGR is a proceeding similar to a CBM proceeding, except that the petition must be filed no later than 9 months after the issuance of the patent for which review is sought.  Also, unlike in a CBM proceeding, a petitioner seeking PGR review need not have been sued for infringement, nor does the petitioner need to demonstrate in the petition that the patent is non-technical or claims subject matter related to a financial product or service.  PGR proceedings are also not transitional and, as such, may be filed before, on or after the September 15, 2020 cutoff for CBM proceedings.