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Pencil Claim Drafting Exercise the University of Minnesota Law

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					Post-Issuance Proceedings Under
            the AIA

           Thomas F. Cotter
  Briggs and Morgan Professor of Law
  University of Minnesota Law School
      Post-Issuance Proceedings: Overview
• Prior to the AIA, the U.S. Patent Act provided for ex
  parte and inter partes reexamination proceedings, and
  for third party submissions of certain types of prior art.
• Post-AIA, these types of proceedings continue to exist.
• Section 6 of the AIA makes some amendments,
  however.
• It also creates a new type of proceeding—a “post-grant
  review”—which is similar to “opposition” proceedings that
  already exist in other countries.
• In addition, § 18 of the AIA provides for special post-
  grant review of business method patents for a period of
  time.
• Section 12 provides for “supplemental examinations,”
  which may be of limited use, however, in light of recent
  case law limiting the inequitable conduct doctrine.
    Pre-AIA Law: Submissions of prior art and ex
               parte reexaminations
•   Both procedures introduced in 1980.
•   Submission of prior art (35 U.S.C. § 301):
     – “Any person at any time may cite to the Office in writing prior art consisting of
        patents or printed publications which that person believes to have a bearing
        on the patentability of any claim of a particular patent. . . .”
•   Ex parte reexaminations (35 U.S.C. §§ 302-07)
     – “Any person at any time may file a request for reexamination by the Office of
        any claim of a patent on the basis of any prior art cited under the provisions
        of section 301 of this title. . . .” (§ 302)
     – “Within three months following the filing of a request for reexamination . . . the
        Director will determine whether a substantial new question of patentability
        affecting any claim of the patent concerned is raised by the request, with or
        without consideration of other patents or printed publications. . . .” (§ 303(a))
     – “If, in a determination made under the provisions of subsection 303(a) of this title,
        the Director finds that a substantial new question of patentability affecting
        any claim of a patent is raised, the determination will include an order for
        reexamination of the patent for resolution of the question. . . .” (§ 304)
     – “After the times for filing the statement and reply provided for by section 304 of
        this title have expired, reexamination will be conducted according to the
        procedures established for initial examination under the provisions of sections
        132 and 133 of this title. . . .” (§ 305)
     – Patent owner is permitted to propose amendments and to add new claims, but
        may not enlarge the scope of the claims. (Id.)
      Pre-AIA Law: inter partes reexaminations
               (35 U.S.C. §§ 311-18)
•   Introduced only in 1999, after analysis showed that ex parte reexaminations were not
    being widely used in part because of the limits on third party involvement in the
    process.
•   Section 311(a): “Any third-party requester at any time may file a request for inter
    partes reexamination by the Office of a patent on the basis of any prior art cited
    under the provisions of section 301. “
•   Section 312(a): “[T]he Director shall determine whether a substantial new question
    of patentability affecting any claim of the patent concerned is raised by the request .
    . . .”
•   Section 313: “If . . . the Director finds that a substantial new question of
    patentability affecting a claim of a patent is raised, the determination shall include
    an order for inter partes reexamination of the patent for resolution of the question. . .
    .”
•   Section 314(a): “Except as otherwise provided in this section, reexamination shall be
    conducted according to the procedures established for initial examination under the
    provisions of sections 132 and 133.”
•   Section 314(b)(2): “Each time that the patent owner files a response to an action on
    the merits from the Patent and Trademark Office, the third-party requester shall
    have one opportunity to file written comments addressing issues raised by the
    action of the Office or the patent owner's response thereto . . . .”
•   Third party requester also has a right to appeal and to participate in the patent
    owner’s appeal (§ 315(b)).
      Pre-AIA Law: inter partes reexaminations
               (35 U.S.C. §§ 311-18)
•   Estoppel
      – “A third-party requester whose request for an inter partes reexamination results
         in an order under section 313 is estopped from asserting at a later time, in any
         civil action arising in whole or in part under [28 U.S.C. § 1338], the invalidity of
         any claim finally determined to be valid and patentable on any ground which the
         third-party requester raised or could have raised during the inter partes
         reexamination proceedings. This subsection does not prevent the assertion of
         invalidity based on newly discovered prior art unavailable to the third-party
         requester and the [USPTO] at the time of the inter partes reexamination
         proceedings.” ((§ 315(c))
      – Section 4607 of the Optional Inter Partes Reexamination Procedure Act of 1999
         also includes an estoppel provision that (for some reason) was never codified in
         Title 35, but which nevertheless has the force of law: “Any party who requests
         an inter partes reexamination . . . is estopped from challenging at a later time, in
         any civil action, any fact determined during the process of such reexamination,
         except with respect to a fact determination later proved to be erroneous based
         on information unavailable at the time of the inter partes reexamination decision.”
•   In large part due to these estoppel rules, inter partes reexaminations have been rare.
      – Initially, the USPTO projected that 600 petitions would be filed annually by 2004.
      – In fact, from 1999-2004, only 53 (total) were filed.
      – See USPTO Report to Congress on Inter Partes Reexamination (2004)
         [hereinafter             2004             Report],           available            at
         http://www.uspto.gov/web/offices/dcom/olia/reports/reexamreport.pdf.
    Post-AIA Law: submissions of prior art and ex
     parte reexaminations (effective 9/16/2012)
•   Submission of prior art (35 U.S.C. § 301):
     – “Any person at any time may cite to the Office in writing (1) prior art consisting of
        patents or printed publications which that person believes to have a bearing on
        the patentability of any claim of a particular patent; or (2) statements of the
        patent owner filed in a proceeding before a Federal court or the Office in
        which the patent owner took a position on the scope of any claim of a
        particular patent.” (§ 301(a))
          • “A party that submits a written statement pursuant to subsection (a)(2) shall
             include any other documents, pleadings, or evidence from the proceeding in
             which the statement was filed that addresses the written statement.” (§
             301(c))
          • “A written statement submitted pursuant to subsection (a)(2), and additional
             information submitted pursuant to subsection (c), shall not be considered by
             the Office for any purpose other than to determine the proper meaning of a
             patent claim in a” reexamination or post-grant review.
•   Ex parte reexaminations (35 U.S.C. §§ 302-07):
     – No material changes, except that because any of the evidence referred to in §
        301 can be considered in an ex parte reexamination, the universe of relevant
        evidence is now slightly larger than it was before.
     – “This addition will counteract the ability of patent owners to offer differing
        interpretations of prior art in different proceedings. . . . [T]he Committee does not
        intend these statements to be a basis for the institution of a reexamination
        proceeding. Reexaminations will continue to be available only on the basis of
        ‘patents or printed publications.’” H.R. Rep. No. 112-98, at 46 (June 1, 2011).
              Post-AIA Law: inter partes review
•   With one exception noted below, these provisions also go into effect 9/16/2012, and
    will apply to any patents granted before, on, or after that date. See AIA § 6(c)(2)(A).
•   “A petitioner in an inter partes review may request to cancel as unpatentable 1 or
    more claims of a patent only on a ground that could be raised under section 102 or
    103 and only on the basis of prior art consisting of patents or printed publications.” (§
    311(b))
     – Does not expand the type of prior art that may be considered from what it was
          prior to the AIA.
•   The petition “shall be filed after the later of either . . . 9 months after the grant of a
    patent . . . or . . . if a post-grant review is instituted . . . the date of termination of such
    post-grant review.” ((§ 311(c))
     – As we will see, post-grant reviews are to be initiated, if at all, within 9 months of
          issuance.
     – So the effect of this provision will be to require petitioners to wait until a post-
          grant review, if any, is completed before initiating an inter partes review.
     – Inter partes review will still be “appropriate for parties that have discovered prior
          art outside the time period to request review of the patent under Post-Grant
          Review. . . . [I]nter partes reexamination would become a more effective vehicle
          for addressing the fact that new relevant prior art patents and printed publications
          can very well surface at any time during a patent’s life.” 2004 Report, at 7.
             Post-AIA Law: inter partes review
•   The substantive standard for granting an inter partes reexamination
    has changed from “substantial new question of patentability” to
    “reasonable likelihood that the petitioner would prevail with respect to
    at least 1 of the claims challenged in the petition.”
     – This change will be embodied in a new section 314(a), effective
         9/16/2012.
     – The new standard, however, applies immediately to any reexamination
         petitions filed on or after 9/16/2011, under “transitional” sections 312(a)
         and 313.
     – The new standard will make it “substantially harder to obtain inter partes
         review.” Mark A. Lemley, Things You Should Care About in the New
         Patent      Statute,    at    5    (Sept.   16,    2011),     available    at
         http://ssrn.com/abstract=1929044.
     – See also H.R. Rep. No. 112-98, at 47 (stating that the “threshold for
         initiating an inter partes review is elevated from ‘significant new question
         of patentability’—a standard that currently allows 95% of all requests to
         be granted—to a standard requiring petitioners to present information
         showing that their challenge has a reasonable likelihood of success”).
             Post-AIA Law: inter partes review
•   Amended § 315 sets forth the relation between inter partes review and other
    proceedings:
     – “An inter partes review may not be instituted if, before the date on which
        the petition for such a review is filed, the petitioner . . . filed a civil action
        challenging the validity of a claim of the patent.” (§ 315(a)(1))
     – “If the petitioner . . . files a civil action challenging the validity of a claim
        of the patent on or after the date on which the petitioner files a petition
        for inter partes review of the patent, that civil action shall be
        automatically stayed until either
          • (A) the patent owner moves the court to lift the stay;
          • (B) the patent owner files a civil action or counterclaim alleging that
             the petitioner . . . has infringed the patent; or
          • (C) the petitioner . . . moves the court to dismiss the civil action.” (§
             315(a)(2))
     – An inter partes review may not be instituted if the petition
        requesting the proceeding is filed more than 1 year after the date
        on which the petitioner . . . is served with a complaint alleging
        infringement of the patent. . . .” ((§ 315(b))
              Post-AIA Law: inter partes review
•   The estoppel effect, however, remains:
     – “The petitioner in an inter partes review . . . that results in a final written decision
         under section 318(a) . . . may not request or maintain a proceeding before the
         Office with respect to that claim on any ground that the petitioner raised or
         reasonably could have raised during that inter partes review.”
     – “The petitioner in an inter partes review . . . that results in a final written decision .
         . . may not assert either in a civil action arising in whole or in part under [28
         U.S.C. § 1338] or section 337 of the Tariff Act of 1930 that the claim is invalid on
         any ground that the petitioner raised or reasonably could have raised during that
         inter partes review.” (§ 315(e)).
•   See also id. § 317: “If the inter partes review is terminated [by party settlement] with
    respect to a petitioner under this section, no estoppel under section 315(e) shall
    attach to the petitioner . . .”
•   “The Act converts inter partes reexamination from an examinational to an adjudicative
    proceeding.” H.R. Rep. No. 112-98, at 46. For example:
     – Section 316(a) requires the director to prescribe regulations for, inter alia,
         discovery (including depositions), sanctions for abuse, and a right to an oral
         hearing.
     – Inter partes reexaminations will be conducted by the Patent Trial and Appeal
         Board (f/k/a Board of Patent Appeals and Interferences) (§ 316(c)).
     – The petitioner will have the burden of proving unpatentability by a preponderance
         of the evidence. (§ 316(e))
                           Post-grant reviews
•   Section 321:
     – “Subject to the provisions of this chapter, a person who is not the owner of a
        patent may file with the Office a petition to institute a post-grant review of the
        patent. The Director shall establish, by regulation, fees to be paid by the person
        requesting the review . . . .” (321(a))
     – “A petitioner in a post-grant review may request to cancel as unpatentable 1 or
        more claims of a patent on any ground that could be raised under paragraph
        (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim).”
        (321(b))
     – ‘‘A petition for a post-grant review may only be filed not later than the date that is
        9 months after the date of the grant of the patent or of the issuance of a reissue
        patent (as the case may be).”
•   Section 323:
     – ‘‘If a post-grant review petition is filed under section 321, the patent owner shall
        have the right to file a preliminary response to the petition, within a time period
        set by the Director, that sets forth reasons why no post-grant review should be
        instituted based upon the failure of the petition to meet any requirement of this
        chapter.”
•   Section 324:
     – “The Director may not authorize a post-grant review to be instituted unless the
        Director determines that the information presented in the petition filed under
        section 321, if such information is not rebutted, would demonstrate that it is more
        likely than not that at least 1 of the claims challenged in the petition is
        unpatentable.” (324(a))
                         Post-grant reviews
•   Section 325:
     – As with inter partes reexaminations, a post-grant review is inappropriate
       if the petitioner has already filed a civil action challenging the validity of
       a claim of the patent; and automatically stays a civil action filed by the
       petitioner at some later time, subject to the same exceptions that apply
       with respect to inter partes reexaminations.
     – Does not appear to prevent a defendant in a civil action from both
       raising invalidity as a defense, however, and instituting an opposition
       (Lemley, supra, at 10).
     – Estoppel also applies to post-grant reviews under the same terms as it
       applies in inter partes reexamination (§§ 325(e), 327).
•   Section 326:
     – As with inter partes reexaminations, the Director is to issue regulations
       by 9/16/2012, providing for discovery, right to an oral hearing, etc. (§
       326(a)).
     – PTAB to conduct post-grant reviews (§ 326(c)).
     – The petitioner will have the burden of proving unpatentability by a
       preponderance of the evidence (§ 326(e)).
                        Post-grant reviews
•   These amendments all take effect as of 9/16/2012, but they will apply only
    to patents issued under the first-to-file standard that goes into effect
    3/16/2013. So in effect there won’t be any post-grant reviews until
    sometime after 3/16/2013.
•   Recall, however, that after 9/16/2012, inter partes reviews cannot be
    instituted until at the earliest 9 months after grant.
•   Thus, during the transition to first-to-file, “neither inter partes reexam nor
    post-grant oppositions appear to be available during the first nine months of
    the patent term. That omission seems inadvertent, a result of the complex
    effective data provisions” (Lemley, supra, at 10).
                    Why post-grant reviews?

•   Widely used elsewhere
     – See, e.g., EPC article 99 (providing that within 9 months of grant of a
       European patent, “any person may give notice to the [EPO] of
       opposition to the European patent granted”).
         • Grounds include pretty much any reason that would preclude
            patentability (EPC art. 100).
         • Opposition proceedings are adversarial-type proceedings,
            conducted before the EPO’s Opposition Division.
     – Oppositions are often viewed as a way of screening out invalid patents
       at an early stage and at relatively low cost, usually before any
       infringement litigation has commenced.
     – Oppositions are not the only way of screening out invalid patents,
       however. Although practice varies from country to country, countries
       that have oppositions may also permit third parties
         • to file civil actions for patent invalidation after the time for filing an
            opposition has lapsed,
         • and/or to file declaratory judgment actions,
         • and/or to raise invalidity as a defense to infringement.
                     Why post-grant reviews?
•   Statistics show that oppositions are used much more frequently in Europe than are
    reexaminations in the U.S. See, e.g.,
     – Stuart J. Graham et al., Post-Issue Patent “Quality Control”: A Comparative
         Study of US Patent Re-examinations and European Patent Oppositions,
         available at http://repositories.cdlib.org/iber/CPC02-031 (Aug. 5, 2002) (stating
         that “the rate of opposition at the EPO is more than thirty times higher than the
         rate of reexamination at the USPTO,” and that “opposition leads to a revocation
         of the patent in about 41 percent of the cases, and to a restriction of the patent
         right in another 30 percent of the cases,” compared with “cancellation of the
         patent right in only 12.2 percent of all” reexaminations).
     – Robert P. Merges, As Many as Six Impossible Patents Before Breakfast:
         Property Rights for Business Concepts and Patent System Reform, 14 Berkeley
         Tech. L.J. 577, 613 n.99 (1999) (stating that, in 1997, 6.8% of EPO patents were
         opposed, compared to 0.3% of U.S. patents reexamined).
•   Some of the reasons are pretty obvious:
     – Challengers can raise any challenge, not just challenges based on prior art
         consisting of printed publications and patents; proceedings are adversarial; etc.
     – In comparison, ex parte reexaminations are limited in the type of evidence that
         can be considered, impose severe limits on third party involvement, etc.
     – Inter partes reexaminations are even less popular for various reasons.
•   Possible downsides of oppositions: Potential for abuse? Increased costs to
    applicants?
 Post-grant review of business method patents:
                 AIA section 18
• Not later than 9/16/2012, “the Director shall issue regulations
  establishing and implementing a transitional post-grant review
  proceeding for review of the validity of covered business method
  patents.” (AIA § 18(a)(1))
• “The transitional proceeding implemented pursuant to this
  subsection shall be regarded as, and shall employ the standards
  and procedures of, a post-grant review under chapter 32 of title 35,
  United States Code,” subject to some exceptions.             (AIA §
  18(a)(1)(A))
• “A person may not file a petition for a transitional proceeding with
  respect to a covered business method patent unless the person or
  the person’s real party in interest or privy has been sued for
  infringement of the patent or has been charged with infringement
  under that patent.” (AIA § 18(a)(1)(B))
   – Query: What does “has been charged with infringement” mean?
    Post-grant review of business method patents:
                    AIA section 18
•   “A petitioner in a transitional proceeding who challenges the validity of 1 or more
    claims in a covered business method patent on a ground raised under section 102 or
    103 . . . as in effect on” 3/15/2013, “may support such ground only on the basis of—
     – “(i) prior art that is described by section 102(a) . . . (as in effect on [3/15/2013]) or
     – “(ii) prior art that—
            • “(I) discloses the invention more than 1 year before the date of the
               application for patent in the United States; and
            • “(II) would be described by section 102(a) . . . (as in effect on [3/15/2013]) if
               the disclosure had been made by another before the invention thereof by the
               applicant for patent.” (AIA § 18(a)(1)(C))
•   “The petitioner in a transitional proceeding that results in a final written decision . . .
    with respect to a claim in a covered business method patent . . . may not assert . . . in
    a civil action . . . that the claim is invalid on any ground that the petitioner raised [not
    “could have raised”] during that transitional proceeding.” (AIA § 18(a)(1)(D))
•   “The Director may institute a transitional proceeding only for a patent that is a
    covered business method patent.” (AIA § 18(a)(1)(E))
    Post-grant review of business method patents:
                    AIA section 18
•   “The regulations issued under paragraph (1) shall take effect upon the expiration of
    [9/16/2012] and shall apply to any covered business method patent issued before,
    on, or after [9/16/2012] . . . .” (AIA § 18(a)(2))
•   “This subsection, and the regulations issued under this subsection, are repealed
    effective upon the expiration of the 8-year period beginning on the date that the
    regulations issued under to paragraph (1) take effect.” (AIA § 18(a)(3)(A))
•   Stays of civil litigation may be granted based on considerations set forth in section
    AIA § 18(b).
•   “[T]he term ‘covered business method patent’ means a patent that 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,
    except that the term does not include patents for technological inventions.” (AIA §
    18(d)(1))
•   “To assist in implementing the transitional proceeding authorized by this subsection,
    the Director shall issue regulations for determining whether a patent is for a
    technological invention.” (AIA § 18(d)(2))
•   “Nothing in this section shall be construed as amending or interpreting categories of
    patent-eligible subject matter set forth under section 101 of title 35, United States
    Code.” (AIA § 18(e)
                 Supplemental examinations

•   AIA § 12 provides for supplemental examinations to fend off an inequitable
    conduct challenge.
•   Specifically, it allows patent owners to request supplemental examinations
    “to consider, reconsider, or correct information believed to be relevant to the
    patent,” and providing that “a patent shall not be held unenforceable on the
    basis of conduct relating to information that had not been considered, was
    inadequately considered, or was incorrect in a prior examination of the
    patent if the information was considered, reconsidered, or corrected during
    a supplemental examination” concluded before the date on which the
    patentee files suit for infringement.
•   A request for supplemental examinations will be considered under the
    “substantial new question of patentability” standard that governs in ex parte
    reexaminations.
•   Effective 9/16/2012.
•   May not matter too much, given the restrictive interpretation of the
    inequitable conduct doctrine announced earlier this year in Therasense, Inc.
    v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).

				
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