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© 2014 Armstrong Teasdale
LLP
Challenging the Validity
of a Patent Before the PTAB
Jennifer Hoekel and Scott Eidson
July 30, 2014
3. © 2014 Armstrong Teasdale
LLP
PTAB Procedures
What is the PTAB?
• Patent Trial and Appeal Board
• Appellate-like panel of three judges that oversee each
proceeding
• Decisions appealable to the Federal Circuit
3 New Procedures For Challenging a Patent After it
Issues
• Post Grant Review (PGR)
• Covered Business Method Review (CBM)
• Inter Partes Review (IPR)3
4. © 2014 Armstrong Teasdale
LLP
Post Grant Review & Covered Business
Method Review
CBM patent is a patent that
claims a method, apparatus, or
operation used in the practice,
administration, or management
of a financial product or service
Not including a technological
invention
Only available to parties charged
with infringement
Any invalidity ground
Timeline: completed in 18
months
Estoppel only to grounds
actually raised
Applicable to patents filed on or
after March 16, 2013
Any invalidity ground
Available for the first 9 months
after a patent issues or reissues
Timeline: completed in 18
months
Estoppel applies (“raised or
could have raised”)
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Post Grant
Review
Covered Business Method
Review
5. © 2014 Armstrong Teasdale
LLP
Inter Partes Review
Based on patents or printed publications and may be
sought any time after post grant review period ends
Preponderance of the Evidence Standard
Estoppel applies (“raised or could have raised”)
Requires threshold PTO determination to institute
review (similar to reexam)
Time Limits: within 12 months of litigation; no review
if petitioner filed a DJ on invalidity
Right to oral hearing, heard by PTAB
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12. © 2014 Armstrong Teasdale
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Strategies: Challenging a Patent
Identify claims to challenge
• Are they in litigation?
• Timing considerations
Exhaust your prior art search (estoppel)
Consider use of experts
Set forth all of your arguments in the petition—60 page limit
• Cannot add new arguments as the proceeding goes forward
• Cannot incorporate from declaration
• Focus on a detailed analysis
• Multiple petitions—common practice (roughly 200 patents subject to
multiple petitions attacking the claims)
− Attack claim groupings
− Attack on different invalidity arguments
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13. © 2014 Armstrong Teasdale
LLP
Strategies: Challenging a Patent
Joint Petition: Should we join with others to file one
petition?
• PTAB will likely join multiple petitions attacking the
same patent
Claim Charts
• Must be explained in petition with cites to supporting
evidence
Experts
• Must be supported by underlying facts or data
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14. © 2014 Armstrong Teasdale
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Strategies: Defending Your Patent
File a preliminary patent owner’s response?
• Attack redundant challenges and reduce the number
of grounds
• Attack weaknesses in petition and prior art
• No new evidence allowed
Do nothing?
• Don’t preview your arguments
• Save cost
Swear behind prior art?
• Difficult to do in front of the PTAB
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15. © 2014 Armstrong Teasdale
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Strategies: Defending Your Patent
Amend claims during trial
• Not likely. Why?
• One for one substitution
• Must narrow
• No examination
• Burden on patent owner to show patentable and
distinct
Settle
• If you wait too long, the PTAB may not stop the
proceeding
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16. © 2014 Armstrong Teasdale
LLP
Related Considerations
Licensing:
• Patent owner: pays for and controls prosecution
• Licensee: Has the right (& obligation) to enforce patent
rights at its own expense
− Who controls post grant proceedings? Who pays?
Conflicts?
− Review and revise all license agreements to clarify
responsibilities and avoid conflicts
Enforcement:
• Could/will become a common response to enforcement
efforts
• Efforts will be delayed due to litigation stays
• Budget accordingly/plan accordingly
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17. © 2014 Armstrong Teasdale
LLP
Timeline & Costs: Litigation vs. Inter Partes
Review
Cost to File:
• $400
Average Length of Time
(filing to trial):
• Just under three years
*2011 AIPLA Survey
Average Cost (fees and
expenses):
• $1-10 million in controversy:
− $2.1 million through trial
• $10-25 million in
controversy:
− $3.6 million through trial
*2013 AIPLS Report of the Economic
Survey
Cost to File:
• $9,000 filing fee
+ $200/claim over 20
• $14,000 institution fee
+ $400/claim over 15
Length of Time:
• 18 months.
Average Cost (fees and
expenses):
• $250,000-650,000.
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Inter Partes
Review
Patent Litigation
18. © 2014 Armstrong Teasdale
LLP
Questions?
Scott Eidson
Partner
Intellectual Property
314.342.4161
seidson@ArmstrongTeasdale.com
Jennifer Hoekel
Partner
Intellectual Property
314.342.4162
jhoekel@ArmstrongTeasdale.com
www.atpostgrant.com
CLE Confirmation Code: HE0712
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