This document discusses changes to post-issuance disputes under the America Invents Act (AIA) and provides an overview of the new inter partes review (IPR) and post-grant review (PGR) proceedings. Key changes include new grounds of challenge, different time periods for filing, and trial-like procedures before the Patent Trial and Appeal Board. The timeline for IPR and PGR under the AIA includes a petition, preliminary response, decision on whether to institute trial, discovery period, patent owner response, petitioner reply, oral hearing, and final written decision.

1. Post Issuance Inter Partes Disputes:
What you need to know Kerry Taylor
October 19, 2012 Tokyo
The recipient may only view this work. No other right or license is granted.

2. Topics
• AIA’s changes to post-issuance disputes (third party
challenges to issued patents)
– What stays the same and what is new?
• Practice and procedure
– Trial proceedings overview
– Strategies and considerations
• How do the new proceedings operate?
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2

3. Changes to Post-Issuance Disputes
• Before AIA • After AIA
• Inter Partes Reexam • Post-Grant Review
• Ex Parte Reexam • Transitional Program for
Covered Business
• Interferences Method Patents
• Inter Partes Review
• Ex Parte Reexam
• Derivation Proceedings
• Interferences (Legacy)
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3

4. Statutory Requirements for PGR and IPR
Proceeding Petitioner Available Standard Basis
Post • Not the patent
owner and has
From patent More likely than
grant to 9 months not
101, 102,
103, 112,
Grant not previously from patent grant double
Review filed a civil
action
or reissue OR patenting
but not best
(PGR) challenging Novel or mode
the validity of unsettled legal
the patent question
Inter • Must identify
The later of:
(i) 9 months after
Reasonable
likelihood
102 and 103
based on
Partes real party in
interest
patent grant; or (“lower patents and
Review (ii) termination
of any post grant
threshold”
“somewhat
printed
publications
(IPR) review of the flexible”)
patent
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4

5. Statutory Requirements for PGR and IPR
Proceeding Applicable Estoppel Timing
Post Patent issued under
first-inventor-to-file
• Raised or
reasonably could
Must be completed
within 12 months
Grant have raised from institution, with
Review • Applied to
6 months good cause
exception possible
(PGR) subsequent
USPTO/district
court/ITC action
Inter Any patent
• Note: Covered
Partes Business Methods
Review standard: only
raised, not
(IPR) reasonably could
have raised
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5

6. Trial Proceedings
• As Vice Chief APJ Moore has stated, “This is not
prosecution.”
• USPTO Patent Trial and Appeal Board
– Trial section views itself as a litigation tribunal
– Appeal section focuses on ex parte appeals from
examination
• Current interference rules will provide basis for new
procedural rules for all USPTO Inter Partes
proceedings
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 6

7. USPTO Trial Rules
Inter Partes Review Post-Grant Review
§§ 41.100 – 42.123 §§ 42.200 – 42.224
Umbrella Trial Rules
§§ 42.1 – 42.80
Covered Business Method
Derivation Proceedings
Patent Review
§§ 42.400 – 42.412
§§ 42.300 – 42.304
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7

8. Umbrella Trial Rules
• Must conclude within 12 months of initiation (18
months for good cause)
• Discovery
• Motion practice
• Protective orders
• Settlement
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8

9. Trial Proceedings Timeline
PO Petitioner PO
discovery discovery discovery
period period period
Petitioner
PO
reply
response
PO to PO’s
to decision PO Oral Written
Petition prelim. Decision response
reply hearing decision
response
motion
opp’n to
to amend
motion
3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo.
Trial begins ≤ 1 year
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9

10. Trial Proceedings Timeline
PO Petitioner PO
discovery discovery discovery
period period period
Petitioner
PO
reply
response
PO to PO’s
to decision PO Oral Written
Petition prelim. Decision response
reply hearing decision
response
motion
opp’n to
to amend
motion
3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo.
Trial begins ≤ 1 year
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 10

11. Petition
• Contents:
– Challenge of claims (including claim construction)
– Supporting evidence (references, declarations)
– Should be as complete as possible
• Cost:
– PGR: $35.8 k ($800 per claim over 20)
– IPR: $27.2 k ($600 per claim over 20)
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 11

12. Trial Proceedings Timeline
PO Petitioner PO
discovery discovery discovery
period period period
Petitioner
PO
reply
response
PO to PO’s
to decision PO Oral Written
Petition prelim. Decision response
reply hearing decision
response
motion
opp’n to
to amend
motion
3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo.
Trial begins ≤ 1 year
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 12

13. Preliminary Response
• Not required for Patent Owner to respond
• Contents:
– Supporting evidence (typically no declarations)
• Due 3 months after Petition filing date
• Also due at this time:
– Agreed-upon mandatory initial disclosures (e.g., relied upon
documents, identity of declarants)
• Other possible procedures
– Discovery relating to standing
– PTAB may already rule to dismiss all or part of Petition
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 13

14. Trial Proceedings Timeline
PO Petitioner PO
discovery discovery discovery
period period period
Petitioner
PO
reply
response
PO to PO’s
to decision PO Oral Written
Petition prelim. Decision response
reply hearing decision
response
motion
opp’n to
to amend
motion
3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo.
Trial begins ≤ 1 year
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 14

15. PTAB Decision to Institute Trial
• Decision
– Claim-by-claim and Ground-by-ground
– “Sufficient notice” explaining PTAB’s reason for instituting
• Request for reconsideration can be made by either party (timing
varies)
• Also includes default Scheduling Order
• Discovery begins (typically Patent Owner discovery at this point)
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15

16. Within 1 Month of PTAB Decision
• Scheduling Conference:
– Parties agree on Scheduling Order (can differ from default,
but PTAB will likely reserve 2-3 months after Oral Hearing for
Written Decision)
– Parties agree on Discovery
• Patent Owner proposes number of substitute claims
• Petitioner can provide Supplemental Information
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 16

17. Trial Proceedings Timeline
PO Petitioner PO
discovery discovery discovery
period period period
Petitioner
PO
reply
response
PO to PO’s
to decision PO Oral Written
Petition prelim. Decision response
reply hearing decision
response
motion
opp’n to
to amend
motion
3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo.
Trial begins ≤ 1 year
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 17

18. Discovery
• Automatic
– Agreed-upon mandatory initial disclosures
• Routine
– Document cited in paper or testimony
– Cross examination of declarant
– Relevant information inconsistent with a position advanced
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18

19. Discovery continued
• Additional
– As agreed upon by parties
– No agreement: by motion: “interests of justice”
• Compelled testimony or production
– By motion (typically granted)
– Non-parties to proceedings
• Motion practice: authorization required (typically in conference
call)
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 19

20. Trial Proceedings Timeline
PO Petitioner PO
discovery discovery discovery
period period period
Petitioner
PO
reply
response
PO to PO’s
to decision PO Oral Written
Petition prelim. Decision response
reply hearing decision
response
motion
opp’n to
to amend
motion
3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo.
Trial begins ≤ 1 year
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 20

21. Patent Owner Response
• Response Contents:
– Can rebut any grounds for challenging claims (including
claim construction)
– Supporting evidence (references, declarations)
• Also due: Motion to amend
– Total number of claims: “reasonable number” (generally one
substitute claim per challenged claim)
– Typically this is the only opportunity to amend
• Petitioner discovery begins
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 21

22. Trial Proceedings Timeline
PO Petitioner PO
discovery discovery discovery
period period period
Petitioner
PO
reply
response
PO to PO’s
to decision PO Oral Written
Petition prelim. Decision response
reply hearing decision
response
motion
opp’n to
to amend
motion
3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo.
Trial begins ≤ 1 year
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 22

23. Petitioner Reply/Patent Owner Reply
Petitioner Reply
• Oppose proposed amendments by Patent Owner
• Rebut Patent Owner’s arguments
– Limit to new evidence that can be submitted (rebuttal)
• Patent Owner additional discovery
Patent Owner Reply
• Rebut Petitioner’s evidence
• Typically will close discovery
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 23

24. Trial Proceedings Timeline
PO Petitioner PO
discovery discovery discovery
period period period
Petitioner
PO
reply
response
PO to PO’s
to decision PO Oral Written
Petition prelim. Decision response
reply hearing decision
response
motion
opp’n to
to amend
motion
3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo.
Trial begins ≤ 1 year
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 24

25. Observations, Motions, Oral Hearing
Observations and Motions
• Motions to exclude evidence filed; oppositions to motions filed
• Observations filed (brief comments regarding evidence such as
cross-examination transcripts)
Oral Hearing
• Available upon request
• Typically closes most activities by the parties
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 25

26. 12790 El Camino Real
Kerry Taylor San Diego, California 92130
Kerry.Taylor@knobbe.com