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Patent Office Litigation Return to Practice Areas & Industries

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Led by our Patent Office Litigation Chair, Robert Asher, our lawyers combine deep experience in patent office proceedings and patent litigation. In the USPTO, our skills at handling inter partes reexaminations, ex parte reexaminations, patent interferences and patent prosecution have been put to work in inter partes reviews. Our years of experience working with experts, questioning witnesses and standing up to advocate in court for our clients in district court patent litigation round out our readiness to litigate before the Patent Trial and Appeal Board.

In addition, our practitioners are ready to contribute to the case strategy in the full expanse of technical areas.  We have represented clients in numerous fields, including data communications and networking, molecular and cell biology, electronic systems, integrated circuits, electro-mechanical and microprocessor-controlled devices, medical devices, computer hardware and software, voice recognition and synthesis, chemistry, food science, biochemistry, textiles, plastics, optics and imaging, x-ray systems, metallurgy, ceramics, magnetic recording, fluid control systems and mechanical devices.

Post Grant Review – Post-grant review (PGR) has certain limitations in terms of timing and scope. It may only be filed against patents issuing with priority dates later than March 15, 2013. There is a specific window in which PGR is available: a request must be filed within 9 months of the date a patent issues or reissues. A party cannot seek PGR if it has already brought a declaratory judgment action seeking the invalidity of the patent in court. The PGR requester can introduce any evidence that would be used to show invalidity. Thus, not only patents and printed publications but questions like lack of patentable subject matter, indefiniteness of the claims, lack of enablement and earlier on sale may be raised. The standard for PGR requires requester to show that any challenged claim is more likely than not to be declared unpatentable or that its request raises novel or unsettled legal questions important to other patents or applications.

A party seeking to use PGR should be aware that the procedure has estoppel effects not only in federal court litigation, but also in proceedings in the USPTO and ITC. The estoppel is not only for issues raised in the proceedings, but any that “reasonably” could have been raised. Given the broad array of validity grounds a party can raise in PGR, this leaves an unsuccessful litigant with little more than non-infringement to argue in litigation. The estoppel becomes effective as soon as the Patent Trial and Appeal Board issues the final written determination.

Inter Partes Review – Inter partes review (IPR) is available to seek to cancel claims of any currently enforceable United States patent. (For new patents granted under the new first-inventor-to-file laws, an inter partes review cannot be filed until after the 9-month post-grant review period concludes or an already instituted post-grant review proceeding has been concluded.)

IPR is available to challenge the patentability of claims in a patent on which a party has been sued for patent infringement, if the petition for IPR is filed (with a few exceptions) within one year after the complaint for patent infringement has been served on the party.

The challenge to a patent attacked in an IPR is limited to arguing that the claims of the patent are unpatentable for anticipation or obviousness based on prior art that is found in patents and printed publications.

In acting on a petition for IPR, the USPTO will not institute an IPR proceeding unless the petitioner has established a “reasonable likelihood” that it will prevail on at least one ground asserted against at least one claim. An IPR proceeding involving a patent has an “estoppel” effect, wherein the petitioner in an IPR is prevented from later challenging (in court, in the USPTO, or in the ITC) the validity of any claim in the patent on any grounds that were raised or reasonably could have been raised in the IPR. On the other hand, because the only challenges that can be made in an IPR are those relating to anticipation or obviousness based on patents and printed publications, the petitioner is not prevented from later challenging validity on the basis of lack of an enabling disclosure for the claims, lack of clarity in the claims, etc. Estoppel against an unsuccessful petitioner becomes effective as soon as the Patent Trial and Appeal Board issues the final written determination.

The final written decision has another estoppel effect, in this case on the patent owner. The patent owner is prevented from obtaining another claim in another patent, for the subject matter in the IPR, unless the claim is patentably distinct from any claim rejected in the decision.

If the IPR results in the cancellation of any claims, and the patent fails to emerge from the IPR with amended or new patent claims substantially identical to the original claims, the cancellation becomes effective to invalidate the patent claims in court after the patent owner has exhausted all available appeals from the IPR or if the time for any further appeals has lapsed. More. . .

Covered Business Method Reviews – Business method patents are particularly susceptible to attack. A post-grant review type of attack may be brought if a petitioner has been charged with infringement of the patent. A claim subject to a covered business method review pertains to a “method or 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.” There is no time limit for seeking a covered business method review. The patents may be challenged as invalid on any ground. Nevertheless, a petitioner receives favorable treatment and is subject to estoppel only for those grounds raised in the covered business method review. Moreover, the petitioner has the right to file an interlocutory appeal to the Federal Circuit if denied a stay of the litigation while the covered business method review is pending. Thus, when applicable in litigation, these covered business method reviews will be exceptionally well suited for filing by defendants.

Inter Partes Review

An inter partes review is a litigation proceeding brought before the Patent Trial and Appeal Board (“PTAB”) to challenge the patentability of claims in a patent.  A successful inter partes review can cause cancellation of the patent claims so as to prevent future assertion of these claims, wiping out any pending verdict related to these claims and preventing the patent owner from seeking additional claims that are not patentably distinct from those claims found to be unpatentable.  The challenge to patentability in an inter partes review can be based only on the theory that the claims are anticipated or rendered obvious by one or more prior art patents or printed publications.

Availability – Unlike the limits placed on the old inter partes reexamination procedure, an inter partes review may be brought against any patent. Parties in litigation charged with patent infringement have a time limit that must be taken into account when planning litigation strategy: an inter partes review must be filed within one year after being served with the complaint.

Certain circumstances may allow for a defendant to bring an inter partes review even after one year. If another party brings an inter partes review, it can be possible to file a petition for an inter partes review beyond the one-year time limit. If the PTAB agrees to institute a first inter partes review, the PTAB is authorized to join a second inter partes review with the first one without regard to the one-year limit.

An inter partes review petition cannot be filed after filing a declaratory judgment action asserting invalidity of the patent. Nevertheless, such a declaratory judgment can be filed the same day or any day after the inter partes review has been filed. Although an inter partes review petition has the effect of automatically staying the declaratory judgment action, nevertheless by filing the declaratory judgment action, the patent challenger has achieved the goal of making a choice of forum, perhaps in the challenger’s home court.  If the patent owner pursues its patent infringement claim in court, the automatic stay is lifted. An alternative approach to getting into court and filing an inter partes review is for the challenger to lead off with a declaratory judgment action that is limited in scope to asserting non-infringement of the patent, leaving invalidity to the inter partes review proceeding or for later assertion in answer to a counterclaim.

For patents subject to the first-to-file provisions of the America Invents Act, the first nine months after issuance the patent may be subjected to a post-grant review. An inter partes review may not be filed until after these first nine months and only if a post-grant review has not been instituted. If a post-grant review has been requested but not yet instituted, the petition for inter partes review can be filed in the short period between the end of the nine months and the decision from the PTAB instituting the post-grant review.

Estoppel – A successful inter partes review can invalidate one or more claims of a patent. Once all appeals are exhausted a certificate issues canceling any claim determined to be unpatentable. Current case law suggests that the inter partes review certificate will impact any litigation still pending involving the patent claims that are canceled or amended, regardless of the stage of the litigation, potentially undoing jury verdicts and court awards, even those approved on appeal. In the US Patent and Trademark Office, the adverse decision can take effect sooner. Upon issuance of a final written decision from the PTAB, 37 C.F.R. §42.73(d)(3) provides that the patent owner may not obtain “a claim that is not patentably distinct from a finally refused or canceled claim.” Thus, the final written decision can have an immediate effect on patent owner’s continuation strategies in the USPTO.

An unsuccessful inter partes review has estoppel effect upon issuance of the final written decision of the PTAB confirming the patentability of one or more challenged patent claims. The estoppel effect is on a claim-by-claim basis. A petitioner may not thereafter challenge a surviving patent claim on any ground that was raised or reasonably could have been raised during the inter partes review. A great deal of uncertainty surrounds the meaning of “reasonably could have been raised,” and practitioners anxiously await the involvement of the courts in setting forth a predictable meaning for this term. The unsuccessful petitioner’s recourse is to appeal the PTAB decision to the Federal Circuit Court of Appeals in hopes of getting a reversal that lifts the estoppel.

Petition for Inter Partes Review – A solid petition for inter partes review requires the technical rigor and exhaustive thoroughness of a reexamination request and the legal analysis and advocacy of a claim construction brief. Preparing such a petition draws upon skills both developed in patent reexamination practice as well as attained through years of patent litigation. The petition is limited to 60 pages, double-spaced, 14-point font. There are a variety of strategies for satisfying this restriction. One approach is to focus only on specific claims of concern. When there are too many claims requiring challenge, another approach is to file two inter partes reviews, each attacking a different set of claims. The claim chart may be single-spaced.  If the claim chart still does not fit within the petition, it may be included as part of an expert declaration, and therefore outside of the page-count limit.

The petition for inter partes review must set forth each ground of rejection against each challenged claim. Redundant grounds should be avoided. The PTAB encourages petitioners to focus their petitions on a limited set of grounds for rejection, each of which has a strength not shared by the other rejections being raised.

The PTAB says it will apply the broadest reasonable construction to the patent claims. The petition is the challenger’s only chance to influence the claim construction prior to the decision on whether to institute the inter partes review. Therefore, it is often recommended to provide a fully supported claim construction argument with regard to specific claim limitations.

Patent Owner Preliminary Response – The patent owner has the option of filing a preliminary response to the petition. This response may attempt to persuade the PTAB not to go forward with the inter partes review on all or any portion of the grounds raised in the petition. In deciding whether to file a preliminary response, the patent owner must consider issues of timing and estoppel. For example, as for timing, if petitioner is alerted to correctable errors in the petition, it may be able to file a new inter partes review, if warned before expiration of the one-year deadline from service of a complaint, if applicable.  As for estoppel, a refusal to institute an inter partes review does not carry estoppel effect; estoppel is established only by the final written decision at the conclusion of an inter partes review. Therefore, under certain circumstances it may be preferable to allow the inter partes review to be instituted. Furthermore, it may be tactically preferred to conceal one’s arguments as long as possible and not file a preliminary response so that the petitioner has less time to develop its rebuttal arguments.

The contents of a preliminary response are limited. While the patent owner may cancel claims in an attempt to eliminate the need and prospects for an inter partes review, claims may not be amended at this stage. Also, an expert declaration or other testimonial evidence may not be submitted by the patent owner at this time. Therefore, the patent owner is well advised to target legal issues such as omissions in the petition generally or in the claim construction portion of petition and the petitioner’s standing to bring the petition in view of deadlines or estoppel. One advantage of a preliminary response is that it is the last word. The petitioner has no opportunity to respond before the PTAB makes its decision on whether to institute the inter partes review.

Institution of the Inter Partes Review – Within three months after the preliminary response or notice of waiver of the preliminary response, the PTAB will issue a decision whether to institute the inter partes review and, in the event of an affirmative decision, which grounds present a reasonable likelihood of prevailing. If the inter partes review is refused in its entirety, the petitioner has 30 days within which to request a rehearing. Because there is no opportunity for further appeal and the decision not to institute carries no estoppel effect, if time permits, an unsuccessful petitioner may choose to bolster its arguments and file a new inter partes review.

The PTAB will frequently institute an inter partes review in response to a petition seeking such review, while rejecting certain ones of the asserted grounds. The petitioner has only 14 days thereafter within which to request a rehearing on the denied grounds. The bar anxiously awaits guidance from the courts whether grounds refused consideration by the PTAB may be raised later in court.  The estoppel effect of a final written decision in an inter partes review according to statute extends only to grounds which were raised or which reasonably could have been raised during that inter partes review. On the one hand, grounds that were refused at the institution stage could not have been raised in the inter partes review, while, on the other hand, it may be argued that, assuming such grounds would be worth raising in court, a better explanation in the petition might reasonably have caused acceptance of the grounds as a basis for the inter partes review.

Trial – Not later than one year after institution of an inter partes review, the PTAB will issue its final written decision. (An extension of up to six months is possible if good cause is shown.) As a result of this short schedule, the proceedings leading up to a hearing are streamlined. The judges assigned to an inter partes review take an active role in moving the case forward to its hearing. The filing of a motion requires prior authorization from the assigned PTAB panel, so teleconferences with the judges are made readily available during the proceeding.

Discovery is available but is strictly limited. Routine discovery includes taking depositions of the other side’s declarants and production of relevant information inconsistent with a position advanced during the inter partes review. Additional discovery requires approval from the judges and generally needs to be targeted at specific relevant information. Fishing expeditions will not be permitted by the PTAB.

The patent owner conducts discovery first, in preparation for filing its response within three months after institution of the inter partes review. The patent owner may also move to amend one or more of the claims being challenged. The PTAB’s strict limits on amendments may make approval of the motion to amend difficult. The assigned panel of judges may require a demonstration that the amended claims address the rejection of the pending claim as well as overcome prior art not relied on in the proceeding. It appears that the judges are unlikely to allow expanding the total number of claims under consideration in the proceeding.

The discovery period allotted to the petitioner will typically be less than three months following the patent owner’s response. The patent owner does not have the right to a sur-reply brief, but might choose to cross-examine petitioner’s reply declarant, if any, in a deposition. The patent owner then may move to file observations drawing attention to relevant testimony in the deposition. Motions to exclude testimony may also be filed in this period following the filing of the briefs.

An oral argument in the inter partes review is conducted before the three assigned administrative patent judges. Live testimony from a witness will be rare, limited to a circumstance in which the Board considers the demeanor of the witness critical to assessing credibility.

Conclusion – Inter partes review is a powerful tool for obtaining a rapid and thorough review of claims of a patent based on prior art, but its power can be deployed only through filings that implement well-planned strategic goals that reflect the nature of the proceeding and the situation of the parties vis-à-vis the patent in question.


Services Available

Group Presentations
  Conference, "New Media and the Marketplace of Ideas", Boston University, October 26, 2007
Discussion on patents in relationship to the design community, lead by Bruce Sunstein, Wentworth Institute of Technology, 550 Huntington Avenue, Boston, October 4, 2007
Boston Patent Law Association Seminar, "Rule Changes for Continued Examination and Claims Practice", Boston, September 25, 2007