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Monday Feb 25, 2013

Message from Michael Tierney, Lead Judge: Tips for Filing Petitions and Making Successful Arguments Before the Patent Trial and Appeal Board

As of September 16, 2012, three new proceedings became available before the Patent Trial and Appeal Board (Board) for challenging the patentability of an issued patent.  These proceedings are called an Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Patent Review (CBM).  Patents issuing from applications subject to the first-inventor-to-file AIA provisions (on or after March 16, 2013) may be challenged in an IPR, PGR, or CBM.  However, generally patents issuing from applications subject to the first-to-invent provisions may be challenged only in IPR or CBM.  This post seeks to clarify the formalities for filing a successful petition and explain how to make persuasive arguments in a petition. 

Comparison of IPR, PGR, and CBM Petitions

It is important to understand the parameters when filing a petition for an IPR, PGR, or CBM proceeding. 

 

IPR

PGR

CBM

When is a Petition Ripe?

Cannot be filed until after the later of:

  1. 9 months after the grant of a patent or issuance of a reissue of a patent; or
  2. i.          The date of termination of any post-grant review of the patent. 
On or prior to the date that is 9 months after the grant of a patent or issuance of a reissue patent.

Patents under First-to-Invent Provisions:

  • Upon issuance

 

Patents under First-Inventor-to-File Provisions:

  • 9 months after the issuance of a patent that is subject to the first inventor-to-file provisions.
Who Files a Petition? A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may petition. Only a person who is sued or charged with infringement of a covered business method patent may petition for a covered business method review of the patent.
Grounds for Filing Challenge to Patent? May request to cancel as unpatentable one or more claims of a patent on a ground that could be raised under 35 U.S.C. §§ 102 or 103 and only on the basis of prior art consisting of patents or printed publications May request to cancel as unpatentable one or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. § 282(b) relating to invalidity (i.e.,  §101, novelty, obviousness, written description, enablement, indefiniteness, but not best mode).

Patents under First-to-Invent Provisions:

  • Limited prior art shall apply

 

Patents under First-Inventor-to-File Provisions:

  • Any ground
Statutory & Regulatory Requirements?

Statutory:

  1. identify all real parties in interest;
  2. i.          identify all claims challenged & all grounds on which the challenge to each claim is based;
  3. ii.          provide copies of evidence relied upon; and
  4. v.          payment of required fee

Regulatory:

  1. identify the grounds for standing;
  2. i.          provide a claim construction for each challenged claim;
  3. ii.          specifically explain the grounds for unpatentability; and
  4. v.          specifically explain the relevance of evidence relied upon.
Can a Patent Owner File a Preliminary Response to a Petition?

Yes – within three months

 

Petition Page Limit?

60 double-spaced pages 
(single spacing for Claim Charts)

80 double-spaced pages
(single spacing for Claim Charts)

 

Page Limits for Petitions, Motions, Patent Owner Responses, and Oppositions

Page limits assist the Board in effectively and timely managing proceedings. The page limit for a petition is either sixty or eighty pages, depending on the type; the page limit for a motion is fifteen pages.  For both petitions and motions, the page limit does not include a table of contents, a table of authorities, a certificate of service, or appendix of exhibits. However, it does include any statement of material facts to be admitted or denied in support of the petition or motion. Patent owner responses have page limits that match the petition or motion they address, but the page limits do not include admissions of denials of a petitioner’s statement of material facts. If a party would like more pages, they must file a motion requesting waiver of the page limits.

Requests for Waiving Page Limits

Irrespective of the type of proceeding, parties involved in an IPR, PGR, or CBM proceeding must comply with the stated page limits; however, a filing party may accompany their submission with a motion to waive the page limits.  The party requesting a waiver must clearly demonstrate that waiving the page limits is in the “interests of justice,” which is a higher standard than merely showing “good cause.”  Each motion should identify how the particular case facts demonstrate a need to waive the page limit, and specifically how that need is in the interest of justice. 

This higher standard means that exceptions to the page limits will not be commonly granted for broad or generic reasons (e.g., additional pages being used on the primary target claims because the patent is being challenged on multiple grounds and thus it is in the interest of justice to respond or explain all grounds). Similar to all other legal writing, a quality submission (i.e., a petition, patent owner’s response, or patent owner’s preliminary response) should be concise, articulate, and supported by facts.  If the motion seeking to waive the page limits is denied, the proposed petition exceeding the page limit may be expunged or returned. 

Making Written Arguments Before the Patent Trial  and Appeal Board

A petitioner may challenge a patent on multiple grounds. However, the petitioner must expressly identify the differences between a challenged claim and the prior art, especially when making assertions of obviousness. Additionally, for obviousness, a petitioner should address the scope and content of the prior art, and the level of ordinary skill in the pertinent art. 

A petitioner may rely upon multiple prior art references in challenging a claim, provided each reference is specifically explained and applied to claim limitations for which a claim construction is to be provided by the petitioner.  Where a plurality of prior art references exist, it is essential for a petitioner to avoid redundancy when applying the prior art to the claims at issue. A petitioner avoids redundancy by explaining why one reference more closely satisfies the claim limitation at issue in some respects than another reference, and vice versa. Furthermore, a petition should specify whether the grounds of unpatentability differ due to alternative claim constructions or alternative findings of fact. Thus, a successful argument carefully applies prior art references by avoiding redundancy through complete explanations.  Additionally, where references are to be combined, a successful argument explicitly explains the reasons supporting the proposed combination.

For the Representative Order discussing redundancy grounds, please see CBM2012-00003, Order (Redundant Grounds), Paper 7, Oct. 25, 2012, available at http://www.uspto.gov/ip/boards/bpai/representative_order_cbm2012-00003_order_(redundant_grounds)_paper_7_(10-25-12).pdf

For an explanation of the grounds available for post-grant review challenges, please see Director David Kappos’ Public Blog, PTAB and Patentability Challenges (Sep. 24, 2012 04:44 PM), available at http://www.uspto.gov/blog/director/entry/ptab_and_patentability_challenges.

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