Much has occurred during the first year after the America Invents Act (AIA) established several new procedures for the public to challenge issued patents and a new administrative court to hear these cases. Here are some observations on the first year of this evolving practice.

1. Many More IPR Petitions Have Been Filed Than CBM Review Petitions.

Although Congress expected the Covered Business Method (CBM) review process would be widely used by irate businesses tired of dealing with so-called “business method” patents, only 67 CBM petitions were filed during the first year compared to nearly 500 petitions for Inter Partes Review (IPR). Many practitioners thought the more expansive grounds for challenge in CBM review (permitting challenges based on prior public uses and sales as well as prior art publications) would have piqued more interest, especially in tandem with recent Supreme Court decisions roundly criticizing non-technological patent claims. However, IPRs have been more widely invoked, probably reflecting the much larger number of non-business method patents being asserted in litigation.

2. The PTAB is Quite Willing to Initiate IPR Proceedings when a Petition is Filed

Over 86% of the IPR petitions filed in the first year have been granted –at least in part.
Continue Reading Lessons From The First Year Of Post Grant Proceedings In The U.S.

As we’ve previously discussed, the inter partes review (IPR) and post grant review (PGR) procedures in the USPTO allow for parties to take discovery.  Specifically, Rule 42.51 enumerates the permitted categories of discovery, including: (a) mandatory initial disclosures, (b) routine discovery and (c) additional discovery.  Of particular interest is a subcategory of routine discovery that requires a party to serve relevant information that is inconsistent with a position advanced by the party.

Rule 42.51(b)(1)(iii) requires that “[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced during the proceeding concurrent with the filing or documents or things that contains the inconsistency.  This requirement does not make discoverable anything otherwise protected by legally recognized privileged such as attorney-client or attorney work product.  This requirement extends to inventors, corporate officers and persons involved in the preparation or filing of the documents and things.”
Continue Reading What Is Inconsistent Information and When Must Such Information be Disclosed?

The new AIA post grant proceedings not only authorize depositions but also make provisions for deposing witnesses in a foreign language. Similar to rules that have governed foreign language depositions in PTO interference proceedings (37 C.F.R. 41.157(d)), the new AIA rules for inter partes review, post grant review and covered business method review (37 C.F.R. 42.53(d)) require that “[i]f an interpreter will be used during the deposition, the party calling the witness must initiate a conference with the Board at least five business days before the deposition.” Beyond that the rules provide little guidance as to how the foreign language deposition is conducted.

Recently, in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, a PTAB panel was asked to confirm that the further guidance that has evolved in interference practice should be followed. Specifically, Isis asked the PTAB to adopt the guidelines set forth in Interference No. 104,539, Paper 54. In an order issued August 7, 2013 (IPR2012-00022, Paper 55), Judge Green did just that and set out twelve specific guidelines:
Continue Reading PTAB Issues Guidelines on Foreign Language Testimony

Although an “expert opinion” in the form of a declaration is not a mandatory part of a petition for patent review under the new AIA proceedings (i.e., inter partes review, CBM review or post-grant review), opinions of experts form an important part of the challenger’s case in many of the petitions filed to date.

There are many good reasons to make an expert “declarant” part of your team.  Since the principal issue in most review proceedings will be an inquiry into level of knowledge of a “person having ordinary skill in the art,” an expert can set the table by helping define the relevant art and level of knowledge expected by such a hypothetical skilled artisan.  Additionally, claim construction (the proper meaning of each limitation of the challenged claims) will typically be another important issue –and one where an expert can again bolster a petitioner’s case.
Continue Reading Using Experts in AIA Inter Partes Review Proceedings – Part 1