Q: What are the acronyms PGR, IPR and CBM?
A: These acronyms all refer to post-grant proceedings at the USPTO’s Patent Trial and Appeal Board (PTAB), seeking to invalidate some or all of the claims of a patent on specified grounds. The acronyms are as follows:
PGR – Post-Grant Review
IPR – Inter Partes Review
CBM – Transitional Program for Covered Business Method Patents. CBM proceedings are termed “transitional” because the implementing AIA statute includes a sunset provision of September 15, 2020, after which the CBM proceeding is not available.
Q: May a company file a Petition for Inter Partes Review after it has filed a declaratory judgment action in a district court challenging the validity of the patent?
A: The official website of the PTAB is found at http://www.uspto.gov/ip/boards/bpai/index.jsp. Information at this site includes all applicable statutes, rules, guidelines and representative decisions.
It is important to note that the PTAB handles other proceedings, most notably ex parte appeals from pre-grant patent prosecution. Accordingly, the PTAB’s website includes information on these other functions as well, and care must be exercised in determining which aspects of the site are directed to post-grant proceedings and which are not.
Q: Where can I find official information on a particular proceeding?
A: All papers filed in all proceedings are public records and are fully available to the public, except in certain circumstances such as papers filed under seal. As a result, any member of the public can access these papers.
The name of the site is the Patent Review Processing System (PRPS), and can be accessed at the following URL: https://ptabtrials.uspto.gov.
The cases indexed at this site can be accessed by searching on patent number or proceeding number; it is not yet possible to search by party name or other information.
Q: What patents are eligible for review?
A: The eligibility requirements for the patents are: PGR – only patents issued under the first-inventor-to-file (FITF) provisions of AIA, which became effective March 13, 2013. IPR – all patents, issued under pre-AIA first-to-invent or FITF. CBM – any patent that includes a claim to a covered business method, which in general is defined as a patent that claims a method or corresponding apparatus for performing data processing or other operations in connection with a financial product or service.
Q: What parties are eligible to petition for review?
A: The eligibility requirements for the parties are: PGR – any person who is not the owner of the patent, unless the Petitioner or a real party in interest has instituted a civil suit seeking invalidity of the patent (counterclaims are excluded), or unless the Petitioner, the real party in interest or a privy of the Petitioner is estopped. IPR – any person unless the Petitioner or a real party in interest has filed a civil action challenging validity of the patent (counterclaims are excluded), or unless the Petitioner, the Petitioner’s real party in interest or a privy was served more than one year ago with a complaint for infringement, or unless the Petitioner, the Petitioner’s real party in interest or a privy is estopped.
IPR – any person unless (i) the Petitioner or a real party in interest has filed a civil action challenging validity of the patent (counterclaims are excluded), (ii) the Petitioner, the Petitioner’s real party in interest or a privy was served more than one year ago with a complaint for infringement, or (iii) the Petitioner, the Petitioner’s real party in interest or a privy is estopped.
CBM – any person that has been sued with infringement or charged with infringement. In such circumstances, the petition may be filed by the party sued or charged with infringement, or on behalf of a real party in interest or a privy, unless estopped.
Q: What are the timing requirements for filing a petition for review?
A: In general, timing of the petition is as follows:
PGR – a petition to institute a PGR proceeding must be filed within nine months of the issue date of the patent.
IPR – a petition to institute an IPR proceeding depends on whether the patent is pre-AIA first-to-invent or post-AIA first-inventor-to-file. For post-AIA patents, a petition to institute an IPR proceeding may not be filed within nine months from the issue date of the patent, corresponding to the above period for instituting PGR proceedings. In addition, if a PGR proceeding has been instituted, then a petition for IPR must wait until the date of termination of the PGR proceeding. For pre-AIA patents, a petition to institute IPR proceedings is not limited to these timings, for the reason that PGR proceedings are not available in pre-AIA patents. Thus, for pre-AIA patents, a petition to institute IPR proceedings may be filed at any time.
CBM – a petition to institute a CBM proceeding may be filed at any time.
CBM – at any time except during the period of a PGR proceeding.
FILING OF THE PETITION
Q: What is the required content of the petition?
A: The petition must contain a well-reasoned explanation as to why the challenged claims of the patent are invalid, under the circumstances permitted by the type of proceedings being sought (i.e., based on whether the petition is for review under PGR, IPR or CBM).
In addition, there are mandatory notices which require each petition to state the real party-in-interest, related matters, lead and back-up counsel, and service information.
Finally, there are procedural and jurisdictional requirements such that each petition must set forth the grounds for standing, in the sense that the patent is available for the type of proceeding sought and that the petitioner is not barred or estopped from seeking review, and a concise statement identifying the nature of the challenge against each claim.
Q: Are there any limitations on the petition, such as page limits, fonts and so forth?
A: All petitions must adhere to page limitations, as follows:
PGR – 80 pages
IPR – 60 pages
CBM – 60 pages
In addition, the petition must be filed on 8½×11 inch paper using 14 point or larger font, one (1) inch margins on all sides, and double spacing. Double spacing is not required in claim charts, headings, tables of contents, tables of authorities, indices, signature blocks, and certificates of service. Block quotations may use 1.5 spacing, but must be indented from both the left and the right margins.
Q: Do page limits apply to attachments and declarations of experts?
A: No. Page limits apply only to the petition itself. Exhibits, including declarations, are not subject to page limits.
Q: On what grounds may petitions be filed?
A: Each proceeding (i.e., PGR, IPR and CBM) has different and somewhat overlapping grounds of invalidity for which review may be sought.
PGR – any ground of invalidity under 35 U.S.C. §§ 101, 102, 103 and 112, which includes grounds of invalidity based on prior art (novelty and/or obviousness), lack of enablement or written description, lack of utility or ineligible subject matter, claim and definiteness, prior public use, prior sales or office for sale, and so forth. Note that under AIA, best mode is not available as a ground for invalidity.
IPR – only grounds of invalidity based on patents or printed publications under 35 U.S.C. § 102 and/or § 103. Common printed prior art includes US and foreign patents and published patent applications, but printed prior art can be any publicly available publication such as scientific articles, written records of conference proceedings, magazines, newspapers, and so forth.
CBM – any ground of invalidity under 35 U.S.C. §§ 101, 102, 103 and 112, which includes grounds of invalidity based on prior art (novelty and/or obviousness), lack of enablement or written description, lack of utility or ineligible subject matter, claim indefiniteness, prior public use, prior sales or offers for sale, and so forth.
Q: What is the cost of filing the petition?
A: The full cost of these proceedings will include fees of attorneys and experts that are engaged during the course of the proceedings, as well as USPTO fees.
USPTO fees for the proceedings are adjusted periodically. The current schedule of fees may be found at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp. As of the time of this writing, the fees are as follows:
PGR – a filing fee of $12,000 which includes a challenge to validity of up to 20 claims, with an additional fee of $250 for each additional claim. If the petition is granted, there is a post-institution fee of $18,000 for challenging up to 15 claims, with an additional fee of $550 for each additional claim. The post-institution fee is paid at the time of filing, and is refunded as appropriate if proceedings are not instituted or are not instituted on all grounds.
IPR – a filing fee of $9,000 which includes a challenge to validity of up to 20 claims, with an additional fee of $200 for each claim. If the petition is granted, there is a post-institution fee of $14,000 for challenging up to 15 claims, with an additional fee of $400 for each additional claim. Again, the post-institution fee is paid at the time of filing, and is refunded as appropriate if proceedings are not instituted or are not instituted on all grounds.
CBM – same as PGR: a filing fee of $12,000 which includes a challenge to validity of up to 20 claims, with an additional fee of $250 for each additional claim. If the petition is granted, there is a post-institution fee of $18,000 for challenging up to 15 claims, with an additional fee of $550 for each additional claim. The post-institution fee is paid at the time of filing, and is refunded as appropriate as described above.
AFTER FILING OF THE PETITION BUT BEFORE INSTITUTION
Q: What happens after the petition is filed?
A: In all proceedings, after filing of the petition, the PTAB reviews the petition for compliance with all applicable rules. If the petition complies, then the PTAB issues a Notice of Filing Date Accorded to Petition.
Q: I understand that the PTAB issues a Notice of Filing Date after a complaint petition is filed. But what happens after that?
A: The Patent Owner may decide to file a Preliminary Response. The due date for the Preliminary Response is three months from the date of the Notice of Filing Date Accorded to Petition.
Q: Is the Patent Owner required to file a Preliminary Response?
A: No, filing of a Preliminary Response by the Patent Owner is optional. Many Patent Owners elect to file a Preliminary Response, reasoning that it is the Patent Owner’s only opportunity to convince the PTAB not to institute proceedings. A Preliminary Response is particularly helpful to raise technical grounds for non-institution, such as jurisdictional grounds (if, for example, the Petitioner was served with a complaint more than one year before the petition was filed) or grounds that art asserted in the petition is not actually prior art.
Q: What is permissible content for the Patent Owner’s Preliminary Response?
A: The Patent Owner’s Preliminary Response is limited to an explanation as to why a proceeding should not be instituted. Although the Preliminary Response may include evidence, it may not include new testimonial evidence unless authorized by the PTAB.
Q: If the Patent Owner files a Preliminary Response, is the Petitioner permitted to file a Reply?
A: No, replies are not authorized by the rules or the statute.
Q: What standard does the PTAB apply in deciding whether or not to institute a proceeding?
A: The petition, when balanced against any Preliminary Response filed by the Patent Owner, must satisfy a threshold which is somewhat similar for all three proceedings, and which is higher than the threshold still being applied in ex parte reexamination (i.e., higher than a “substantial new question of patentability”). The exact thresholds are as follows:
PGR – the petition must demonstrate that it is more likely than not that at least one of the challenged claims in the petition is unpatentable.
IPR – the petition must demonstrate that there is a reasonable likelihood that at least one of the challenged claims in the petition is unpatentable.
CBM – the petition must demonstrate that it is more likely than not that at least one of the challenged claims in the petition is unpatentable.
Q: How are proceedings instituted?
A: The PTAB will institute a proceeding, or decide against institution, in a written Decision on Petition. The Decision on Petition must be rendered no more than three months after (i) the Patent Owner filed its Preliminary Response, (ii) the Patent Owner expressly waives the Preliminary Response, or (iii) expiration of the period for filing a Preliminary Response.
The Decision on Petition provides an explanation of the PTAB’s reasoning as to why proceedings should or should not be instituted, and (if instituted) whether proceedings are instituted against all claims in the petition or only some of them.
Q: What happens if the PTAB decides against institution of a proceeding?
A: Pursuant to statute, decisions not to institute a proceeding are not appealable. A Petitioner may, however, seek reconsideration on the grounds that the PTAB has misapprehended an issue of law or fact. The Petitioner is not permitted to raise new arguments in its request.
Q: What happens after institution?
A: After institution, the parties engage in a period of discovery and file a number of papers including a Patent Owner response, the Petitioner’s reply thereto, a Patent Owner Motion to Amend Claims (if desired), the Petitioner’s opposition thereto, and papers containing observations and/or supplemental information. In addition, the parties may seek to file motions not otherwise provided for in the schedule, but for all such motions, prior authorization must be obtained from the PTAB before the motion is filed. A telephone conference is usually held for this purpose.
Q: What is the timing of the proceeding after institution?
A: The PTAB’s Patent Trial Practice Guide (77 FR 48756, August 14, 2012) (see this site in the Reference Materials section or the PTAB’s site at http://www.uspto.gov/aia_implementation/trial_practice_guide_48756.pdf) provides the following diagram which illustrates the typical timing of a post-grant proceeding:
Click here to view image.
In addition, after institution, the PTAB will issue a scheduling order which includes due dates for taking particular actions. A typical scheduling order will include the following items and due dates for these items:
Click here to view image.
Q: What is the total pendency after institution?
A: For all proceedings, the statute limits pendency to one year from institution, with the possibility of an extension for “good cause” to a total of eighteen months.
Q: Is discovery available?
A: The PTAB has repeatedly cautioned that its post-grant proceedings are not the equivalent of a civil trial, and that the parties should therefore not expect the level of discovery available in federal district courts.
Nevertheless, some discovery is available, in the form of either (a) routine discovery or (b) additional discovery.
Routine Discovery: Each party is obligated to provide routine discovery without request from the other. Routine discovery includes production of any exhibit, whether cited in paper or testimony or cross examination of any declarants, and also requires production of relevant information that is inconsistent with a position advanced during the proceeding. Each party must also make its declarant available for cross-examination. Prior authorization from the PTAB is not required to obtain routine discovery.
Additional Discovery: For additional discovery, a party must seek prior authorization from the PTAB even to file a motion seeking such discovery. Some of these motions seek discovery on the real party of interest, and on suitable showings, the PTAB has been receptive to such motions. Other motions often seek discovery on the issues of commercial success, long-felt need and other secondary considerations.
Overall, standards applied by the PTAB in deciding motions for additional discovery are high, and additional discovery is granted sparingly. A successful motion will identify information sought with specificity and be tailored to a genuine need.
Q: Is there a mechanism to prevent disclosure of confidential information filed during the proceeding?
A: Generally speaking, all papers filed during a post grant proceeding are available to any member of the public at the PTAB’s website under its Patent Review Processing System (PRPS). See: https://ptabtrials.uspto.gov.
However, a party is permitted to file a motion to seal upon good cause shown. In addition, if it is likely that sensitive information might form part of the proceeding, the PTAB encourages the parties to enter into a protective order. The PTAB provides a default protective order which it encourages the parties to use. The default protective order is found in Appendix B of the PTAB’s Patent Trial Practice Guide. Visit our Reference Materials page for more information or the PTAB’s site athttp://www.uspto.gov/aia_implementation/trial_practice_guide_48756.pdf.
Q: Is there an opportunity for settlement, or do proceedings continue automatically through to a final written decision?
A: Settlement is encouraged, and the PTAB has stated that it is available to facilitate settlement discussions. It may, where appropriate, require a settlement discussion as part of the proceedings. If a settlement is reached, the parties may submit the settlement and a motion to terminate the proceedings at any time prior to entry of a final written decision. The PTAB will typically terminate the proceedings after such a filing, but termination is discretionary and the PTAB might decide to continue the proceedings despite settlement. There are examples of cases in which the settlement was filed so late in the proceeding that the PTAB had already drafted its written decision, and therefore decided to issue its written decision despite settlement.
POST PROCEEDING AND THE PERIOD AFTER ISSUANCE OF THE PTAB’S FINAL WRITTEN DECISION
Q: What is the content of the PTAB’s final Written Decision?
A: The PTAB’s final Written Decision is a detailed explanation of why the PTAB concludes that one or more of the claims are or are not unpatentable on the grounds for which the proceeding was instituted.
Q: Is the final Written Decision appealable?
A: Yes, the decision of the PTAB can be appealed to the Federal Circuit. It is common, however, to first ask the PTAB to reconsider its decision before filing an appeal. Prior approval from the PTAB is required before filing a motion for reconsideration.
Q: What are the effects of estoppel on a losing Petitioner in each of the different PGR, IPR and CBM proceedings?
A: By statute, each of the three different proceedings carries some sort of estoppel which may prevent a petitioning party, real-party-in-interest, or privies (hereinafter, “Petitioner”) from re-asserting a losing position in other proceedings. Any such estoppel is generally claim-specific, i.e., there is estoppel only with respect to claims for which a final decision was reached.
Estoppel attaches to a losing Petitioner immediately upon the final Written Decision, as follows:
PGR – the general standard is “raised or reasonably could have raised”. The Petitioner is estopped from requesting or maintaining a proceeding before the USPTO with respect to a decided-upon claim on any ground that the Petitioner raised or reasonably could have raised during the IPR. In addition, the Petitioner is estopped from asserting in either a civil action or in the ITC that a decided-upon claim is invalid on any ground that the Petitioner raised or reasonably could have raised during the PGR.
IPR – the general standard is identical to that of PGR, namely, “raised or reasonably could have been raised”. Thus, the Petitioner is estopped from requesting or maintaining a proceeding before the USPTO with respect to a decided-upon claim on any ground that the Petitioner raised or reasonably could have raised during the IPR. In addition, the Petitioner is estopped from asserting in either a civil action or in the ITC that a decided-upon claim is invalid on any ground that the petitioner raised or reasonably could have raised during the IPR.
CBM – the general standard for later civil actions or ITC proceedings is “raised”, which differs significantly from the standard in PGR and IPR. Thus, a Petitioner is estopped from asserting in either a civil action or an ITC action that a claim is invalid on any ground that the petitioner actually raised during CBM. For proceedings before the USPTO, the standard is the same as that in PGR proceedings.
Q: Are there any estoppel effects on a losing Patent Owner?
A: Although there is not a statutory basis for estoppel, the USPTO has decided that a Patent Owner is also constrained by estoppel if a claim is invalidated during post-grant proceedings.
According to this USPTO-implemented estoppel, the Patent Owner is prevented from obtaining a claim in another USPTO proceeding that is not patentably distinct from the subject matter of a claim invalidated during a post-grant proceeding.
Q: Does estoppel apply if a post grant proceeding is settled?
A: In general, if a post-grant proceeding is terminated prior to entry of a Written Decision by the PTAB, such as by settlement, then estoppel does not attach.