Nearly five years have passed since enactment of the America Invents Act (“AIA”), which was arguably the most significant intellectual property legislation since the Copyright Act of 1976. Many provisions of the AIA have had a significant effect on the patent system, while others, somewhat surprisingly, have been mostly forgotten. Provisions of the AIA That Have Had a Significant Effect on Patent Law Post-Grant Review Proceedings The creation of post-grant review proceedings, including, among others, inter partes reviews (“IPRs”), has fundamentally shifted patent litigation strategy. The U.S. Patent and Trademark Office (“USPTO”) originally anticipated about 460 IPR petitions per year. However, early IPR results heavily favored petitioners, and quickly led to a wave of filings far exceeding initial expectations. Filing rates now total around 150 petitions per month, nearly four times the number originally anticipated. Representative IPR filing statistics and results are shown below:1 1 Statistics and graphs courtesy of Docket Alarm, Inc. Intellectual Property Newsletter 2 Anecdotally, IPR petitioner success rates, and the possibility of multiple challenges by different accused infringers (or third parties, such as defensive trade associations), have deterred at least some amount of litigation, and reduced settlement figures in others. First-to-File System The AIA moved the U.S. from a first-to-invent to a first-inventor-to-file system. Implementation of these changes, however, was delayed until March 16, 2013, meaning that the initial wave of “first-to-file” applications has only recently begun to issue. The effects of these changes, and related changes to the scope of available “prior art,” are still unfolding. Best Mode The AIA also eliminated the Best Mode requirement of 35 U.S.C. § 112 as a litigation defense. Specifically, the AIA amended 35 U.S.C. § 282, effective upon enactment, to state that “failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.” This amendment favored patentees, eliminating this invalidity risk and the associated discovery burden. False Marking The AIA eliminated the qui tam provision of the false marking statute, and thereby cut off a wave of lawsuits brought by plaintiffs that had suffered no actual injury of their own. In Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009), the Federal Circuit held that penalties for false marking should be on a per article basis rather than a per decision basis, leading to a wave of lawsuits by plaintiffs looking to make a quick profit. In 2010 alone, more than 630 false marking suits were filed. The AIA changed this rule, and limited non-U.S. government false marking lawsuits to persons suffering competitive injuries. Recovery was also limited to damages adequate to compensate for that injury. Intellectual Property Newsletter 3 Joinder under Section 299 The AIA added 35 U.S.C. § 299, which eliminated the common practice of plaintiffs joining in a single lawsuit multiple unrelated parties accused of infringing the same patents. Section 299 provides that accused infringers could be joined in one action, or consolidated for trial, only if: (1) any right to relief arises “out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process;” and (2) “questions of fact common to all defendants or counterclaim defendants will arise in the action.” Following enactment of this provision, plaintiffs were forced to file different lawsuits against different defendant groups, even when accused of infringing the same patent in similar ways. As a practical matter, courts routinely consolidate for discovery contemporaneously-filed lawsuits involving the same patent(s), but this provision still gives defendants a distinct advantage (vis-a-vis pre-AIA practice) since they are guaranteed separate trials. This provision allows multiple opportunities to invalidate the same patent based on the same prior art. The same advantage holds true for cases transferred and consolidated by the Judicial Panel on Multidistrict Litigation, which saw modestly more patent cases following the enactment of the AIA.2 Largely Forgotten AIA Provisions While many AIA provisions have fundamentally changed patent practice, other significant amendments have been largely forgotten by practitioners. Citations of Prior Art and Written Statements The AIA amended 35 U.S.C. § 301 to expand the scope of material that “any person” can submit to the USPTO and make part of the official file history. Prior to the AIA, Section 301 only permitted citation of prior art materials; the amended section now allows citation of “statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.” There is no fee associated with the submission and it can be kept anonymous. All that is required is an explanation of the pertinence of the statements or prior art. Section 301(d) indicates that written statements will only be considered in an “ordered or instituted” ex parte reexamination, inter partes review, or post-grant review. The USPTO has interpreted this to mean that the statements cannot be considered at the initial request or petition phase.3 To the authors’ knowledge, this amended section has rarely been used. Nevertheless, there could be reasons why interested parties should reconsider its usefulness. For example, it is free, can be kept anonymous, and does not come with any associated estoppel risk. Moreover, it may put the burden on the patent owner to seek reexamination or reissue before bringing a lawsuit; assertion of patent claims that are objectively invalid could result in fee-shifting under 35 U.S.C. § 285 and the Supreme Court’s decision in Octane Fitness. 4 Moreover, submission of prior art and written statements could give another (better-funded) third party ammunition to file an IPR or ex parte reexamination challenge. 2 Dongbiao Shen, Misjoinder or Mishap? The Consequences of the AIA Joinder Provision, 29 BERKELEY TECH. L.J. 545, 567–68 (2014). 3 See, e.g., 37 C.F.R. § 1.552. 4 Octane Fitness, LLC v. Icon Health & Fitness, Inc., — U.S. —, 134 S.Ct. 1749 (2014). Intellectual Property Newsletter 4 Pre-Issuance Submission by Third Parties 35 U.S.C. § 122 was amended to add subsection (e), which expands the scope of pre-issuance submissions by third parties. Prior to the AIA, third parties could submit any patents, printed publications or patent applications, but did not have a mechanism for explaining their relevance. The AIA changed this (in addition to some of the timeliness requirements) to require submission of a concise statement about the relevance of the submitted materials. The USPTO implemented this provision in 37 C.F.R. § 1.290, and eliminated 37 C.F.R. § 1.99, which related to pre-AIA third-party submissions. Pre-issuance submissions are not to be confused with Citations of Prior Art and Written Statements under Section 301. The former must be made prior to issuance and before the later of: (i) 6 months post-publication, and (ii) the date of first claim rejection. Moreover, unlike citations under Section 301, pre-issuance submissions are not limited to “prior art.” For instance, an applicant might submit printed dictionary definitions, or other non-prior art printed publications that bear on issues such as indefiniteness, or even inequitable conduct. As with citations under Section 301, a pre-issuance submission under Section 122 could yield strategic advantages. In addition to those noted above, it could slow down issuance of an application, which, in some instances, could give a thirdparty challenger a strategic business advantage, particularly for patent applications that have a long priority chain and would have little life after issuance. It might also be used to make an applicant back up its claimed priority date, something typically not done unless necessary to overcome an intervening reference cited by the examiner. This procedure had been used to submit 9,878 documents as of November 6, 2015. Defense to Infringement Based on Prior Commercial Use (Section 5) Section 5 of the AIA amended the prior commercial use defense of 35 U.S.C. § 273. Prior to the amendment, Section 273 provided a personal defense to infringement for commercial use of a “method” more than one year before the priority date (or earlier date of publication under post-AIA Section 102(b)) of the asserted patent. However, for purposes of this section, “method” was defined as a “method of doing or conducting business,” limiting the scope of its usefulness to accused infringers. Moreover, an unreasonable assertion of this defense required a finding that the case was “exceptional” for purposes of awarding attorneys’ fees under Section 285. The AIA significantly broadened the scope of this defense— making it applicable to any “process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process” that would otherwise infringe a valid patent. The section is effective with respect to any patent issued on or after the date of enactment of the AIA, and provides protection for any “internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use.” Nonetheless, the amended section has rarely been used, perhaps because Congress left in place the “exceptional case” language for any unreasonable assertions of the defense. Supplemental Examination The AIA added a procedure, as 35 U.S.C. § 257, for “Supplemental Examination,” which is requested by the patent owner that the USPTO “consider, reconsider, or correct information believed to be relevant to the patent.” The Director must determine and conclude within three months whether the request raises a substantial new question of patentability (“SNQ”). If so, then the Director shall order ex parte reexamination of the patent. Supplemental examination allows a patent owner to ask the USPTO to consider, for example, evidence that an accused infringer has submitted during litigation. Unlike an ex parte reexamination request, supplemental examination requests are not limited to just prior art patents and printed Intellectual Property Newsletter 5 publications; a patent owner may submit arguments or evidence relating to Section 101 or 112 challenges. Moreover, a patent owner can actually argue against an SNQ finding in a supplemental examination. A supplemental examination request can also provide protection to patent owners against inequitable conduct charges. Section 257 states, “A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent.” This protection does have limits, however. No protection is provided if the inequitable conduct allegation was pled with particularity in a civil action before the date of the supplemental examination request. It also does not provide protection unless the supplemental examination, as well as any related ex parte examination, was completed before the date that the complaint was filed.