By Jason Rantanen
Liveblogging the America Invents Act: One Year Later conference at the Indiana University Mauer School of Law. Warning and disclaimer: Quality may vary and these don't necessary reflect my opinions.
Panel 2: Administrative Trials
Michael Tierney (Lead judge of BPAI) - New Patent Trial and Appeal Board eFile system will go live at 12:01 am on Sunday, September 16. They will also have folks available to answer calls starting on Sunday.
AIA trial proceedings will be a hybrid examination/trial-like process. Relatively straightforward, step-by-step proceedings. Trials will be completed within one year.
Who can practice: also a hybrid. Lead counsel must be a practitioner registered with the PTO, but the board may recognize pro had vice counsel during a proceeding upon a showing of good cause. A pro hac counsel is subject to the Office's Code of Professional Responsibility. Requests should explain why there's good cause.
Proceedings are streamlined so as to make it possible to complete proceeding in one-year. In addition, page limits have been imposed on the petition and arguments, but not the evidence. Claim charts can be included as single-spaced.
Threshold standards for initiation:
IPR: "reasonably likelihood" that petitioner would prevail as to at least one claim challenged. This means >50% chance.
PGR/CBM: petition must demonstrate that it is "more likely than not" that at least one of the claims challenged is unpatentable. This just means that it has to be a "close call" that one of the claims is unpatentable. This does not mean that all non-frivolous arguments will result in a PGR/CBM proceeding.
Inter partes review: discovery- allow parties to agree to discovery between themselves. Also, mandatory initial disclosures, routine discovery, and additional discovery. In general, discovery will function ilke infringement proceedings - i.e.: parties exchange among themselves, then choose what to provide to the board.
Recommends starting with the practice guide if you want to understand the rules.
Jay Kesan (University of Illinois) - Examined post-grant review in Japan and compared to US.
JPO has invalidation trial. JPO does not have a threshold standard; grounds are very broad. Anytimeime during the life of the patent. No estoppel under JPO proceeding. Third parties that are not involved in the challenge can file another challenge on the same facts and evidence. Scope in terms of the number of claims is not all that different. Parties can file anonymously. Takes about 8.7 months. Patent can be amended after the trial decision before the appeal - lots of opportunities to tweak the patent. Just about anyone can request.
Costs: Rough estimate is about $200,000 for US proceedings. In Japan, about $25k to $125k.
In Japan, about 7-10 times higher to litigate the case in district court. Roughly about 2% of all patents are being challenged (300 out of 150,000 issued patents) are opposed using JPO invalidation.
Data over a decade shows that the litigation court decisions tend to be arrived at before the JPO decision. In a large number of cases, there's an agreement the patent is invalid. There is some disagreement in cases, however - about 20% of the time the JPO and district court reach opposite conclusions. This is consistent with the rate of affirmence of the JPO by the high court (around 80%).
Joshua Larsen (Barnes & Thornburg) - what parts of the new procedures will be most challenging for the judges to deal with?
Michael - not a whole lot of judges who had experience with inter partes, but they just hired a large number of people with significant litigation experience as judges.
Jay K - 60-80 pages is still a lot of stuff to go through. If 2% of all the issued patents are subject to this process, thats a lot of workload.
Michael - there's still going to be ex parte reexamination. There's also going to be full blown proceedings. He wouldn't expect all 2% to go the reviews.
Josh - how is claim construction going to be handled?
Michael - no Markman, but there's a requirement that the petitioner must explain what the claim means up front. Tell us up front what you, as the petitioner, think the claim means and how the prior art meets the claims.
Jay K - thinks this approach is just fine.
Jay Thomas - Is there a good balance between the litigation and the IPR process? How are the parties going to figure out what patents will be challenged through post grant review?
Michael - when he looks at the statistics, most inter partes reexaminations had ongoing litigation. Often there are stays in these cases. His expectation as they go forward is that they will follow the 1-year timeframe. If this is the case, the district court judge will know that the PTO is committed to having a decision within that one-year framework.
Jay K - If things were really ideal, if invalidity can be done relatively cheaply in the post grant proceedings, then this might save the parties some money in infringement litigation. On the nine-month window, this is something that parties are going to need to figure out, maybe using proxies.
Josh - what is the possibility of serial filings on the same evidence?
Michael - I'm going to refer to 325(d). The office may consider previous determinations in deciding whether to go forward. If all the party is doing is submitting the same evidence again and again, the likelihood of going forward in low.
Jay K - when he talked to practitioners in Japan, they said that this type of behavior was a waste of time.