The New Toolbox: Strategic Use of Tools Created by Patent Reform to Protect Your Innovative Products

Transcription

1 PRESENTATION TITLE The New Toolbox: Strategic Use of Tools Created by Patent Reform to Protect Your Innovative Products Annie Rogaski April 10,

2 Old, Comfortable v. New, Unknown 2

3 Agenda Overview of the old and new tools New tools Timing Strategic considerations Costs Case studies exploring effectiveness of the new tools 3

4 Pre-9/16/12 PTO Tools Ex Parte Reexamination > Patents/printed publications > Substantial new question > No discovery, no oral hearing > No estoppel > No settlement effect Inter Partes Reexamination > Patents/printed publications > Reasonable likelihood of prevailing > No discovery, no oral hearing > Estoppel (PTO and D/C) > No settlement effect >Patent owner may request

5 Post-9/16/12 PTO Tools

6 Agenda Overview of the old and new tools New tools Timing Strategic considerations Costs Case studies exploring effectiveness of the new tools 6

7 Timing 7

8 PGR Patent app. filed after 3/16/13 Patent issues (likely 2015 or later) Challenger s prior DJ lawsuit forfeits review entirely Raised or reasonably could have raised Estoppel Patent expires 9 mos. 2 years Request for PGR filed PGR completed Invalidity based on: Patents Printed publications Prior use/sale Insufficient disclosure Etc. 8

9 IPR: Scenario A (no PGR, no lawsuit) Patent issues Challenger s prior DJ lawsuit forfeits review entirely Raised or reasonably could have raised Estoppel Patent expires 9 mos. No PGR filed IPR Filed Invalidity based on: Patents 2 years Printed publications Double patenting IPR Completed 9

10 IPR: Scenario B (lawsuit) Patent issues Raised or reasonably could have raised Estoppel Patent expires No PGR filed, > 9 mos. elapsed 1 year 2 years Patentee lawsuit IPR must be filed within 1 year Invalidity based on: Patents Printed publications Double patenting IPR Completed 10

11 USPTO Proposed Timeline for Conducting PGR and IPR Petition Filed PO Preliminary Response Decision on Petition PO Response & Motion to Amend Claims Petitioner Reply to PO Response & Opposition to Amendment PO Reply to Opposition to Amendment Oral Hearing Final Written Decision 2 months 3 months 4 months 2 months 1 month Hearing Set on Request PO Discovery Period Petitioner Discovery Period PO Discovery Period Period for Observations & Motions to Exclude Evidence No more than 12 months Proposed Trial Practice Guide: Federal Register 77(27):6868, 09-Feb-2012

12 Strategic Considerations 12

13 Proactive Maximizing Options Patent monitoring (competitors) Freedom to operate analyses Opportunistic Notice letter from patentee Stalled pre-litigation negotiations Prior art search reveals new invalidating art Litigation filed 13

14 Benefits Common To All Tools Cancellation of claims - - Avoid infringement - Freedom to operate Amendment of claims - Intervening rights Patentee admissions Prosecution history estoppel Create intrinsic evidence 14

15 Strategic Pros And Cons Ex Parte Reexam Pros Faster/less expensive than litigation No estoppel Anonymity Multiple reexams Lower burden of proof Technically sophisticated Cons Only patents/printed publications No involvement after request Price increase 15

16 Strategic Pros And Cons Inter Partes Review Pros Less expensive than litigation Discovery, oral hearing Some invalidity grounds remain for litigation Lower burden of proof Technically sophisticated Cons Only patents/printed publications Estoppel on patents and printed publications that could have been raised Litigation costs, and limited invalidity positions, if unsuccessful 16

17 Strategic Pros And Cons Post Grant Review Pros Less expensive than litigation Discovery, oral hearing Lower burden of proof Technically sophisticated Broad invalidity bases Cons Estoppel on all invalidity grounds that could have been raised Effectively prevents IPR and ex parte reexam Litigation costs, and no invalidity positions, if unsuccessful 17

18 Strategic Timing: Inter Partes Reexam v. IPR Inter Partes Reexam (pre-9/16/12) Standard: reasonable likelihood of prevailing If not converted to IPR procedure, longer time to decision, estoppel Can file even if already in DJ litigation or litigation > 1 year IPR (post-9/16/12) Standard: reasonable likelihood of prevailing (but effectively may be higher to ease burden on PTAB) Faster time to decision, estoppel Cannot file if DJ litigation before IPR; cannot file if in litigation > 1 year Long delay often a factor in denying stay motions Unknown impact of shorter time to decision more inclined to stay? Greater ability of PO to amend More restricted amendments 18

19 Strategic Timeline 9/16/ File inter partes reexams if want to participate in process File ex parte reexams to avoid estoppel File IPRs on patents and printed pubs. (not if in DJ litigation or litigation > 1 year) File ex parte reexams to avoid estoppel Consider PGR for patents filed after 3/16/13 (only within 9 mos. of issuance) File IPRs on patents and printed pubs. (after 9 mos. PGR waiting period; not if in DJ litigation or litigation > 1 year) File ex parte reexams to avoid estoppel 19

20 Estimated Costs 20

21 Estimated Fees/Costs (Single Patent) Tool PTO Petition Fees (base) Cost to Prepare Petition Total Process Ex Parte $17,760 $25,000 ~$50-75K IPR $27,200 $46,000 ~$ K PGR $47,100 $61,333 ~$ K Litigation $

22 Agenda Overview of the old and new tools New tools Timing Strategic considerations Costs Case studies exploring effectiveness of the new tools 22

23 Case Study #1: PGR ( All In ) Win PGR: freedom to operate, litigation over Raised /reasonably could have raised Estoppel FTO analysis identifies patent X, issued 3 months ago, and multiple invalidity arguments PGR (all invalidity bases) File DJ action (stayed) Lose PGR: litigation resumes Effectively infringement only Best circumstances for use: Strong, but complex invalidity positions Strong prior use/sale, 101, 112 arguments Strong 103, no 102, arguments Decent non-infringement position 23

24 Case Study #2: IPR ( The Hedge ) Win IPR: freedom to operate, litigation over Raised /reasonably could have raised Estoppel FTO analysis identifies patent X, issued 12 months ago, strong printed art and prior use/sale IPR (patents /printed pubs.) File DJ action (stayed) Lose IPR: litigation resumes Infringement and prior use/sale invalidity defenses Best circumstances for use: PGR not available Complex invalidity positions Prior art positions, both printed and not printed Strong 103, no 102, arguments Weak non-infringement position 24

25 Case Study #3: IPR ( The Choice ) Pre- 9/16/12, receive invitation to license IP reexam (patents /printed pubs.) 3-6 year proceeding through appeal (potential litigation stay throughout); risk of conversion to IPR process Win IPR: freedom to operate, litigation over Raised /reasonably could have raised Estoppel IPR (patents /printed pubs.) Lose IPR: litigation resumes File DJ action (stayed) Infringement and prior use/sale invalidity defenses 25

26 Case Study #4: Ex Parte Reexam: Old School Win ex parte reexam: freedom to operate, litigation over (No estoppel, but potentially argument estoppel) FTO analysis identifies patent X and multiple invalidity arguments Ex parte reexam Ex parte reexam Lose reexam: litigation resumes Patent Owner files lawsuit (stayed) Litigation on all issues Best circumstances for use: Need to preserve some invalidity arguments for litigation Weak non-infringement positions Cost is a factor 26

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