Today, there's a more efficient way to challenge the validity of a patent without going to court. For the last 18 months, the Patent Office has been hearing contested patent reviews before the U.S. Patent Trial and Appeal Board. Join us as Jennifer Hoekel and Scott Eidson share recent trends and strategies for challenging patents through these post grant proceedings.

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© 2014 Armstrong Teasdale
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Challenging the Validity
of a Patent Before the PTAB
Jennifer Hoekel and Scott Eidson
July 30, 2014

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LLP
PTAB Procedures
 What is the PTAB?
• Patent Trial and Appeal Board
• Appellate-like panel of three judges that oversee each
proceeding
• Decisions appealable to the Federal Circuit
 3 New Procedures For Challenging a Patent After it
Issues
• Post Grant Review (PGR)
• Covered Business Method Review (CBM)
• Inter Partes Review (IPR)3

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Post Grant Review & Covered Business
Method Review
 CBM patent is a patent that
claims a method, apparatus, or
operation used in the practice,
administration, or management
of a financial product or service
 Not including a technological
invention
 Only available to parties charged
with infringement
 Any invalidity ground
 Timeline: completed in 18
months
 Estoppel only to grounds
actually raised
 Applicable to patents filed on or
after March 16, 2013
 Any invalidity ground
 Available for the first 9 months
after a patent issues or reissues
 Timeline: completed in 18
months
 Estoppel applies (“raised or
could have raised”)
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Post Grant
Review
Covered Business Method
Review

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Inter Partes Review
 Based on patents or printed publications and may be
sought any time after post grant review period ends
 Preponderance of the Evidence Standard
 Estoppel applies (“raised or could have raised”)
 Requires threshold PTO determination to institute
review (similar to reexam)
 Time Limits: within 12 months of litigation; no review
if petitioner filed a DJ on invalidity
 Right to oral hearing, heard by PTAB
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IPR Timeline
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Current Statistics and Trends
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Current Statistics and Trends
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Current Statistics and Trends
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Current Statistics and Trends
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Current Statistics and Trends
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Strategies: Challenging a Patent
 Identify claims to challenge
• Are they in litigation?
• Timing considerations
 Exhaust your prior art search (estoppel)
 Consider use of experts
 Set forth all of your arguments in the petition—60 page limit
• Cannot add new arguments as the proceeding goes forward
• Cannot incorporate from declaration
• Focus on a detailed analysis
• Multiple petitions—common practice (roughly 200 patents subject to
multiple petitions attacking the claims)
− Attack claim groupings
− Attack on different invalidity arguments
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Strategies: Challenging a Patent
 Joint Petition: Should we join with others to file one
petition?
• PTAB will likely join multiple petitions attacking the
same patent
 Claim Charts
• Must be explained in petition with cites to supporting
evidence
 Experts
• Must be supported by underlying facts or data
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Strategies: Defending Your Patent
 File a preliminary patent owner’s response?
• Attack redundant challenges and reduce the number
of grounds
• Attack weaknesses in petition and prior art
• No new evidence allowed
 Do nothing?
• Don’t preview your arguments
• Save cost
 Swear behind prior art?
• Difficult to do in front of the PTAB
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Strategies: Defending Your Patent
 Amend claims during trial
• Not likely. Why?
• One for one substitution
• Must narrow
• No examination
• Burden on patent owner to show patentable and
distinct
 Settle
• If you wait too long, the PTAB may not stop the
proceeding
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Related Considerations
 Licensing:
• Patent owner: pays for and controls prosecution
• Licensee: Has the right (& obligation) to enforce patent
rights at its own expense
− Who controls post grant proceedings? Who pays?
Conflicts?
− Review and revise all license agreements to clarify
responsibilities and avoid conflicts
 Enforcement:
• Could/will become a common response to enforcement
efforts
• Efforts will be delayed due to litigation stays
• Budget accordingly/plan accordingly
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Timeline & Costs: Litigation vs. Inter Partes
Review
 Cost to File:
• $400
 Average Length of Time
(filing to trial):
• Just under three years
*2011 AIPLA Survey
 Average Cost (fees and
expenses):
• $1-10 million in controversy:
− $2.1 million through trial
• $10-25 million in
controversy:
− $3.6 million through trial
*2013 AIPLS Report of the Economic
Survey
 Cost to File:
• $9,000 filing fee
+ $200/claim over 20
• $14,000 institution fee
+ $400/claim over 15
 Length of Time:
• 18 months.
 Average Cost (fees and
expenses):
• $250,000-650,000.
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Inter Partes
Review
Patent Litigation

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Questions?
Scott Eidson
Partner
Intellectual Property
314.342.4161
seidson@ArmstrongTeasdale.com
Jennifer Hoekel
Partner
Intellectual Property
314.342.4162
jhoekel@ArmstrongTeasdale.com
www.atpostgrant.com
CLE Confirmation Code: HE0712
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