The U.S. Patent and Trademark Office’s (PTO) post-grant procedures provide offensive and defensive opportunities and challenges for patent holders and third parties. Akin Gump Strauss Hauer & Feld LLP’s patent team’s litigation savvy, Patent Office experience and diverse technical backgrounds position us to navigate these procedures to advance our clients’ goals. When on defense, we can advise and represent clients in inter partes review, ex parte reexaminations and post-grant review to cost-effectively challenge patent validity in an expedited manner, potentially eliminating the need for protracted district court litigation. We can advise and represent clients not only in defending the validity of their patents in post-grant proceedings filed by others, but also in using reexamination, reissue and supplemental examination defensively, as a preemptive tactic to stave off potential attacks on their patents and increase the likelihood of licensing opportunities. Regardless of which position we find ourselves in, our experience and acumen allow us to advise clients on these administrative alternatives to litigation and devise a tailored strategy that suits each client’s needs.
Inter Partes Review and Post-grant Review
The America Invents Act of 2011 (AIA) was the most comprehensive change to the U.S. patent system in nearly 60 years. The AIA dramatically altered inter partes reexamination proceedings that challenge the validity of granted patent claims by replacing them with two new mechanisms: inter partes review (IPR) and post-grant review (PGR). Unlike the old form of inter partes reexamination proceedings, IPR and PGR proceedings are expedited proceedings, with the Patent Office setting standards and procedures for the taking of discovery. Both are also held before the newly formed Patent Trial and Appeal Board (PTAB) at the PTO without prior review by the patent office examiners. In addition, final decisions of the PTAB may only be appealed to the Federal Circuit. Of course, this is just the beginning. Both IPR and PGR differ from previous inter partes reexamination procedures in many other ways—timing, patent eligibility, standard of review and estoppel effect—all of which are strategically critical considerations.
All this change means only one thing for parties appearing in these new courtroom-like patent office proceedings. Employing skilled and experienced adversarial guidance is critical. In recent years, our patent litigation team has handled dozens of complex inter partes reexaminations stemming from parallel district court litigations. This, combined with our extensive representation of clients in patent litigations involving myriad invalidity issues, provides our clients with the strategically minded and knowledgeable advocates they need to prevail in PGR and IPR proceedings.
Ex Parte Reexaminations
The AIA made no changes to ex parte reexamination procedures, which, like IPR, are a mechanism for asking the PTO to “reexamine” an existing patent on the basis of printed publications. Unlike the new trial-like IPR and PGR procedures, ex parte reexamination is conducted by examiners within the Central Reexamination Unit (CRU) of the PTO, and an appeal of a final decision of the CRU goes to the PTAB. Based on our experience with the PTO’s examination procedures, we evaluate the many significant factors at play before deciding whether to commence an ex parte proceeding—cost, claim interpretation, possible estoppel, timing, standard of review, burden of proof, evidentiary limitations, eligibility period, intervening rights, the possibility of merger reexamination proceedings—and counsel our clients as to the appropriate strategy to achieve their stated business goals.
Patent Reissue and Supplemental Examination
There are two post-grant mechanisms that allow a patent holder to strengthen an existing patent and immunize it from a potential attack. First, patent reissue allows a patent owner to correct an error in a patent if the error renders the patent partially or wholly inoperative or invalid. Second, supplemental proceedings, created by the AIA, are a means for a patent owner to submit additional information to the PTO, the absence of which might have made the patent holder vulnerable to potential inequitable conduct charges. While they sound relatively straightforward, the choice of which of these mechanisms to use is not an easy one. Issues of timeliness and cost and potential questions of patentability must be carefully assessed. Our patent attorneys have the strategic vision and technical knowledge to understand how these mechanisms can best be used to fix known deficiencies in existing patents and put clients considering patent litigation as a means of enforcement in the best possible tactical position.