Understanding Post-Grant Review

Last week, I published an article about inter partes review on IPWatchdog.com. Patent Office statistics for FY 2013 and FY 2014 show that there have been a total of 361 decisions on IPR petitions, with 288 trials instituted. There have been 11 cases that have been joined and only 62 petitions denied, which corresponds with an 82.8% IPR petition grant rate. Having said this, the IPR grant rate during FY 2013 was 87.2%, while so far during FY 2014, the IPR grate rate has been 77.2%.

But what about post-grant review?

Both inter partes review and post-grant review became a reality when “Phase 2” of the America Invents Act (AIA) became effective on September 16, 2012. But you haven’t seen any post-grant reviews yet, aside from the quasi-post-grant review known as covered business method (CBM) review. That is because the post-grant review provisions apply only to patents issued from applications that have an effective filing date on or after March 16, 2013.  Said another way, post-grant review proceedings are only available to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.

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Kappos Gives Presentation at PLI Post-Grant Program

Director KapposOn Wednesday, March 27, 2013, the Practising Law Institute hosted the New York edition of the all-new USPTO Post-Grant Patent Trials program. This was the second of four stops across America for the program. The first stop was in Chicago on March 4, 2013. The remaining live presentations will be in San Francisco, CA, on April 15, 2013, and in Austin, TX, on April 29, 2013.

The headliner for the New York event was David Kappos, the former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Kappos, now at Cravath, Swaine & Moore, provided an overview of what has been happening at the Patent Trial and Appeals Board (PTAB). The slides were prepared by the USPTO and the presentation was originally scheduled to be delivered by Chief Judge James Smith of the PTAB, who unfortunately had to back out due to sequestration/budget matters.

Kappos ably filled in and was a fountain of useful information on the PTAB, what the Office is doing and why. He was, of course, the head of the Office at the time the America Invents Act (AIA) was passed and was intimately involved with the formulation of the Appeals rules that went into effect at the end of 2011 and the many rules packages dealing with the new post-grant trial procedures that went into effect on September 16, 2012, the one year anniversary of enactment of the AIA.

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Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Firstlegoleague.org: FLL Global Innovation Award Ceremony On June 19, 2012, the FIRST® LEGO® League – a robotics program designed to get children excited about science and technology – recognized the finalists and winner of the FLL Global Innovation Award Food Factor® Season. According to the site, “The FIRST® LEGO® League Global Innovation Award is designed to encourage and assist FLL teams of 10 children and 1 adult to further develop their innovative solutions to real-world problems.  This year, the FLL Food Factor season challenged kids around the world to solve a food safety problem.” The winning entry was the “Shield of Protection Fruit Safe Label”, a sticker made out of food grade materials that would not peel off readily. To remove, the label must be scrubbed off with water, thus reminding people to wash fruit thoroughly prior to consumption.

2) Reuters: Kodak Sues Apple, Claiming Interference in Patent Sales – This article discusses how Kodak filed a lawsuit against Apple claiming Apple is the largest infringer of patents in Kodak’s digital-capture portfolio on top of being a  potential purchaser of those patents. According to the article, “Apple’s strategy has been to use its substantial cash position to delay as long as possible the payment of royalties to Kodak” and interfere with the sale, Kodak said.” (more…)

Top 5 Patent Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) IP Watchdog: Federal Circuit on Software Patents: Show Me the Algorithms – This post discusses the decision by the United States Court of Appeals for the Federal Circuit in Noah Systems, Inc. v. Intuit, Inc. and how the CAFC explained  the disclosure requirements for software patents that utilize means-plus-function claim language.

2) Patents Post-Grant: Different Thresholds for New Post Grant Proceedings – This post questions whether or not there is a significant enough difference between Inter Partes Review and Post Grant Review to make an impact between grant rates. But the post does discuss the differentiating thresholds necessary for initiating the process of Inter Partes Review and Post Grant Review.

3) Patently-O: The Impact of Mayo v. Prometheus: Three Weeks In – The decisions that have been released that rely on the Supreme Court opinion in Mayo v. Prometheus are highlighted and summarized in this post.

4) Patents4life: Aventis v. Hospira – How to Meet the Therasense Standards – This post discusses the Federal Circuit’s decision in Aventis v. Hospira, and how the inventors were found to have intentionally decided not to submit two material pieces of prior art to the PTO.

5) IP Kat: Patents and jurisdiction 2: Innovia v Frito-Lay – This post analyzes the question of which court Europeans can bring their patent related claims. The reason for this is, “because the same patents get litigated in jurisdictions outside the European Union too, and the effort of fighting to sue before the court of one’s choice often determines the outcome of the substantive proceedings too.”

Scott McKeown on Post Grant Strategies

The substantial costs and uncertainty of patent litigation require the development of alternative case management strategies, which at least require consideration of challenging patents at the PTO. To this end, patent reexamination in particular has exploded in popularity as a viable alternative to costly litigation, or parallel path, to enhance litigation positions. This topic was discussed during the Practising Law Institute’s seminar entitled, Post-Grant USPTO Proceedings 2012 – The New Patent Litigation. Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, broke down post-grant topics into pre-trial and post-trial strategies, issues, and goals, and spelled out cost effective post-trial strategies.

Here is a clip from Scott’s discussion during the Pre-Trial and Post-Trial Post-Grant Strategies Concurrent with Litigation panel:

The “Post Grant USPTO Proceedings 2012 – The New Patent Litigation” seminar is currently available for viewing on demand. The on demand program includes access to select chapters of  the seminar’s Course Handbook.