Post-Grant Proceedings
The America Invents Act (AIA) introduced new procedures for challenging the validity of a patent. Since its inception, these procedures have drastically altered the patent litigation landscape and are becoming increasingly common in high-value disputes.
With one of the largest and most distinguished intellectual property legal teams in the United States, Perkins Coie routinely advises clients looking to the AIA’s post-grant procedures for protecting their own patents or challenging another’s patents. As forerunners and thought-leaders in this developing legal area, Perkins Coie offers an experienced, full-service legal and technical team that can guide clients through this evolving landscape. Perkins Coie is consistently ranked among the most-hired law firms for post-grant proceedings by Lex Machina, Docket Navigator and Managing IP. Several of our attorneys are also recognized as national leaders in this space.
Perkins Coie’s post-grant team distinctively combines our extensive patent litigation experience and Federal Circuit appellate practice with our comprehensive patent prosecution capabilities before the USPTO. Very few other Am Law 100 firms can match Perkins Coie blend of patent prosecution and litigation. This unique arrangement provides our clients with strategic advantages and guidance in developing pragmatic and cost-conscious IPR strategies. In particular, we excel at identifying unique methods for achieving successful resolutions and cultivating innovative ideas for managing long-term patent strategies. Importantly, our deep technical bench is unparalleled - we staff matters with professionals who have the exact technical experience and subject authority to handle the matter.
To date, we have handled more than 800 inter partes review, covered business methods and post-grant review proceedings for industry-leading clients.
Post-grant proceedings are often viewed as a strategic alternative to federal litigation. Some distinctive aspects of post-grant proceedings include the following:
- Speed: Post-grant proceedings are much faster than any other federal court venue with a final written decision issued within 18 months.
- Experience: The proceedings are adjudicated before a technically savvy panel of at least three judges at the USPTO.
- Standard of Proof: The burden of proving invalidity before the USPTO is lower than the burden of proving invalidity in a federal court.
- Scope: The claims are construed more broadly by the USPTO, making the patent easier to invalidate.
While these proceedings are directed to invalidating patent claims, they contain features typically found in traditional patent litigation, including discovery and depositions. These hybrid proceedings require comprehensive patent knowledge, renowned trial skills and ample experience before the USPTO, all of which Perkins Coie’s IP practitioners offer.
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Areas of Focus
Inter Partes Review (IPR)
Inter partes reviews offer an efficient, low-cost alternative to traditional patent litigation.
Perkins Coie consistently ranks among the top 10 law firms representing petitioners in inter partes review (IPR) and is one of the more experienced full-service law firms handling IPRs in the nation. Since the AIA became effective, our lawyers have assisted in more than 800 reviews before the USPTO.
IPRs first became available on September 16, 2012 with the introduction of the America Invents Act (AIA). Inter partes reviews allow a person, other than the patent owner, to file a petition asking the USPTO to review the patent’s validity. IPRs are beneficial as they offer an expedited, streamlined and cheaper alternative to litigation.
Unlike Post-Grant Reviews (PGRs) which allow patents to be challenged on all grounds, IPRs are limited to anticipation (35 U.S.C. § 102) and obviousness (35 U.S.C. § 103) challenges based only on patents and printed publications. Consequently, systems or products cannot be used as prior art in an IPR.
An Inter Partes Review Timeline
IPRs are trial-like proceedings conducted in front of a panel of administrative judges referred to as the Patent Trial and Appeal Board (PTAB). While IPR proceedings are directed to invalidating patent claims, they contain some features typically found in traditional patent litigation, including motions practice, expert declarations and depositions and other discovery issues.
As shown below, the IPR process is broken down into three phases: petition, discovery and hearing.
Petition Phase
Inter partes review is requested by filing a petition at the USPTO. A petition must meet certain requirements, including all of the following:
1. Identifying the real parties in interest.
2. Identifying the claims being challenged along with explanations of grounds of unpatentability for those claims.
3. Providing a detailed explanation of the relevance of the evidence.
4. Paying a filing fee.
The petition may also include technical declarations with evidence and opinions supporting the petitioner’s arguments.
Once a petition is filed, the patent owner has three months to submit a preliminary response. This response is optional, and the patent owner must weigh the positive and negative implications of this early filing option. At the very least, the preliminary response provides the patent owner with a chance to persuade the PTAB not to institute the IPR. Importantly, the patent owner is not allowed to submit evidence or rebuttal declarations directed to the validity challenges at this stage.
Within six months from filing, the PTAB reviews the petition and patent owner’s preliminary response (if any). The PTAB institutes a trial if it determines that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. In its institution decision, the PTAB may narrow issues, provide initial claim constructions and provide details regarding the grounds of unpatentability that will be at issue in the proceeding.
Discovery and Hearing Phases
Upon institution, the PTAB issues a scheduling order that concludes the proceeding within 12 months. Pursuant to the scheduling order, a patent owner is granted approximately three months to take discovery of the petitioner’s supporting evidence and to file a formal response or motion to amend. The scope of document discovery is still evolving. However, depositions of declarants and, at times, other witnesses are allowed.
The petitioner is then granted a three-month period to perform discovery on the patent owner’s supporting evidence and to file a reply brief or present arguments needed to counter a proposed amendment. A short period for motions may be provided before the oral hearing. After the oral hearing, the PTAB issues a final written decision regarding the patentability of the challenged claims. Parties involved in corresponding litigation may settle during the preceding unless the PTAB has already decided the dispute on the merits. Both the patent owner and petitioner may appeal the PTAB’s final decision to the U.S. Court of Appeals for the Federal Circuit.
Benefits of Filing an IPR
IPRs are often viewed as a strategic alternative to patent litigation for a number of reasons. First, the proceedings are much faster than any other federal court venue, with a final written decision issued within 18 months. Second, the IPR proceedings are adjudicated before a technically savvy panel at the USPTO, which understands the technology and the nuances of the patent laws. Third, the burden of proving invalidity before the USPTO is lower than the burden of proving invalidity in a federal court, making it easier to invalidate a patent. Finally, the claim construction standard at the USPTO is broader than federal court and again makes it easier to invalidate the patent.
IPR Timing Considerations and When To File
Perkins Coie lawyers help clients decide which approach for IPR is best in their unique situations. Anyone considering filing an IPR should know these important timing rules as described below.
Whether an IPR or PGR should be filed depends on the filing date of the patent being challenged. For patents filed on or after March 16, 2013 (post AIA - examined under the first to file rules), an IPR can be filed nine months after the patent issues. Specifically, PGR is the proper mechanism to use when challenging the validity of a patent within the first nine months of issuance. IPRs are only timely if filed nine months after the patent’s issuance.
On the other hand, if the patent being challenged was filed pre AIA, before March 16, 2013, an IPR can be initiated immediately following issuance since PGR is not available for these patents.
There is one major caveat to these filing rules. Anyone sued for patent infringement must file for an IPR within one year of the lawsuit being filed. This one-year timing window raises strategic issues that must be considered by a defendant before filing the IPR. Specifically, it is necessary to evaluate whether it is more advantageous to file the IPR earlier or later in the 12-month window.
For example, filing the IPR early guarantees that the decision to institute will be rendered before the 12-month deadline, potentially giving the defendant/petitioner a chance to file a second IPR on issues initially lost or by using the PTAB’s claim construction.
Alternatively, seeking inter partes review late in the 12-month filing time might allow a petitioner to take advantage of knowledge gained about the opposing party’s case, as it will likely have been presented already in the infringement lawsuit.
Finally, it should be noted that parties that previously filed a declaratory judgment action against the same patent(s) are precluded from filing an IPR.
Covered Business Method Review (CBM)
Covered Business Method review is similar to inter partes review with some notable differences.
First, CBM review is limited to a specific group of patents relating to “business method,” defined as patents that claim a “method” or “apparatus” for performing data processing or a similar operation relating to the practice, administration or management of a financial product or service. Any patent for a “technological invention” is excluded from this procedure under the AIA. Not surprisingly, the PTAB and the courts are still refining the application of these terms on a case-by-case basis.
Second, CBM review is only available if the petitioner is sued for infringement or shows that they have been threatened with such a lawsuit by means of a cease and desist letter, for example. The petitioner also cannot be anonymous. A CBM can only be filed after the post-grant review period expires or later than nine months after the patent’s issuance.
Finally, estoppel under a CBM review is narrower than other post-grant options. Specifically, estoppel under CBM review extends only to grounds actually asserted. It does not extend to grants that could have been reasonably asserted, as is the case with both inter partes review and post-grant review.
There are numerous advantages to using CBM over IPR or PGR if available. Specifically, a petitioner using the CBM process may challenge the validity of a patent’s claims using prior art and publication while at the same time challenging whether the patent covers patent-eligible subject matter (§ 101) and whether the patent’s specification provides a complete and informative description of the claimed invention. In addition, there is no timing limit on the filing of a CBM petition, and, as mentioned above, estoppel is limited to grounds actually raised.
Either party in covered business method review may appeal the PTAB’s decision to the Federal Circuit.
Post-Grant Review
Post-grant review (PGR) was introduced by the America Invents Act (AIA) on September 16, 2012 as a counterpart to the inter partes review procedure.
Timing
First, timing is crucial. In order to file a PGR, the challenged claims of the patent must have an effective filing date of March 16, 2013 (pursuant to the “first inventor to file” rules) or later.
Additionally, a PGR can only be used to challenge a recently issued patent during a small window of time. A PGR petition must be filed within nine months after a patent’s issuance (or reissuance), otherwise IPR becomes the proper challenge vehicle. In addition, like IPR, a PGR petition must be filed before the petitioner seeks a declaratory judgment challenging the validity of the claims in federal court. In the below diagram of the timing interplay between available post-grant options, PGRs can only be filed within a short and discrete time frame.
Second, post-grant review enjoys more available statutory grounds for challenges, in addition to a broader scope of applicable prior art. As opposed to IPR where the grounds for a challenge are limited to anticipation and obviousness, post-grant review can be sought based on any grounds that can be used to challenge the validity of a patent claim. Such grounds include anticipation (§ 102), obviousness (§ 103), patent eligibility (§ 101) and lack of compliance with written description, enablement or indefiniteness (with the exception of best mode) (§ 112). In addition, PGR prior art is not limited to patents and printed publications. Indeed, post-grant review can be sought by alleging unpatentability based on evidence of public use, on-sale activity or other public disclosures.
Limited Discovery and Estoppel
Third, discovery is broader than allowed under inter partes review, and it is limited to evidence directly related to facts asserted by either party.
Finally, estoppel can be a significant barrier to success using post-grant review because of its broad and potentially severe limitations. Estoppel can be applied to any issue previously raised or that reasonably could have been raised in proceedings before the USPTO, federal district courts or the International Trade Commission (ITC).
Post-Grant Review Timeline
Like IPRs, PGRs also follow the same trial-like proceedings conducted in front of a panel of administrative judges at the USPTO. As shown below, the PGR process is broken down into the following three phases, including petition, discovery and hearing.
Petition
Post-grant review is requested by filing a petition at the USPTO. A petition must meet certain requirements. These include all of the following:
- Identifying the real parties in interest.
- Identifying the claims being challenged along with explanations of grounds of unpatentability for those claims.
- Providing a detailed explanation of the relevance of the evidence.
- Paying a filing fee.
The petition may also include technical declarations with evidence and opinions supporting the petitioner’s arguments. Importantly, this petition must be filed within nine months of the patent’s issuance.
Once a petition is filed, the patent owner has three months to submit a preliminary response. This response is optional, and the patent owner must weigh the positive and negative implications of this early filing option. At the very least, the preliminary response provides the patent owner with a chance to persuade the PTAB not to institute the PGR. Importantly, the patent owner is not allowed to submit evidence or rebuttal declarations directed to the validity challenges at this stage.
Within six months from filing, the PTAB reviews the petition and patent owner’s preliminary response (if any) and institutes a trial if it determines that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. In its institution decision, the PTAB may narrow issues, provide initial claim constructions and provide details regarding the grounds of unpatentability that will be at issue in the proceeding.
Discovery and Hearing Phases
Upon institution, the PTAB issues a scheduling order that concludes the proceeding within 12 months. Pursuant to the scheduling order, a patent owner is granted approximately three months to take discovery of the petitioner’s supporting evidence and to file a formal response or motion to amend. The scope of document discovery is still evolving. However, depositions of declarants and, at times, other witnesses is allowed.
The petitioner is then granted a three-month period to perform discovery on the patent owner’s supporting evidence and to file a reply brief or present arguments needed to counter a proposed amendment. A short period for motions may be provided before the oral hearing. After the oral hearing, the PTAB issues a final written decision regarding the patentability of the challenged claims. Parties involved in corresponding litigation may settle during the proceedings unless the PTAB has already decided the dispute on the merits. Both the patent owner and petitioner may appeal the PTAB’s final decision to the U.S. Court of Appeals for the Federal Circuit.
Reexaminations & Reissues
Complimentary to our inter partes review practice, Perkins Coie is also highly experienced in the use of reissues and ex parte reexams. As a patent owner being challenged with an IPR, the filing of a reissue patent application can be a significant strategic advantage. Moreover, on the petitioner side where an IPR may be barred for a variety of reasons, the use of the ex parte reexam may still apply pressure to the patent owner. In either case, Perkins Coie has filed hundreds of reissue patent applications and ex parte reexams on behalf of clients.
Supplemental Reexamination
Once a patent is issued, its owner can file a request for supplemental examination to amend the patent’s claims by identifying one or more possible substantial new questions of patentability on any grounds. This new procedure under the AIA is intended to help immunize the patent holder against inequitable conduct claims as well as to allow issues to be considered by the USPTO beyond the patent or printed publication references.
The Central Reexamination Unit (CRU) reviews all requests for supplemental examination and determines within three months of filing whether there are any actual substantial new questions of patentability among those the patent holder has identified. If such new questions are found, an ex parte reexamination is ordered on them.
Ex Parte Reexamination
Unlike the other post-grant procedures, ex parte reexamination is not new under the AIA and has remained largely unchanged since it was instituted in 1981. It is available to both the patent holder and a third-party petitioner—who can remain anonymous—and can be filed at any time after a patent has been issued.
This post-grant procedure can be attractive to patent holders who want to obtain a presumption of validity over patent or printed publication references that come to light after a patent is issued. For third parties, ex parte reexamination can be beneficial because it allows for the challenge of a patent without incurring any of the estoppel penalties that apply for other post-grant proceedings established by the AIA.
To amend the patent or show invalidity, the patent holder or petitioner must show that there is a substantial new question of patentability. However, the only grounds allowed to amend or show invalidity are anticipation or obviousness, and prior art usage is limited to patents and publications. There is also no discovery allowed.
The Central Reexamination Unit (CRU) of the USPTO reviews all requests for ex parte reexamination. Only the patent holder may appeal the CRU’s decision to the PTAB, and only negative PTAB decisions can be appealed to the Federal Circuit.
Reissue
Similar to the supplemental examination, a patent holder can apply for reissue to amend a patent’s claims but only if the basis for the amendment is that an error in the original application renders the patent either partly or wholly invalid or inoperative. Like ex parte reexamination, reissue is not new under the AIA.
Examples of such errors can include claims that were too broad or too narrow, claims that failed to use a particular claim type or that failed to claim a disclosed subject matter. The reissue application can use any prior art references and must identify how any errors will be addressed, either by amendment or presentation of new claims. Any application for reissue that broadens the claims must be filed within two years of the original issuance.
The amended claims are examined in the same manner as any other patent application except that the recapture doctrine may apply and inventors must sign a reissue declaration. Appeals, continuations and divisionals can all be filed in the same manner as any other patent application, and estoppel does not apply.
Post-Grant Resources
Post Issuance Procedure Matrix
Awards and Recognition
- Ranked the top firm for patentee-side success at the PTAB in 2023 by IAM
- Ranked nationally in Managing Intellectual Property’s 2023 IP Stars for PTAB Litigation
- Named a finalist for The American Lawyer Intellectual Property Litigation Department of the Year in 2019 and 2021
- Ranked among the leading firms globally, nationally, and regionally for Intellectual Property by Chambers USA, Chambers China, and Chambers Global
- Named an “Inclusion Champion” in the Diversity Lab’s 2021 and 2022 Blueprint Surveys for our firm leadership’s diversity and inclusion efforts
- Named to the 2021 and 2022 ChIPs Honor Roll for our IP practice and firm leadership’s diversity and inclusion initiatives by ChIPs and Diversity Lab
- Named by Law360 as an Intellectual Property Practice Group of the Year in 2019