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U.S. Patent Office Litigation

Successfully litigating complex cases, in the US, Israel and beyond

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U.S. Patent Office Litigation

IPR, PGR, CBM and other US Post Grant Proceedings

Pearl Cohen is experienced in various post-grant proceedings at the USPTO, including inter partes review (IPR), covered business method review (CBM), post-grant review (PGR), ex parte reexamination, and reissue applications.  IPR, CBM, and PGR proceedings are fairly new, having been created by the America Invents Act (AIA) in 2012 to cost-effectively challenge the validity of issued US patents. 

IPRs and the lesser-used CBMs and PGRs provide a good strategy for companies to eliminate the threat of pending or contemplated patent litigation.  These procedures, which take place before a USPTO panel of judges, are often a better venue for resolving validity issues than federal court, as they are faster and cheaper than litigation, and incorporate advantageous procedural elements.  For example, the judges are patent experts with technical background, the burden of proof and claim interpretation standard is more favorable to the party challenging the patent, and the issues addressed pertain only to the patent at issue, often ultimately rendering other extraneous issues irrelevant. Additionally, these proceedings are expected to last 12-18 months (rather than a median time to trial of 30 months in federal court).

As these procedures are “hybrids” of US litigation and US patent prosecution, and often arise out of patent litigation, Pearl Cohen creates highly experienced teams for these procedures including practitioners from our US litigation group and our US patent group as part of an overall litigation strategy.  Our teams provide clients with comprehensive dispute resolution advice beyond the strict boundaries of the particular post-grant proceeding, and, when appropriate, negotiate settlements.  Our teams are well aware of both the benefits (e.g., cost, speed) and pitfalls (e.g., “estoppel,” which may prevent invalidity arguments from being raised later in court) of these procedures.  We have represented patent holders defending patents, and petitioners attempting to invalidate patents.  

The following chart highlights characteristics of and differences among post-AIA post grant proceedings.

 

Basis

Timing

Estoppel

IPR

35 USC §§ 102 and 103: prior documents only

Later than 9 months from issue; must petition within a year of service of an infringement suit

Raised or reasonably could have raised; applied to subsequent court/USPTO/ITC cases

PGR

35 USC §§ 101, 102, 103 and 112: prior documents, patentable subject matter (e.g., “Alice” software issues), and form of claims

Within 9 months of patent grant, for patents filed after March 16, 2013.

Raised or reasonably could have raised; applied to subsequent court/USPTO/ITC cases

CBM

35 USC §§ 101, 102, 103 and 112: prior documents, patentable subject matter (e.g., “Alice” software assertion), and written description

For all “covered business method” patents except: for patents filed after September 16, 2016, available when PGR not available or completed. Only parties sued or threatened with suit can file.

USPTO actions: Raised or reasonably could have raised; Court: actually raised only

Key Contacts