Reexamination and Review Strategy
As compared to litigating issues pertaining to patent validity, post-grant procedures in the PTO provide the potential for cost savings, time savings, and a higher probability of a favorable outcome. Not surprisingly, the number of Ex Parte Reexamination filings in the ten years preceding 2011 more than doubled while the number of Inter Partes Reexamination filings in the five years preceding 2011 more than quadrupled. A statistical review of reexamination results illustrates the potential effectiveness of reexaminations in that more than 75% of granted reexaminations result in a modification or cancellation of claims. Mere modification of the claims may provide the challenger with sufficient intervening rights which allow the challenger to continue to practice the invention.
Under the America Invents Act, a new arsenal of review mechanisms is presented. That is, a patentee may confirm (using Ex Parte Reexamination), or a third party can challenge (using either Ex Parte Reexamination, Inter Partes Review, or Post Grant Review), patent validity. Notably, a third party may challenge validity without (or in addition to) going to court.
A Comparison of Ex Parte Reexamination, Inter Partes Review, and Post Grant Review
Ex Parte Reexamination allows the patent owner, or any third party (with or without an interest in the patent), or the director of the USPTO, to file a request for reexamination of any claim of a patent. Allowing the reexamination to be initiated by the patent owner provides the patent owner with a strategic opportunity to either bolster their patent or to sharpen any claims that might be ambiguous or otherwise at trial before filing a lawsuit. If requested by a third party, that party may remain anonymous. It is important to note that in Ex Parte Reexamination, a third party requester may not participate during the examination process and thus cannot point out errors or submit rebuttal points. A request for Ex Parte Reexamination is to be granted where the request raises a substantial new question of patentability, a threshold that is easier to meet than the standards for granting Inter Partes Review or Post Grant Review.
Ex Parte Reexamination may be of most interest when the party requesting the reexamination wishes to minimize costs, and is either confident of the expected outcome of the reexamination or will be content to have a final determination regardless of the outcome. If the requester is not the patent owner, consideration should also be given to whether the inability to reply to the patent owner's arguments may lead to an unfavorable outcome.
Although Ex Parte Reexamination is ordinarily limited to consideration of novelty and unobviousness issues based only on previously unconsidered patents and printed publications, these limitations do not apply to a reexamination initiated by the PTO as a result of a patent owner's Request For Supplementary Examination. Since such a request also insulates a patent owner from later charges of inequitable conduct, this is a powerful tool for a patent owner to defuse possible challenges to a patent before litigation.
Post Grant Review provides a much broader platform, as compared to Ex Parte Reexamination and Inter Partes Review, from which a challenger my attack patent validity. Absent are the limitations to obviousness and novelty issues and to patents and printed publications. More specifically, a third party may challenge a patent under Post Grant Review based on any ground that may be raised under 35 U.S.C. § 282(b)(2) or (3) including patent subject matter eligibility or utility under 35 U.S.C. § 101, novelty under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103 and enablement, written description and definiteness under 35 U.S.C. § 112. A PGR petition is to be granted if it is determined that it is "more likely than not" that a challenged claim is unpatentable.
Post Grant Review is only available for patents having at any time a claim with an effective filing date after March 16, 2013. A petition for Post Grant Review must be filed no later than nine months after the issue date of a patent or, for claims broadened in a reissue, nine months after the date of the reissue certificate. If the petitioner has already been sued for infringement of the patent, a petition to the PTO to initiate a Post Grant Review must be filed no later than one year after the petitioner was sued. And if the petitioner had previously initiated a declaratory judgment suit requesting the patent be found invalid, Post Grant Review will not be available for an alternative attack. The parties to a Post Grant Review may avail themselves of limited motion-based discovery, and the petitioner will be required to provide any exhibits, and, for cross examination, any affiants, declarants or experts whose testimony was referenced in the petition. The petitioner is allowed similar routine discovery after the patent owner files the response to the petition. Each party is also required to provide any relevant information that is inconsistent with a position it advances during the proceeding concurrently with the filing of the documents or things that contains the inconsistency. Unless the patent owner and petitioner agree to one of the mandatory discovery provisions under 37 C.F.R. § 42.51, all other discovery by the patent owner and petitioner must be requested by motion, which requires a showing of good cause as to why the discovery is needed.
Inter Partes Review may be requested by a third party, but that party must identify itself as a real party in interest and set forth the pertinency and manner of applying the cited prior art to every claim for which the review is requested. Inter Partes Review is available for any unexpired patent that has been issued for more than nine months, and is not undergoing Post Grant Review. The standard for initiating an Inter Partes Review, i.e., that there is a "reasonable likelihood that at least one of the claims challenged in the petition is unpatentable," is more stringent than the standard for granting an Ex Parte Reexamination request. The USPTO's Chief Judge of the Board of Patent Appeals and Interferences, James Donald Smith, issued a statement explaining that the "reasonable likelihood standard allows for the exercise of discretion but encompasses a 50/50 chance", that at least one of the claims is invalid. In an Inter Partes Review, the third party requester may submit declarations of supporting evidence and opinions, and additionally has a right to an oral hearing. Limited discovery is available regarding evidence "directly related to factual assertions advanced by either party." To obtain motion-based discovery, the movant must meet an "interest of justice" standard, which is a more stringent standard than the good cause showing required by Post Grant Review. Both parties will also have the opportunity to appeal any adverse final decision.
Because Inter Partes Review is limited to challenges based on novelty and obviousness over previously unconsidered patents and printed publications, it will not be a universal alternative to litigating validity in court. It should be a highly viable alternative, however, when the challenger can operate within those parameters and does not expect to be adversely affected by the limitations on discovery inherent in Inter Partes Review. Inter Partes Review cannot be pursued however, if the challenger has previously attacked the patent by initiating a declaratory judgment suit requesting a court to find the patent invalid.