Patent Litigation Strategy: Leveraging New Post-Grant Procedures

Patent litigation is a high-stakes game. Settlements and damage awards routinely exceed the million-dollar mark. Legal fees often balloon over the course of litigation. Smaller companies may struggle to avoid bankruptcy. And the nonfinancial impacts are just as serious: the result of a patent litigation can disrupt product sales, soak up engineering resources, and alarm investors.

But identifying the downsides of patent litigation is the easy part. The more important question is: “what is the most efficient and effective way to approach patent litigation today?” The answer to this question changed in 2012 when certain aspects of the Leahy-Smith America Invents Act (AIA) came into effect.

The AIA created a new practice in patent law: patent trials within the U.S. Patent and Trademark Office before a newly created Patent Trial and Appeal Board (PTAB). Several types of trials may be available depending on the type of patent and surrounding circumstances. These trials include inter partes review (IPR), post-grant review (PGR), and transitional post-grant review for covered business methods (CBM).

IPR replaced inter parte reexamination, allowing a third party to challenge the validity of any issued patent under 35 U.S.C. §§ 102 and 103 based on prior-art patents and printed publications. PGR allows a third party to challenge the validity of a patent within the first nine months after issuance of a patent filed after March 16, 2013. Finally, CBM allows third parties charged with infringement to challenge the validity of any issued “covered business method” patent. For PGR and CBM proceedings, a third party may challenge validity under any of 35 U.S.C. §§ 101, 102, 103, and 112.

PTAB trials offer unique advantages: they are faster, more effective, and cheaper than litigation. The speed of PTAB trials stems from the statutory requirement of completion within a year—or in special circumstances, a year and a half. The trials are highly effective because (1) the burden of proving invalidity is lower than in district court, (2) the claims are construed more broadly than in district court, and (3) validity decisions are made by a panel of three judges having substantial patent experience. The institution of a PTAB trial will typically put any ongoing district court litigation on hold until the PTAB trial concludes.

The statistics on PTAB trials confirms their popularity and effectiveness. As of April 2015, parties have filed over three–thousand IPR, CBM, and PGR petitions, with IPR petitions making up the bulk of petitions filed. The PTAB has instituted a large majority—approximately 75%—of the petitions considered. According to the USPTO’s statistics, once a claim is instituted it is more likely to be canceled, disclaimed, or found unpatentable than to survive the PTAB proceeding. In other words, PTAB trials have proven quite deadly for patent owners thus far.

From a strategy standpoint, litigation counsel is well equipped to provide guidance on whether to pursue an IPR or other post-grant procedure. In some scenarios, it may prove beneficial to use litigation counsel as counsel for the PTAB proceeding as well. For example, litigation counsel may have knowledge of the art to be asserted in the PTAB proceeding as well as preferred positions on claim construction and validity. On the other hand, some scenarios may call for different counsel to pursue the PTAB proceeding—such as where cost, speed, or PTAB expertise is needed. In either case, the firm chosen to handle the proceeding should be equally skilled at litigation and USPTO procedure, as PTAB proceedings are a unique mix of both of these aspects.