Practical Considerations: Building Patent Trials into Your Litigation Strategy

• Author: Erika Harmon Arner - Kathleen A. Daley - Michael J. Flibbert
• Pages: 11-28

The Leahy-Smith America Invents Act (AIA) provides new tools for challeng-

ing a patent that may affect how a challenger and patent owner approach

litigation strategy. A patent owner should consider how these tools may be

used to challenge its patent when forming patent-assertion strategies. Like-

wise, a defendant (or potential defendant) in a patent-infringement action

should understand the options, requirements, and outcomes of the AIA tools

to determine whether to challenge an asserted patent in district court, the

Ofce, or both, and the type of challenge to bring. This chapter offers some

considerations for building patent trials into a party’s litigation strategy.

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Chapter 2

Practical Considerations:

Building Patent Trials into

Your Litigation Strategy

ame5571_02_ch02_011-028.indd 11 9/30/16 2:28 PM

A. What Are the Strategic Options?

A patent may be challenged before the Ofce by post-grant review (PGR),

covered business method patents post-grant review (CBM-PGR), inter par-

tes review (IPR), or ex parte reexamination.1

Timing may limit the options for a potential challenger. A third party

may challenge a patent by PGR if the challenged claims have an effective

ling date of March 16, 2013, or later, and the petitioner les the petition

within nine months after the issue or reissue date of the patent.

2

By contrast,

CBM-PGR is available for any “covered business method patent” issued at

any time.3 While there is no nine-month time limit for ling a petition for

CBM-PGR, only parties who have been sued or charged with infringement

of the patent may petition for CBM-PGR.4

If a third party cannot satisfy the criteria for PGR or CBM-PGR, then

IPR may be an option. For AIA patents,

5

IPR becomes available after the

nine-month window for ling a PGR.

6

For pre-AIA patents, IPR is available

immediately after they issue.7 There are some caveats, however. First, if a

PGR has been instituted for a patent, an IPR challenging that patent can-

not be led until the PGR terminates.8 Related litigation may also impact

the available options. If a petitioner, real party-in-interest, or privy of the

1. While third parties may challenge the validity of a patent, a patent owner may seek

to conrm the validity of its patent through ex parte reexamination. See 35 U.S.C. §302; 37

C.F.R. §1.510(a); see also Manual of Patent Examining Procedure §2212.

2. 35 U.S.C. §321(c).

3. America Invents Act, Pub. L. No. 112-29, §18(a)(2).

4. Id. § 18(a)(1)(B).

5. 35 U.S.C. §100(i)(1).

6. Id. §311(c); 37 C.F.R. §42.102(a).

7. 37 C.F.R. § 42.102(a) was revised on March 25, 2013, to implement the Leahy-

Smith America Invents Technical Corrections, Pub. L. No. 112-274, §(1)(d)(1); See Changes

to Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter

Partes Review, 78 Fed. Reg. 17871, 17874 (Mar. 25, 2013).

8. 35 U.S.C. §311(c). The waiting period for petitioning for an IPR ling does not

apply to pre-AIA patents. See To Correct and Improve Certain Provisions of the Leahy-Smith

America Invents Act and Title 35, H.R. 6621, 112th Cong. §1(d). If no decision on whether

to institute a PGR has been made, a party may le an IPR after nine months from issuance.

See Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings,

and Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48680, 48696,

Response to Comment 18 (Aug. 14, 2012).

CHAPTER 2

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