The America Invents Act ("AIA") introduced new post-grant proceedings before the Patent Trial and Appeals Board, providing faster and more economic means for challenging validity of issued patents. Since September 16, 2012, Inter Partes Review ("IPR"), which replaced Inter Partes Reexamination, has been widely used to challenge patent validity. In fact, as of April 23, 2015, 2,805 petitions for IPR were filed, which far exceeds the 1,919 requests for Inter Partes Reexamination filed in the 13 years it was available.
Another post-grant proceeding formed with the AIA is Post Grant Review ("PGR"), which is available for patents with effective filing dates on or after March 16, 2013 ("AIA Patents"). AIA Patents are now being issued and it is anticipated that PGR will be more widely used than IPR due to the broader grounds available for challenging validity. This article will outline the different aspects of PGR and highlight the important differences between PGR and IPR.
Timing of Filing
A petition for PGR must be filed within 9 months of grant. A defendant in a concurrent civil or ITC proceeding may file against the patentee but the petition must be filed within 1 year of being served. In contrast, a petition for IPR could only be filed after 9 months of grant or after termination of PGR for AIA Patents.
Filing Party
Any party not an owner of the challenged patent and that has not filed a civil action challenging the validity of the patent may petition for PGR. Counterclaiming for invalidity does not bar a defendant from petitioning for PGR. Also, lead counsel must be a registered patent attorney, although pro hac admission is available.
General Requirements and Fees
The PGR petition has an 80-page limit and may include declarations and affidavits. The petition fee is $12,000 for up to 20 claims challenged and $250 for each additional claim. The post-institution fee is $18,000 for up to 15 claims challenged and $550 for each additional claim. No small entity fees are available. For IPR, there is a 60-page petition limit and the official fees are slightly less than PGR.
Grounds
In PGR, the validity of an issued patent could be challenged on any ground relating to 35 U.S.C. 282 - Section 101 (subject matter); Section 102 (novelty); Section 103 (obviousness); and Section 112 except best mode (written description and enablement). For IPR, grounds for challenging validity is limited to novelty and obviousness, and could be based on only patents and printed publications.
Legal Threshold for Decision on Petition
PGR petitions are granted if more likely than not at least one claim is unpatentable. For IPR petitions, the standard is reasonable likelihood of success with respect to at least one claim. The PGR standard is a slightly higher standard than the IPR standard.
Effect on Pending Litigation
Civil actions brought by petitioner on or after the PGR petition date are automatically stayed. Preliminary injunction motions are not stayed if the infringement action is filed within 3 months of grant even if PGR is filed. Data shows that 75% of concurrent litigation is stayed when IPR is pending.
Discovery
Discovery is limited to information directly related to factual assertions advanced by either party in the proceeding; cited documents; cross-examination (depositions) of declaration testimony; and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or may file a motion seeking additional discovery. For PGR, good cause must be shown for additional discovery whereas for IPR a slightly higher interest of justice standard is used to determine whether additional discovery is warranted. Protective orders and motions to seal are also available.
Evidentiary Standard for Final Decision
In both PGR and IPR, the claims at issue are given broadest reasonable construction and there is no presumption of validity. Invalidity must be proven by preponderance of evidence compared with the higher clear and convincing evidence standard in district court.
Time for Decision
The petition phase is a maximum of 6 months while the trial phase is a maximum of 12 months. Up to a 6 month extension is available for the trial phase.
Rehearing and Appeal
Both parties have the right to a rehearing and appeal. For denied petitions, the petitioner could request rehearing on the petition. With respect to an adverse final written decision, either party could request rehearing on the decision. Each party could also appeal to the Federal Circuit directly after the final written decision or after rehearing is decided.
Estoppel
The parties are estopped from raising in later proceedings issues raised or could have been raised in PGR and IPR.
Please note that only general aspects of PGR and IPR are discussed above. For more information, please contact John H. Choi & Associates LLC at email@jchoilaw.com or 201.580.0816.