By Joshua Griswold and Adam Donovan
Principal and Senior Marketing Manager, Fish & Richardson
Patent challengers are turning to these new proceedings, in part, because they yield results inexpensively and quickly. In fact, the USPTO now is the third most utilized patent venue, behind the traditionally busiest federal patent courts in the Eastern District of Texas and the District of Delaware.
Substantial Cost Savings
While district court litigation in a large patent case can cost millions of dollars, typical costs for IPR and CBM proceedings can be 1/10th that amount. This cost difference is partly due to the limited scope of the issues that are considered in the proceedings. Infringement, enforceability, and damages are not at issue. Also, prior art invalidity grounds in both IPR and CBM are limited to patents and printed publications. Invalidity claims that are highly factual and expensive to prove, such as those based on offer of sale and public disclosure, are not eligible. The lower cost also can be traced to the streamlined nature of IPR and CBM proceedings. For example, discovery, which is typically the greatest cost in litigation, is much less expensive in IPR and CBM because it is limited to invalidity issues, and further limited by the rules. The rules define “routine” discovery categories, and any discovery outside of those categories must be authorized by the Patent Board. The bar set to obtain discovery beyond routine discovery is high. Therefore, in practice, discovery is used mostly for deposing declarants, such as technical experts, and other discovery is rare.
These new proceedings also often defer the costs of litigation. Typically, if an IPR or CBM proceeding is instituted, then the corresponding district court litigation will be stayed. Then, even if the petitioner is ultimately unsuccessful in the IPR or CBM, the deferment of litigation costs has value, and the Board’s decision can help the parties more realistically understand the strength of their respective positions and encourage settlement. On the other hand, if the petitioner is successful, it can be dispositive, eliminating costs that would be incurred in addressing other issues in the litigation, such as infringement, damages, and enforceability. In most district court litigation, these other costs are incurred concurrently with the costs of the validity challenge, which are wasted costs if the validity challenge is successful.
Quicker Resolutions
The resolution provided by IPR and CBM proceedings is relatively quick. The statute mandates final determination by one year from institution, extendable by six months for good cause. Institution can take up to six months. Therefore, most proceedings are concluded in 18 months, if not sooner, which is much faster than the top patent courts.
The petitioner also is at a procedural advantage in IPR and CBM. In most instances, the petitioner can take its time to carefully analyze and build its case. Once filed, statutory expediency forces the patent owner to play catch-up from a defensive position by having to argue for the validity of its claims during the entire proceeding. Factors that can influence the outcome in litigation, such as the invention story and bad actions by the accused infringer, do not play out in these proceedings that consist primarily of written arguments with only a short hearing at the end. Tight page limits force the patent owner to focus on the content of the prior art and claims without much space to tell the bigger story.
The proceedings construe the claims of unexpired patents to their broadest reasonable construction, and typically reach a broader construction than the courts. Validity is tested applying the preponderance of the evidence standard, with no presumption of validity. This lower bar, and the Board’s present petitioner friendly track record, makes the statutorily imposed estoppel arising from these proceedings more palatable. Even if the petitioner is unsuccessful in invalidating all challenged claims, the patent owner’s arguments create prosecution history estoppel. This usually comes before there is discovery on the accused devices, and can provide the petitioner new non-infringement arguments.
Smartphone App Delivers Timely Updates
Given the newness of the USPTO’s patent review proceedings, the landscape is developing rapidly. Practitioners in this area devour the opinions of the Board daily. That is what led Fish & Richardson to develop a new Post-Grant smartphone app to provide in-house patent counsel with access to up-to-date information about the quickly evolving post-grant proceedings without needing to check back to a website or search multiple sources. With large amounts of content created and disseminated daily by practitioners, publications, the USPTO, and various law firms, Fish’s new Post-Grant app provides a one-stop resource for in-house and outside counsel alike.
Through the use of push-notifications, the Post-Grant app delivers content directly to users’ smartphones, allowing for “one-swipe” access to new alerts, webinar replays, and other related content without the need for constant personal monitoring.
For practitioners deeply involved in these proceedings, the nuances of post-grant practice are extremely important. As new orders are issued and decisions are reached by the Board, practitioners rely on the orders themselves as well as related analysis and commentary. To meet this demand, the Post-Grant app provides access to replays of 1-hour monthly webinars hosted by Fish focusing on exactly these issues. Topics are identified based on input from Fish’s clients and contacts, in addition to webinar audience members. For many in-house counsel who are unable to take time out of their day to attend these live presentations, the video and audio replays provide a valuable resource for those who may want to catch up on the latest news whether it be during their morning commutes, at the gym or elsewhere.
The new Post-Grant app was preceded by Fish’s dedicated post-grant website, which was used for surveys and gathering analytical data about what content users found most useful as the app was being developed. The input gathered in this effort is why the app features content regarding district court stays relating to IPR and CBM matters, including up-to-date listing of stays relating to IPR and copies of the associated court orders.
Following the trends of legal professionals on social networks such as LinkedIn and Twitter, the Post-Grant app contains a social component that allows users to share content with their social networks to spur additional insights and conversation.
With the post-grant proceedings still on the rise, the new Fish Post-Grant app provides a free and easy way to stay abreast of the evolving landscape for patent validity challenges.
Mr. Griswold is a Principal in the Dallas office of Fish & Richardson P.C. His practice emphasizes U.S. and foreign patent portfolio strategy and management, including post-grant proceedings before the USPTO Patent Trial and Appeal Board. Mr. Donovan is a Senior Marketing Manager in the firm’s Washington, D.C., office. He oversees business development and marketing for Fish’s patent and post-grant practices.