INTER PARTES


       


What’s more, because of the 50-page limit imposed on any petition for IPR,


only it may be


desirable to file multiple petitions for IPR, challenging


certain claims in each


petition. Thus, the USPTO filing fees may be staggering. In addition to the increased fees, the cost of taking depositions and entertaining settlement negotiations must be considered.


Double patenting cannot form the basis for attacks in IPR


Even if timing and cost are not barriers to IPR, IPX offers at least one substantive advantage over IPR: whereas challenges for double patenting can be brought in re-examinations, they cannot be brought in IPR. The USPTO cites In re Lonardo to support its view that double patenting is an appropriate ground for rejecting claims in re-examinations, noting that “[i]n giving the Director authority under 35 USC § 303(a) in determining the presence of a substantial new question of patentability, Congress intended that the phrases ‘patents and publication’


and ‘other patents or


publications’ in section 303(a) not be limited to prior art patents or printed publications”. In contrast, the authority granted to the USPTO under the AIA is more limited for IPR. Under 35 USC § 311, patent claims may be challenged in IPR “only on a ground that could be raised


under section 102 or 103 ...”. So, absent some future court decision or


legislation to the


contrary, it appears that neither statutory double patenting under 35 USC § 101 nor judicially-created obviousness-type double patenting can be asserted in IPR.


A challenger in IPX has the last word A further strategic consideration is that


The optimal strategy for challenging a patent is, of course, fact-dependent and IPR may prove to be an effective proceeding. However, companies that face problematic patents should fully consider requesting IPX before this proceeding becomes unavailable. 


the


Eldora L. Ellison, PhD, has extensive experience in representing clients in patent concurrent


patent


federal courts, and has overseen more than a dozen patent


challenger has a better opportunity to have the ‘last word’ in IPX than in IPR. In IPX, upon issuance of an office action, the patentee responds first and then the challenger rebuts the assertions of the patent owner before the USPTO issues another action. In IPR, the challenger files a petition, the USPTO institutes IPR, the patent owner opposes the petition and optionally files a motion to amend the claims, the petitioner then files a reply and any opposition to the motion to amend, and the patent owner then files a reply to the motion to amend. At that point, the petitioner is limited to filing observations on the cross-examination of any declarants who supported the patent owner’s reply, and the patent owner may file a short response to the observations. Each observation or response must be concise and “should not exceed a single, short paragraph”. So a challenger files the final papers in IPX but not in IPR.


re-examinations and litigation in the


interferences


before the Board of Patent Appeals and interferences of the USPTO. Ellison’s practice includes counselling clients on IP strategy; evaluating patent portfolios, eg, for invalidity, non-infringement, freedom-to-operate


and due diligence


analyses; and preparing and prosecuting patent applications.


20


IPX has a more flexible estoppel horizon


Another timing consideration stems from when the estoppel, if any, arises following each proceeding. In IPX, any estoppel arises only after all appeals are final. And appealing from the Central Reexamination Unit to the Board of Patent Appeals and Interferences and then on to the Court of Appeals for the Federal Circuit


can take many years, significantly


delaying and providing significant flexibility with regard to the estoppel concern.


Life Sciences Intellectual Property Review 2012


Eldora L. Ellison is a director at Sterne, Kessler, Goldstein & Fox. She can be contacted at: eellison@skgf.com


Eric K. Steffe is a director at Sterne, Kessler, Goldstein & Fox. He esteffe@skgf.com


can be contacted at:


“THE OPTIMAL STRATEGY FOR CHALLENGING A PATENT IS, OF COURSE, FACT-DEPENDENT AND INTER PARTES REVIEW MAY PROVE TO BE AN EFFECTIVE PROCEEDING.”


In contrast, any estoppel in IPR proceedings will arise much sooner. Not only is an IPR proceeding expected to be shorter than a typical IPX proceeding, IPR proceedings will be heard by the board and there will be no appeals within the USPTO.


Although


IPR decisions can be appealed to the Federal Circuit, the estoppel arises upon a final written decision of the board. Consequently, any risk of estoppel that arises in IPX is more attenuated than in IPR, lessening the risk that an estoppel will arise before any litigation is over. A further mitigating factor that actually applies to both IPX and IPR is that, even if a challenger attacks a patent and fails, the risk of later being enjoined in a patent infringement suit is minimised for companies that are not in direct competition with the patentee, in view of the Supreme Court’s decision in eBay Inc v MercExchange, LLC.


Eric K. Steffe counsels domestic and foreign clients in various matters involving biotechnology patent law. He has significant experience in handling ex parte and inter partes patent re-examinations on behalf of clients, and counsels clients involved in inventorship disputes, interferences, oppositions, and reissue proceedings. He has performed numerous due diligence investigations, including patentability and freedom to operate studies, on behalf of clients seeking to market products, form research collaborations, and best position themselves to attract financing.


www.worldipreview.com


Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6  |  Page 7  |  Page 8  |  Page 9  |  Page 10  |  Page 11  |  Page 12  |  Page 13  |  Page 14  |  Page 15  |  Page 16  |  Page 17  |  Page 18  |  Page 19  |  Page 20  |  Page 21  |  Page 22  |  Page 23  |  Page 24  |  Page 25  |  Page 26  |  Page 27  |  Page 28  |  Page 29  |  Page 30  |  Page 31  |  Page 32  |  Page 33  |  Page 34  |  Page 35  |  Page 36  |  Page 37  |  Page 38  |  Page 39  |  Page 40  |  Page 41  |  Page 42  |  Page 43  |  Page 44  |  Page 45  |  Page 46  |  Page 47  |  Page 48  |  Page 49  |  Page 50  |  Page 51  |  Page 52  |  Page 53  |  Page 54  |  Page 55  |  Page 56  |  Page 57  |  Page 58  |  Page 59  |  Page 60  |  Page 61  |  Page 62  |  Page 63  |  Page 64