Methods for Challenging U.S. Granted Patents

If you or your company have concerned or foresee a threat of potential litigation from a US patent owner, there are presently three (3) primary avenues to challenge the validity of the US patent outside of a Federal courtroom and within the United States Patent and Trademark Office (USPTO). The three avenues are: Post-Grant Review, Inter Partes Review, and Ex Parte Reexamination. The differences there between and key features of each are summarized in the Table below. One key difference, for example, is that Post Grant Review is available to attack patent validity on any basis while Inter Partes Review and Ex Parte Reexamination are limited to novelty/obviousness challenges based on printed publications.

If you or your company have concerns over any third party’s patent, please contact a member of our US Team to discuss your concerns.

SUMMARY OF U.S. POST-GRANT PATENT CHALLENGE PROCEEDINGS
	Post-Grant Review	*Inter Partes* Review	*Ex Parte* Reexamination
Expected Costs	175-250,000+ USD	100-200,000+ USD	20-50,000+ USD
Expected Timeframe	12-18 months with an aim of under 12 months.	18-24 months	2-3 years
Who can initiate proceeding?	Any third party except for a plaintiff challenging validity of the subject patent in a US court.	Any third party except for a plaintiff challenging validity of the subject patent in a US court.	The Patent Owner or a Third Party, including USPTO Director.
Window for Filing	No later than 9 months after patent issuance or issuance of reissue (patent must have an effective filing date on or after March 16, 2013).	Later of: (i) on or after 9 months after patent issuance or issuance of reissue; or (ii) termination of Post-Grant Review. ¹	Anytime during enforceability of patent (may be 6 years past expiration due to past damages).
Basis for Attacking Validity of the Subject Patent(s)	Any ground (except for failure to comply with the best mode requirement).	35 USC § 102 (novelty) and/or 35 USC § 103 (obviousness) based upon one or more patents and/or printed publications.	35 USC § 102 (novelty) and/or 35 USC § 103 (obviousness) based upon one or more patents and/or printed publications.
Standard to Overcome for Initiating Proceeding	“More likely than not” that at least one of the claims challenged is unpatentable.	A “reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim.	Substantial New Question of Patentability.
Anonymity	No, all real parties in interest must be identified.	No, all real parties in interest must be identified.	Yes, can be anonymous.
Extent of Estoppel	After a final decision (by PTAB), the petitioner, third party, or privy of the petitioner is estopped from challenging the patent(s) in the USPTO, ITC or district court on any ground the real party of interest raised or which could have been reasonably raised in the Post Grant Review. ²	After a final decision (by PTAB), the petitioner, third party, or privy of the petitioner is estopped from challenging the patent(s) in a district court on any ground the real party of interest raised or which could have been raised in the Inter Partes Review. ³	None officially, but may be tougher to overcome similar arguments which failed downstream.
Effect on Concurrent Proceeding	If a court case for invalidity was filed, a Post Grant Review cannot be filed; if a Post Grant Review is filed, then later filed court proceeding automatically stayed.	If a court case for invalidity was filed, an Inter Partes Review cannot be filed; if an Inter Partes Review is filed, then later filed court proceeding automatically stayed.	No effect.
Third Party Involvement following initiation	Post grant Review provides for limited discovery, a Petitioner reply, and an oral hearing before a three judge panel before a decision on the merits.	Inter Partes Review provides for limited discovery, a Petitioner reply, and an oral hearing before a three judge panel before a decision on the merits.	None, unless the patent owner files a statement which rebuts the requester’s assertion(s) of a substantial new question of patentability. ⁴
USPTO Branch Handling Proceeding	Patent Trial and Appeal Board (PTAB)	Patent Trial and Appeal Board (PTAB)	Different Examiner(s) from that of Examination

[1] Also, note per 35 U.S.C. 315(b), an Inter Partes Review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

[2] See also 35 U.S.C. 325(e)(2) stating “The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.”

[3] See also 35 U.S.C. 315(e)(2) stating “The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”

[4] See 37 C.F.R. 1.535.