Patents Post-Grant: Tech Giants Weigh in On USPTO Post Grant Rule Making Effort

Patents Post-Grant: Tech Giants Weigh in On USPTO Post Grant Rule Making Effort

Group 2 Comments on AIA Implementation Due to USPTO Tomorrow

As pointed out last week, the USPTO has been busy fashioning new rules to implement the various provisions of the Leahy-Smith America Invents Act (AIA). Comments on Group 2 Rules, which include Inter PartesReview & Post Grant, must be submitted by November 15th.

Last week, Cisco, Google, Verizon and Intuit submitted joint comments (here) directed solely to the implementation of post grant proceedings, namely, Inter PartesReview (IPR) and Post Grant Review (PGR). Not surprisingly, these tech giants (i.e., targets of serial patent infringement suits) are especially supportive of post grant mechanisms as an alternative to traditional litigation. The Group's comments encourage the Office to adopt liberal standards for initiation of IPR and PGR, limit the potential estoppel affect of a concluded proceeding, and provide procedural flexibility for petitioners.

The Groups comments suggest that the new standards for inititiating IPR and PGR are not so different from the previous SNQ standard of inter partes patent reexamination, and should be set to be "relatively low" standards. The comments explain,

[I]t bears emphasis that the thresholds [for IPR and PGR]are just that: initial standards of review that merely determine whether a post-issuance review will be commenced, not whether the petition is ultimately meritorious. Thresholds that are too onerous will nip the new processes in the bud.

As a practical matter, the new thresholds should not necessarily produce a higher rejection rate than that which resulted under the "substantial new question" threshold for inter partes reexamination. Although some have described the new thresholds as "elevated," the difference is one of kind and not of degree. Under the "substantial new question" inquiry, the PTO looked for the existence of a new question that had not previously been addressed by the Office. If "a patent or printed publication . . . present[ed] a new, non-cumulative technological teaching that was not previously considered and discussed on the record" during the initial examination, the petition met the threshold for review. The new thresholds focus on a different purpose-one of improving patent quality across the wide spectrum of issued patents. No longer is the identification of a new question the critical factor; rather, the focus is on whether review could improve patent quality by altering "at least 1 of the claims challenged in the petition" or by resolving "a novel or unsettled legal question that is important to other patents or patent applications." Indeed, under this latter standard, no new question need be presented at all

(internal citations omitted)

Here, the Group seems to argue that although the old SNQ standard for inter partes patent reexamination is different in terminology and goal relative to the new standards for IPR and PGR, it is argued that the new standards are not necessarily higher hurdles. Perhaps a better way to look at the changed standard is that going forward, the PTO will review submissions from both sides before deciding to grant the petitioner's request. So, while the tests for IPR and PGR are couched in different terms, the hurdles presented need not be higher per se - the records will just be more developed.

With respect to the "real party in interest" and "privy" aspects of the IPR and PGR estoppel statutes, the Group suggests that the PTO follow the control test. In this regard, the Group proposes the following definitions:

Real party in interest means an entity who controlled the filing of the petition for post-grant review or inter partes review, provided the entity is eligible to file a petition for post-grant review under 35 U.S.C. § 321(a) or inter partes review under 35 U.S.C. § 311(a). Mere contribution of funds or advice regarding the petition is not sufficient to become a real party in interest, nor is mere connection to the petitioner through mutual membership in a joint defense group or other association.

Privy of the petitioner means an entity who assumed control of the post-grant review or inter partes review by unilaterally making the petitioner's strategic decisions, including which prior art to submit, what legal theories to advance, and whether to seek further review. Mere contribution of funds or advice is not sufficient to become a privy of the petitioner, nor is mere connection to the petitioner through mutual membership in a joint defense group or other association.

The Group seems concerned with the new language of § 315(2) that extends estoppel beyond that of the third party requester. The current version of 315 (applied to inter partes patent reexamination) attaches to "requesters" only and does not extend to privies. Contrast that with the new statute language of petitioner. . . or real party in interest or privy of the petitioner.

Finally, the Group comments on a host of provisions relating to discovery, amendment and petition options. These comments and more can be found (here).

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