Post Grant and Inter Partes Reviews Now Being Filed

by Dennis Crouch

48–hours after opening its doors, the Patent Trial & Appeal Board has new business.  According to the USPTO, ten new requests for inter partes reviews have been filed in the first two days as well as three post-grant review requests of financial business method patents (“covered business methods”).  Interestingly, four of the requests were filed by the non-practising entity Intellectual Ventures against patents owned by Xilinix. U.S. Patent Nos. 7,566,960, 7994609, 8,058,897, and 8,062,968.  Patrick Anderson has more history regarding the IV versus Xilinix fight at his GametimeIP blog.

On September 16, 2012, the USPTO's new inter partes reviews system became effective.  These reviews involve a complete redesign of inter partes reexaminations that can no longer be filed.  The new post-grant review system allows for an expanded scope of challenges.  Generally, PGR will only be available to challenge patents issued under the new first-to-file rules of the AIA. However, under the AIA, the PGR system can currently be used to challenge financial business method patents that fit the description provided by the statute.

The three business method reviews each focus on subject matter eligibility of the business method claims. Liberty Mutual challenged two such patents, including the following claim from U.S. Patent No. 6,553,350.

17. A method for determining a price of a product offered to a purchasing organization comprising:

arranging a hierarchy of organizational groups comprising a plurality of branches such that an organizational group below a higher organizational group in each of the branches is a subset of the higher organizational group;

arranging a hierarchy of product groups comprising a plurality of branches such that a product group below a higher product group in each of the branches in a subset of the higher product group;

storing pricing information in a data source, wherein the pricing information is associated, with (i) a pricing type, (ii) the organizational groups, and (iii) the product groups;

retrieving applicable pricing information corresponding to the product, the purchasing organization, each product group above the product group in each branch of the hierarchy of product groups in which the product is a member, and each organizational group above the purchasing organization in each branch of the hierarchy of organizational groups in which the purchasing organization is a member;

sorting the pricing information according to the pricing types, the product, the purchasing organization, the hierarchy of product groups, and the hierarchy of organizational groups;

eliminating any of the pricing information that is less restrictive; and determining the product price using the sorted pricing information.

Most of the challenged patents are in the electronic, software, and business method market areas.  However, three patents stem from USPTO Technology Center 1600 (biochemistry and organic chemistry).

  • Patent No. 6,258,540 (non-invasive prenatal diagnosis using maternal plasma owned by Oxford University (UK) Isis Innovation) challenged by Ariosa Diagnostic.
  • Patent Nos. 7,713,698 and 7,790,869 (Columbia University patents on “massive parallel methods for decoding DNA and RNA”) challenged by Ilumina.

Other filers include Garmin Int'l (6,258,540); Nichia Corp. (6,653,215); and Macauto USA (6,422,291).

You can search the PTO post grant submissions here: https://ptabtrials.uspto.gov

 

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8 thoughts on “Post Grant and Inter Partes Reviews Now Being Filed”

  1. 8

    The new U.S. post-grant procedures are much faster and incorporate elements of U.S. litigation. They will be conducted before a newly-formed Patent Trial and Appeal Board (PTAB), and decisions may be directly appealed to the Federal Circuit. The new procedures lack the European opposition’s simplicity. Instead, strict rules govern the form and sequence of briefs, deadlines and discovery. Post-grant procedures require a high filing fee (at least $27,200 depending on the number of claims). Legal fees are likely to be higher than in oppositions, and incurred sooner, but are still much less than those typical in U.S. district court litigation.

  6. 3

    From Gametime IP:

    link to gametimeip.com

    IV famously obscures the patent ownership records in an elaborate series of holding companies. IV very likely controls, directly or indirectly, the “technical” patent owners. However, the legal team appears to believe the separation–on paper–of patent ownership requires the California court to dismiss the case. Effectively, this frees IV to take its patent fight back to Delaware where most of its cases are already on file. As Xilinx’s new lawsuit demonstrates, this strategy boxes IV into a situation where they were either lying when they told Xilinx that IV owns the patents, or they’re lying to the court by saying that IV does not.

    Another reason why patent ownership must be made crystal clear at all times.

    To the extent that IV wants to make arguments (e.g., under 101 or any other statute) that a particular defendant’s patent is invalid or ineligible, IV must be estopped from rebutting that argument when ANY of its currently owned patents are challenged under those same arguments. Any other result is simply unfair. Patentees can not have it both ways.

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