Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

Practical Pendency of IPR to be 18-24 Months

In promulgating the new Inter Partes Review (IPR) proceeding as part of the America Invents Act (AIA) Congress hoped to address a major criticism of inter partes patent reexamination (IPX), namely, the significant length of time necessary to conclude these proceedings.

IPX first includes an examination phase handled by patent examiners of the Central Reexamination Unit. Once the examination phase concludes, an IPX may be appealed to the Board of Patent Appeals and Interferences (BPAI). Thereafter, an IPX may be further appealed to the CAFC. This three-phase process cannot be navigated quickly. That is to say, IPXs fully contested through CAFC appeal remain pending some 6-8 years from the time of the initial request.

Pendency is an important factor for challengers considering alternatives for quickly resolving a patent dispute. Likewise courts will often cite to the significant delay of IPX as justification to deny a request to stay ongoing litigation proceedings pending a parallel IPX.

To address this problem, Congress mandated that IPR be concluded at the USPTO with in 12 months, extendable to 18 months if the Director is able to show cause for extension (§ 316 (11)). Yet, is it realistic to expect a 12 month duration?

Below is a chart showing a rough estimate of an IPR timeline

As shown in the above timeline, while the IPR stature requires that the new Patent Trial and Appeal Board (PTAB) complete the IPR in 12-18 months, there is at least a 6 month front end to the proceeding.

Click here for McKeown’s full article originally published on his Patents Post Grant blog.

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Advanced Micro-Fabrication Equipment has requested reexamination of Lam Research’s U.S. Patent No. 5,998,932 related to plasma processing equipment (see ex parte Request No. (6)). Lam has sued AMFE for infringement of the Taiwanese counter-part patent and might soon sue in the United States for infringement of the ‘932 patent.

Reexamination was also requested for a Xerox patent (see inter partes Request No. (5)), but the identity of the requester is not shown in the PTO records.

 The following inter partes requests were filed:

(1)         95/001,834 (electronically filed) – U.S. Patent No. 7,891,376 entitled DOUBLE SEAT VALVE FOR SEPARATING MEDIA and owned by Südomo Holding GmbH.  Filed November 28, 2011, by SPX.  The ‘376 patent is currently the subject of a litigation styled Südomo Holding GmbH v. SPX et al.  (Case No. 1:11-cv-561-SLR (D. Del.)).

(2)         95/001,835 (electronically filed) – U.S. Patent No. 7,952,483 entitled HUMAN MOVEMENT MEASUREMENT SYSTEM and owned by Motiva LLC.   Filed November 29, 2011.

(3)         95/001,836 (electronically filed) – U.S. Patent No. 6,480,962 entitled SYSTEM AND METHOD FOR PROTECTING A CLIENT DURING RUNTIME FROM HOSTILE DOWNLOADABLES and owned by Finjan Inc.  Filed November 29, 2011.

(4)         95/001,837 (electronically filed) – U.S. Patent No. 7,678,843 entitled DENTAL RESTORATIVE MATERIAL COMPOSITION and owned by GC Corporation.  Filed November 30, 2011, by Tokuyama Dental Corporation. 

(5)         95/001,838 (electronically filed) – U.S. Patent No. 7,769,757 entitled SYSTEM FOR AUTOMATICALLY GENERATING QUERIES and owned by Xerox.  Filed November 30, 2011.

The following ex parte requests were filed:

(1)         90/012,026 (electronically filed) – U.S. Patent No. 7,465,097 entitled FLUID DYNAMIC BEARING SYSTEM and owned by Minebea Co.  Filed November 28, 2011, by Owner.

(2)         90/012,027 (electronically filed) – U.S. Patent No. 6,835,084 entitled MEDICALLY IMPLANTABLE ELECTRICAL CONNECTOR WITH CONSTANT CONDUCTIVITY and owned byBal Seal Engineering.  Filed November 29, 2011.

(3)         90/012,028 (electronically filed) – U.S. Patent No. 7,428,168 entitled SEMICONDUCTOR MEMORY SHARING A DATA LINE SENSE AMPLIFIER AND A WRITE DRIVER IN ORDER TO REDUCE A CHIP SIZE and owned by 658868 N.B. Inc.  Filed November 30, 2011, by Owner.

(4)         90/012,029 (electronically filed) – U.S. Patent No. 6,556,488 entitled DELAY LOCKED LOOP FOR USE IN SEMICONDUCTOR MEMORY DEVICE and owned by 658868 N.B. Inc.  Filed November 30, 2011, by Owner.

(5)         90/012,030 (electronically filed) – U.S. Patent No. 7,150,499 entitled COLLAPSIBLE COVER FOR SEATING UNIT and owned by Rob Roy McGregor.  Filed December 1, 2011, byOwner.

(6)         90/012,031 (electronically filed) – U.S. Patent No. 5,998,932 entitled FOCUS RING ARRANGEMENT FOR SUBSTANTIALLY ELIMINATING UNCONFINED PLASMA IN A PLASMA PROCESSING CHAMBER and owned by Lam Research.  Filed December 1, 2011, by Advanced Micro-Fabrication Equipment.   The Taiwanese counter-part of ‘932 patent is currently the subject of a litigation between the two companies.

(7)         90/012,032 (electronically filed) – U.S. Patent No. 6,691,473 entitled APPARATUS AND METHOD FOR SEALING A VERTICAL PROTRUSION ON A ROOF and owned by Custom Seal.  Filed December 2, 2011, likely by Acme Cone or Flashco Mfg.   The ‘473 patent is currently the subject of a litigation styled Custom Seal v. Acme Cone et al.  (Case N0. 3:11-cv-00537 (N.D. Ohio)).

(8)         90/012,033 (electronically filed) – U.S. Patent No. 6,830,269 entitled APPARATUS AND METHOD FOR SEALING A VERTICAL PROTUSION ON A ROOF and owned by Custom Seal.  Filed December 2, 2011, likely by Acme Cone or Flashco Mfg.   The ‘269 patent is currently the subject of a litigation styledCustom Seal v. Acme Cone et al.  (Case N0. 3:11-cv-00537 (N.D. Ohio)).