Ways to challenge a US patent

[tati]

Hi everyone

Under the AIA, there are now three ways to (post-grant) challenge a US patent: 1) Post-grant review, 2) Inter partes review and 3) Ex parte reexamination.

Not being US-based, but interested to get a better view of the US patent landscape, can someone explain in brief what is the reason for the existence of three different procedures for invalidation?

Additionally, what is the proper way of naming a patent challenge which undergoes trial in a district court (as is the usual case for drug patents challenged within para-IV procedure)? Plainly, a civil action? As I understand this, those trials are distinct from all the three procedures described above, which are conducted within the USPTO.

Apologies if those questions seem...obvious, but I can not find any clear and concise information by plain internet searching.

[still_learnin]

Take a look at this:

http://fishpostgrant.com/compare-all/

Hi everyone

Under the AIA, there are now three ways to (post-grant) challenge a US patent: 1) Post-grant review, 2) Inter partes review and 3) Ex parte reexamination.

Not being US-based, but interested to get a better view of the US patent landscape, can someone explain in brief what is the reason for the existence of three different procedures for invalidation?

Additionally, what is the proper way of naming a patent challenge which undergoes trial in a district court (as is the usual case for drug patents challenged within para-IV procedure)?

Always in federal district court, as opposed to state court. Usually a suit for patent infringement, though sometimes the about-to-be-accused infringer files a declaratory judgment action for invalidity.

You asked about drug patents. The Hatch Waxman act creates a variation of an infringement/DJ suit in the specific context of generic pharmaceuticals. Not my specialty, but I think these are the basics. Hatch Waxman allows a branded drug patentee to file a patent infringement suit when the generic manufacturer gets ANDA approval for the generic drug -- even though there hasn't yet been any conventional infringing activity. If the branded drug patentee does not file for infringement, the generic manufacturer can file a DJ for invalidity.

[tati]

Very useful table, thank you for the link 

Also thanks for the comments on Hatch Waxman act. I can find more information with the proper wording now.

[CurtisJabarra]

Quick question:  I have a patent on a 4-legged chair.  If someone invents a 3-legged chair, all other factors being equal, does the 3-legged chair infringe me?

[Robert K S]

Quick question:  I have a patent on a 4-legged chair.  If someone invents a 3-legged chair, all other factors being equal, does the 3-legged chair infringe me?

By "invents" I think you mean "makes" or "uses" or "sells" or "imports" since these are the infringing activities.  ("Inventing" is not an infringing activity.)  There wouldn't seem to be literal infringement, since a chair having three legs doesn't read on a claim requiring a chair with four legs, but there is something called the doctrine of equivalents.  See Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950).  Thus, even absent literal infringement, you might have some success in arguing that a three-legged chair performs substantially the same function in substantially the same way to yield substantially the same result as your patented four-legged chair, and therefore your patent is infringed under the doctrine of equivalents.  Then again, you might not.

[still_learnin]

Quick question:  I have a patent on a 4-legged chair.  If someone invents a 3-legged chair, all other factors being equal, does the 3-legged chair infringe me?

There wouldn't seem to be literal infringement, since a chair having three legs doesn't read on a claim requiring a chair with four legs ...

Where literal infringement means the accused device/method/system includes each limitation in the claim.

You say

I have a patent on a 4-legged chair

which we read as "claim to a chair comprising 4 legs." The accused device -- 3 legs -- does not include the 4th leg required by your claim. Thus, no literal infringement.

[CurtisJabarra]

Thanks Robert, thanks Still!  I'm still learning as well.
So, I assume the obverse of that is true in that:  If my chemical patent is comprised of A+B+C, and the infringing compound is only comprised of A+B, then there is NO literal infringement, but possibly could be under DOE.

[still_learnin]

Thanks Robert, thanks Still!  I'm still learning as well.
So, I assume the obverse of that is true in that:  If my chemical patent is comprised of A+B+C, and the infringing compound is only comprised of A+B, then there is NO literal infringement, but possibly could be under DOE.

I don't see how that situation is the "obverse." Basic rule for literal infringement -- must practice all elements -- applies and C is missing so no literal infringement, it's possible there is DoE.

[chenheng222]

One more question, shall we submit invalidity procedure through ITC or PTAB? So what's the difference between these two ways?

[MYK]

One more question, shall we submit invalidity procedure through ITC or PTAB? So what's the difference between these two ways?

It depends on what you are doing.  The ITC is for filing a lawsuit to block importation of an infringing product, if you are the patent owner or perhaps a licensee.  If you want to invalidate someone else's patent then you would usually file an ex parte reexam or inter partes review or PGR with PTAB.  You could also file a lawsuit in federal district court to invalidate a patent.  I don't believe (but may be incorrect) that you can file such a suit at the ITC, although it could be raised as a defense against the claim of infringement there.

[lazyexaminer]

Also note that ITC decisions have no preclusive effect elsewhere re: patent issues so I'd rather win at the PTO or courts.

Some think this is an incorrect result, especially after the recentish Supreme Court TTAB case B&B Hardware, but you'd have to overcome CAFC precedent.

[chenheng222]

thanks for your reply! clear