Congress’ tinkering with the U.S. patent laws has kept Goodwin Procter partner Eleanor Yost quite busy in the past few months. A member of the firm's intellectual property group, Yost regularly represents clients before the U.S. Patent and Trademark Office and the International Trade Commission on IP matters. With the roll out of key changes in the way patents can be challenged at the patent office, Yost spends a lot of time educating and preparing clients on how they can best take advantage of the new regulations brought on by the 2011 America Invents Act.
A graduate of St. John’s University School of Law, Yost, who is based in Washington, D.C., was recently promoted partner. She has established her reputation in the IP area by frequently speaking and writing about cutting-edge issues in intellectual property and technology law. She is the lead author of a tactical guide for practitioners appearing in post-grant proceedings before the USPTO’s Patent Trial & Appeal Board (PTAB).
Lawdragon: There’s no question that the biggest news this year for the patent community is the adoption of rules governing a new administrative proceedings at the patent office called post-grant proceedings, where even disinterested third parties can challenge the validity of an already issued patent. Can you educate us a little bit about why this is important, and how dramatically it could affect the patent practice and businesses and inventors in general?
Eleanor Yost: Before the new post-grant proceedings, among them Inter Partes Review, Post Grant Review, and the Transitional Program for Covered Business Method Patents, an accused patent infringer could only challenge the validity of a patent in federal district court or in a slow-moving Patent Office reexamination proceeding. These were not great options for a couple of reasons. In court, a patent is presumed valid – so a challenger has an uphill battle right from the start. In the Patent Office, a patent is not presumed valid, but a reexamination proceeding could take so many years that any co-pending litigation was over long before the Patent Office made a decision.
That has all changed now. Patent challengers can use the new post-grant proceedings at the Patent Office to obtain a decision on a patent’s validity in less than 18 months, and the cost is an order of magnitude lower than a full blown litigation. In a lot of cases, a post-grant proceeding will in many cases be the faster, cheaper, and better option for patent challengers. These proceedings are a great new weapon particularly for companies that are frequently accused of patent infringement.
LD: Aside from the post-grant proceedings, what other major changes have been adopted by the patent office since the enactment of America Invents Act in September 2011?
EY: The other big AIA change is the U.S.’s transition from a first-to-invent to a first-to-file patent system. Before the act, an inventor who came up with an invention first was entitled to a patent over any later inventors – even if the later inventor filed a patent application first. But most other countries will award a patent to the person who filed the patent application first, whether or not they were the first to invent. The AIA attempts to harmonize U.S. law with the rest of the world by moving us to a first-to-file system. This provision was fairly controversial at the time, because a lot of folks argued that a race to the Patent Office might disadvantage small companies and solo inventors. Now that the AIA has been enacted, there is a lot more pressure on patent counsel to remind all clients, big and small, that patent applications should be filed early.
LD: What are the differences between challenging or defending a patent before the patent office and before a court? Do you have to apply different litigation skills for different venues?
EY: There are some big differences. Different claim construction standards. Different discovery rules. Different trial formats. For example, the IPR hearing is not a trial in the traditional sense – there are no witnesses on the stand, and no juries. It is really a hearing on claim construction and summary judgment plus an appellate oral argument -- all rolled into one. Each side in an IPR hearing is given just one hour to present its case. During the presentation, three technically-savvy judges pose pointed questions to counsel to flesh out all of the arguments. It is very hard work. To be successful, PTAB counsel must be much more than just talented litigators. They must also be intimately familiar with PTAB practice and ready to face a panel that knows the record as well as they do.
LD: What made you focus in this area of law?
EY: Working on post-grant trial proceedings at the USPTO is a perfect fit for me. Serendipitous, even. There is nowhere else I can bring together – all in one place – my experience litigating patents in federal court and the ITC with my experience prosecuting patents before the USPTO. It has also been a lot of fun. My firm, Goodwin Procter, is one of the few firms in the world that has experience representing patent owners and challengers in IPR and Covered Business Method proceedings, so our team is constantly brainstorming innovative ways to leverage the proceedings to help our clients. There are not many areas of law where something you come up with hasn’t been tried before. When a strategy works for the first time, it is thrilling. The opportunity to be creative in this practice is a big, big draw.
LD: What was your favorite subject in law school?
EY: Patent Claim Drafting. It sounds dry and terribly boring, but I really loved it. The class had maybe six or seven students and we sat in a faculty conference room rather than a real classroom. It was one of the only law school courses that was completely hands-on. I use the things I learned there to this day.
LD: You just had your first year anniversary of being named partner. How has your professional life changed? What was the hardest transition for you?
EY: It has been a great experience. There are a host of new responsibilities, but also amazing opportunities. The hardest transition was probably understanding the financial and tax implications, but I was lucky to have a lot of help.
LD: What do you do for fun?
EY: I spend my downtime chasing my three-year old, Jonathan. Before he came along, I don’t think I would have called coloring, playing with trains, and driving matchbox cars “fun,” but now, there’s nowhere I’d rather be.