1 1 AIPLA Firm Logo American Intellectual Property Law Association Counseling Clients re New USPTO...
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1 1 AIPLA Firm Logo American Intellectual Property Law Association Counseling Clients re New USPTO Post Grant Proceedings and Interplay with Litigation
1 1 AIPLA Firm Logo American Intellectual Property Law
Association Counseling Clients re New USPTO Post Grant Proceedings
and Interplay with Litigation Materials Prepared by John B. Pegram
Fish & Richardson P.C. _____ AIPLA IP Practice in Europe
Committee March, 2014
Slide 2
18 Month PTAB Timeline 2
Slide 3
1. Preparation Petitioner Must act quickly if infringement
litigation is possible. Detailed petition is required, Claim charts
are required, and Expert declarations are common. Patentee Must be
prepared in advance, if possible, Little time to prepare responses.
Both parties: Page limits on all filings can be a problem. Multiple
petitions. 3
Slide 4
2. Threshold Issues for the Petitioner Reasonable Likelihood of
Success IPR or CBM has been instituted in almost all petitions
evaluated In many cases, granted on only a subset of grounds or
petitioned claims BUT recently there have been a number of IPR
petitions denied in full. PTAB is willing to consider rejections
based upon references previously considered by PTO. 4
Slide 5
Redundancy multiple grounds, which are presented in a redundant
manner by a petitioner who makes no meaningful distinction between
them, are contrary to the regulatory and statutory mandates, and
therefore are not entitled to consideration. Liberty Mutual
Insurance Co. v. Progressive Casualty Insurance Co., slip op.
CBM2012-00003 (PTAB Oct. 25, 2012) (requiring substantial reduction
from 422 grounds of rejection based on 10 references for 20
claims). 5
Slide 6
3. Initial Tactics of the Patentee Two opportunities to respond
to the Petition: Preliminary Response Opposing institution of
proceeding Main Response & Amendment of Claims Claim
construction tactics Broadest reasonable interpretation for
non-expired patents 6
Slide 7
4. Claim Amendments Claim amendments may be offered by Motion
to Amend, at the time of the Patentees Response, following
institution of the proceeding. Only one opportunity to amend, and
The number of claims cannot be increased without a showing of good
cause. 7
Slide 8
Claim Amendments The Patentee must make a showing of patentable
distinction over the prior art: (a) specifically identifying
features added to substitute claim vs. challenged claim; and (b)
presenting technical facts and reasoning about those feature(s),
including construction of new claim terms sufficient to demonstrate
patentability. The Patentee can rely on expert testimony to
demonstrate significance of added features A mere conclusory
statement by counsel is on its face inadequate. Idle Free Systems,
Inc. v. Bergstrom, Inc., slip op. IPR2012- 00027 (PTAB June 11,
2013) 8
Slide 9
Claim Amendments Petitioner can oppose a motion to amend --with
specific evidence and reasoning, including citation and submission
of any applicable prior art and reliance on declaration testimony
of technical experts, to rebut the patent owners position on
patentability of the proposed substitute claims Opposition is not
limited to prior art identified in original petition. 9
Slide 10
Claim Amendments Lessons learned: Limited ability to add new or
amended claims Consider reissue as an alternative Requires Patentee
to distinguish prior art of record AND closest prior art known to
patent owner Potential admissions, and Arguments might compromise
unamended claims Petitioner may oppose based on art not of record
Possibly, Petitioner can improve its case 10
Slide 11
5. Discovery Requests Four types of discovery: Mandatory
initial disclosures, Routine discovery, Additional discovery, and
Discovery by agreement of the parties. 11
Slide 12
Routine discovery Production of exhibits cited in a paper or
testimony Cross-examination of opposing declarants By deposition
Non-cumulative information that is inconsistent with a position
advanced during the proceeding 37 C.F.R. 42.51(b)(1)(iii) 12
Slide 13
Additional Discovery PTAB must authorize discovery beyond
routine discovery 35 U.S.C. 316(a)(5) and 37 C.F.R. 41.51(b)(2):
moving party must demonstrate that additional discovery sought is
in the interest of justice 13
Slide 14
Additional Discovery 5-part test for establishing in the
interest of justice (1) More than a possibility and mere allegation
that something useful will be found, (2) Not merely seeking early
identification of the other partys litigation positions, (3) Lack
of ability to generate equivalent information by other means, (4)
Easily understandable requests, and (5) Requests are not overly
burdensome to answer. See Garmin International Inc. v. Cuozzo Speed
Technologies LLC, slip. op. IPR2012-00001 (PTAB Mar. 5, 2013)
14
Slide 15
6. Oral Arguments 15
Slide 16
The Panel 3 Administrative Patent Judges Great ability in the
law and the technology 16
Slide 17
Oral Argument Format Usually 1 hour allocated to each of
Patentee & Petitioner Sequence: If no amendments: Petitioner
Patentee Petitioner If claims are amended: Patentee Petitioner -
Patentee Demonstratives are permitted Ask for video 17
Slide 18
Oral Hearing: Attributes of a PTAB Hearing Adversarial, trial
proceeding PTAB is the fact-finder Policy Focused Q&A format
All issues are eligible for consideration Questions often solicit
detailed information about the record, exploring technical and
legal issues Interplay between the judges on the panel during
questioning Extensive references to declarations and depositions
Claim construction issues often dominate 18
Slide 19
7. Settlement Yes, you can settle a post grant proceeding;
However, the PTAB has refused to end some AIA reviews that have
reached an "advanced stage," even though the parties had settled.
Only the Petitioner is dismissed and the proceeding continues with
the Patentee. In Interthinx v. Corelogic, Case CBM2012-00007 (Jan.
30, 2014): Settlement was after full briefing and before the
hearing, and All claims were eventually cancelled. 19
Slide 20
8. Relationships with parallel litigation Stays As of December
13, 2013: 74 motions for stay were granted, and 29 motions for stay
were denied. A frequently updated listing of district court orders
on motions to stay is provided at
fishpostgrant.com/staysfishpostgrant.com/stays 20
Slide 21
8. Relationships with parallel litigation Some principal stay
considerations Will a stay simplify the issues in question and
streamline the trial? Will all asserted claims be addressed by the
PTAB? Is discovery is complete and has a trial date has been set?
Will a stay or denial unduly prejudice the nonmoving party? Will a
stay present a clear tactical advantage for the moving party? Will
a stay or denial reduce the burden of litigation on the parties and
on the court? 21
Slide 22
8. Relationships with parallel litigation Estoppel The
petitioner in an inter partes review of a claim in a patent that
results a final written decision, or the real party in interest or
privy of the petitioner, may not assert in district court or the
ITC any ground that the petitioner raised or reasonably could have
raised during that inter partes review. 35 U.S.C. 315(e)(2).
Statistics suggest that potential Petitioners are not very worried
about estoppel. It is unclear whether estoppel applies to grounds
that the PTAB has refused to consider when instituting review.
22
Slide 23
8. Relationships with parallel litigation Protective order
issues Some Protective Orders in District Courts limit involvement
of attorneys or firms in prosecution of related patents. Object is
to avoid amendment of claims based on confidential information
about an opponents product or process. This limitation may be
applied to PTAB proceedings, because claims can be amended. 23
Slide 24
8. Relationships with parallel litigation Timingthe race to a
judgment Cancellation of claims by the PTO before final judgment on
appeal is effective, in spite of courts conclusion that the patent
had not be shown to be invalid in the court proceedings. See
Fresenius USA, Inc. v. Baxter Intern., Inc., 721 F.3d 1330 (Fed.
Cir. 2013) (reexamination). 24
Slide 25
Take-Away PTAB Proceedings are different from: Patent
prosecution, Reexamination, Patent interferences, Court litigation,
and Oppositions in other countries. PTAB Proceedings require:
Specialized skills, and Experience. 25