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American Intellectual Property Law Association

EMERGING TRENDS IN INTER PARTES REVIEW PRACTICE

TOM ENGELLENNERPepper Hamilton, LLP

IP in Japan Committee MeetingAIPLA Annual Meeting, Washington D.C.

October, 2013

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Emerging Trends in Inter Partes Review

• New mechanisms for challenging patents under the AIA

• Key features of Inter Partes Review (IPR) proceedings

• Some statistics for the first year of IPR availability

• Exemplary cases

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The Post-AIAWorld

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The America Invents Act

• The America Invents Act (AIA) established several new mechanisms for challenging issued U.S. Patents:

– Inter partes review– Post grant review– Cover business method review– Derivation proceedings

• All of these new proceedings are conducted before a new “Patent Trial and Appeal Board.”

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The America Invents Act

IPR CBM PGR

Grounds 102 & 103 but only patents and printed publications

101 (ineligible subject matter)112 (enablement or written description) &all102/103 prior art

101 (ineligible subject matter)112 (enablement or written description) &all102/103 prior art

Timing Pre-AIA patents:AnytimePost-AIA patents:9 months after issue and after termination of PGR challenges

Pre-AIA patents:Anytime if sued or threatened by PO.Post-AIA patents:9 months after issue and after all PGR challenges are terminated

Available only forPost AIA patents:Must be filed within9 months of grant

Standard Receivable likelihood success

More likely than not that a claim is invalid

More likely than notthat a claim is invalid

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The America Invents Act

IPR

Grounds 102/103 patents and publications

Standard of review

Reasonable likelihood ofsuccess

Participation Full

Estoppel? Yes

Decision Maker

New “Patent Trial and Appeal Board”

Ex Parte

Grounds 102/103 patents and publications

Standard of review

Substantial new question of patentability

Participation Very limited

Estoppel? No

Decision Maker Central Reexam Unit

The AIA also retained the old “ex parte reexamination” procedure largely untouched

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Key Features ofIPR proceedings

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Key Features of IPR Proceedings

• Initiated by a Petition (and fee payment):

– Formal recitations– Must identify all challenged claims and recite all

grounds for review– 60 pages or less, 14pt. font, double spaced

• Must be accompanied by all supporting evidence– PTAB expects in most cases the evidence will

include one or more expert declarations.– What does a reference disclose? What does the

reference mean to a person skilled on the art? Why a feature in inherent in the prior art?

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Key Features of IPR Proceedings

• Patent Owner (PO) Initial Response (optional):• Decision to Initiate Proceedings• PO takes discovery of Petitioner’s Expert(s)• Patent Owner Response (with PO’s Expert Declarations)

and Motion to Amend Claims (only one opportunity)• Petitioner takes discovery of PO’s expert(s).• Petitioner’s Reply (w/ rebuttal declarations) and

Opposition to Amendments• PO discovery of rebuttal experts• PO’s Reply• Trial (Oral Hearing) ~~~~~> Final Written Decision

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IPR STATISTICS9/16/2012 to 9/15/2013

Special thanks to Yasser El-Gamal, Ehab Samuel and Peter Siddoway who compiled some of the following data for the AIPLA

http://www.aipla.org/learningcenter/live_webinars/Pages/Wednesday,-October-9,-2013-Webinar.aspx

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Statistics

• 483 petitions filed in the first year

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Statistics

• Most IPR petitions have been against NPEs

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Statistics

• About 6% of IPRs involve Japanese companies

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Statistics

• About 8% (37) of the IPR petitions have resulted in settlements (20 before, and 17 after, institution)

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Statistics

• 403 of the 483 petitions (83%) were related to pending patent litigation between the same parties

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Statistics

• The 403 Petitioners involved in related litigation has filed for stays 159 times

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Statistics

In most of the 180 decisions on petitions so far, a declaration has been presented by the petitioner

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Exemplary cases

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IPR-2013-00107 Kyocera v ADC Tech

• Kyocera was sued in Fed. Dist. Ct. on August 14, 2012• Kyocera filed Petition for IPR on January 11, 2013• Notice of Defective Petition January 16, 2013 (title page)• Patent Owner Response filed April 16, 2013• Notice of Defective Response April 22, 2013 (14 pt. font)• Trial Instituted May 23, 2013• Settlement August 22, 2013

“This trial was instituted on May 23, 2013, and is still in the preliminary stages. The parties have advised the Board that the co-pending district court litigation is being dismissed and the parties have represented that no other actions involving US Patent 8,103,313 are pending. Under these circumstances, the Board determines that it is appropriate to terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72.”

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IPR-2013-00129 & 130 Komatsu v. Hagenbuch

• Komatsu was sued in Fed Dist Ct by Hagenbuch• Komatsu filed Petition 129 on 1/29/13 (14 grounds)• Komatsu filed Petition 130 on 1/29/13 (8 more grounds)• Both petitions were to the same patent concerning “black

box” recording vital signs of a vehicle during operation

• Settled: April 30, 2013

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IPR-2013-00412-424 Toyoda v AVS LLC

• American Vehicular Sciences (AVS) sued Toyoda in E. Dist. Texas in July 26, 2012.

• Toyoda filed 13 IPR petitions against AVS on July 12, 2013, challenging the 12 asserted patents.

• Filing fees alone ~$300,000

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IPR-2013-004 & & Kyocera v. Softview

• Softview sued Kyocera and 16 other companies on September 30, 2012.

• Apple sought inter partes reexam before AIA date• Motorola sought ex parte reexam before AIA date • Kyocera petitioned for IPRs on September 16, 2012• PTAB stays all re-exams on December 20, 2012• IPR Trial Instituted on March 29, 2013• Apple requests permission to file a motion for joinder in

April 2013 but then decides not to join• Motorola files two petitions and seek joinder in June 2013• Motion to stay Delaware litigation granted July 26, 2013

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Thanks for your attention! Questions?

TOM ENGELLENNERPepper Hamilton, LLP

High Street Tower, 19th Floor125 High Street

Boston, MA 02110+1-617-204-5189

engellennert@pepperlaw.comwww.postgrant-counsel.com

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