Recent Changes To U.S. Patent Law · (expanding USPTO the Patent Examiner Technical Training...

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Recent Changes To U.S. Patent Law

Courtenay C. BrinckerhoffIPO Education Foundation PTO Day

March 25, 2014

©2013 Foley & Lardner LLP

The America Invents Act» Final effective date of March 16, 2013

The AIA Technical Corrections Act» Effective date of January 14, 2013

The Patent Law Treaty Implementation Act» Effective date of December 18, 2013

Three Sets Of Patent Law Changes


As of September 16, 2012» Inter Partes Review (replaced inter partes reexam)» Covered Business Method Patent Review» Supplemental Examination by patent owner» Preissuance Submissions by third parties» Naming the assignee as “Applicant” » New statement required in Inventor

Oath/Declaration

The America Invents Act


As of March 16, 2013» First-Inventor-To-File laws apply to applications that claim

subject matter with an effective filing date on/after March 16, 2013 Take care that claims of continuing application are supported Challenge new matter rejections Segregate “old” and “new” subject matter when filing new non-

provisional application or continuation-in-part application “check the box” when claiming “new” subject matter in an

application with a priority date earlier than March 16, 2013 Consider different prior art parameters when assessing

patentability

The America Invents Act


As of January 14, 2013» “Advice of Counsel” protections against liability for

enhanced damages apply to any civil action commenced on/after January 14, 2013 Instead of just for patents granted on/after Sep. 16, 2012

» IPR “dead zone” eliminated for first-to-invent patents can request IPR as soon as first-to-invent patent is granted

» Inventor’s Oath/Declaration due by Issue Fee payment » Repeal of 35 USC § 373 (no longer need to file PCT

application in the name of inventors to be accepted at U.S. national stage)

The Technical Corrections Act


Changes to PTA statute » For U.S. national stage applications, the 14-month

period for the PTO to issue the first Office Action starts at the national stage commencement date (regardless of when all formalities are completed) According to PTO rules, this change applies to any patent

granted on/after January 14, 2013 This change can lead to many additional months of PTA The PTO has not yet changed its PTA calculator to award

this PTA, but is awarding it on request for reconsideration



Changes to PTA statute » PTO to provide initial PTA determination with Issue

Notification But PTO is still providing initial PTA determination (without B

delay calculation) with Notice of Allowance» Request for Reconsideration due within 2 months of

patent issue date, extendable for up to 5 months PTO no longer will consider requests filed before issue

» Deadline to file district court civil action is 180 days, measured from the PTO decision on a Request for Reconsideration

» According to PTO rules, these changes apply to any patent granted on/after January 14, 2013



Simplify Application Filing Formalities Ability to file non-English PCT application Ability to restore priority claim Ability to obtain filing date without claims Ability to file a subsequent application “by

reference” to an earlier application Expanded Missing Parts practice New PTA Deduction Revival/delayed maintenance fee acceptance

under “unintentional” standard only

The Patent Law Treaty Implementation Act


Restoring Priority Claim

Applies only to priority claims to an earlier U.S. provisional application or an earlier foreign application where the deadline runs 12 months (6 months for design patents) from the earlier application’s filing date. Does not apply to continuation or divisional

applications that must be filed while the previous application is pending. If the application is unintentionally filed outside of

the 12 month (6 month) period, the priority claim can be restored if the application is filed within 2 months of expiration of the period.


Restoring Priority Claim

Filing Deadline

Restoration Period

Filing Deadline + 2 Months


Simplified Filing Requirements

No longer need a drawing to obtain a filing date » Still required if necessary to understand invention» Still can’t add “new matter” after filing date

No longer need to have a claim for a non-provisional application » Still must describe/enable eventual claims

Non-provisional application filed without claims will receive Notice to File Missing Parts



Filing a subsequent application “by reference” to an earlier application» Earlier application can be U.S. or foreign» The specification of the earlier application will be

used as the specification of the new application» Application filed “by reference” will receive Notice to

File Missing Parts



Application filed “by reference” and then abandoned for not completing formalities shall be treated as having never been filed, unless: (i) The application is revived and (ii) A copy of the specification and any drawings of the previously filed application are filed



If an application is filed “by reference” but the earlier application is misidentified (i.e., the applicant mistypes the application number, filing date, or intellectual property authority or country on the application data sheet), the applicant may file a petition to have the application accorded a filing date as of the date the specification and drawings of the intended previously filed application are filed.


New PTA Deduction

For applications filed on/after December 18, 2013:If application is not “in condition for examination” within eight months from the filing date or national stage commencement date, there will be a day-for-day PTA deduction.


New PTA Deduction

An application is “in condition for examination” when the application includes: a specification, including at least one claim and an abstract formal drawings any required English translation any required sequence listing the inventor information provided in an ADS (or an executed

Inventor's Oath/Declaration) the basic filing fee, search fee, examination fee, and any size

fees any required certified copy of a previously filed application


Under the Patent Law Treaty regulations, applicants are to be given at least 2 months to respond to most requirements The USPTO has changed the response period

from 1 month to 2 months for:» Response to to Restriction/Election Requirement » Response to Notice of Incomplete/Noncompliant

Response» Response to Sequence Listing Requirement

Two Month Response Period


“Unintentional” Standard For Revival/Delayed Maintenance Fees

new 35 USC § 27 amended 35 USC § 41 (maintenance fees) amended 35 USC § 133 (revival)

37 CFR § 1.137 is revised to provide for revival only under the “unintentional” standard 37 CFR § 1.378 is revised to provide for acceptance of

delayed maintenance fees only under the “unintentional” standard 37 CFR § 1.550(d) is revised to provide for revival of an

ex parte reexamination under 37 CFR 1.137


Goodlatte Innovation Act (HR 3309)» Changes to new patent trial proceedings» Repeal of 35 USC 145» Codification of Obviousness-Type double Patenting

for First-Inventor-To-File patents» Codification of Exelixis II PTA decision » Clarification of “Federal interest” in patent questions

(to support Federal court jurisdiction)Passed the House (325-91) December 5, 2013

Pending Legislation


Leahy Patent Transparency and Improvements Act (S 1720)» New patent litigation provisions» Changes to new patent trial proceedings» Codification of Obviousness-Type double Patenting for

First-Inventor-To-File patents» Changes to Inventor Oath/Declaration requirements for

continuing applications » Extend limitations period for USPTO disciplinary

proceedings from 1 to 2 yearsJudiciary Committee hearings held December 17, 2013

Pending Legislation


Questions?


Thank you!

Courtenay C. [email protected]

For ongoing analysis and updates, please subscribe to www.PharmaPatentsBlog.com

IPO Education Foundation’s PTO Day

Legislative Update – Patents

Dana Robert ColarulliDirector, Office of Governmental AffairsMarch 25, 2014

Revised: 3/24/2014

SOTU 2014

President’s Statement in the State of the Union – January 28, 2014

“There are entire industries to be built based on vaccines that stay ahead of drug-resistant bacteria or paper-thin material that's stronger than steel. And let's pass a patent reform bill that allows our businesses to stay focused on innovation, not costly and needless litigation.”

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Various proposals/approaches to address abusive patent litigation:

White House Announcement :

June 4, 2013 - 5 Executive Actions (4 of which USPTO is implementing):1. Promoting Transparency of Patent Ownership2. Tightening Functional Claiming3. Empowering Downstream Users4. Expanding Dedicated Outreach and Study5. Strengthen Enforcement Process of Exclusion Orders

February 20, 2014 - 3 Executive Actions:1. Crowdsourcing Prior Art2. More Robust Technical Training (expanding USPTO the Patent Examiner Technical

Training Program)3. Pro Bono and Pro Se Assistance (dedicated resources to assist inventors who lack

legal representation, and appoint a full-time Pro Bono Coordinator)

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White House Announcement (June 4, 2013):

7 legislative recommendations:1. Require applicants to disclose the “Real Party-in-Interest”2. Permit more discretion to the court to award fees to prevailing parties3. Expand the PTO’s Transitional Program for Covered Business Methods4. Protect off-the-shelf use by consumers and businesses5. Change the ITC standard for obtaining an injunction6. Use demand letter transparency to help curb abusive suits7. Ensure the ITC has adequate flexibility in hiring qualified Administrative Law Judges

Various proposals/approaches to address abusive patent litigation:

4 out of 7 recommendations

addressed in current bills.

Included in House or

Senate Bills?

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113th CongressHearings on Patent Issues

U.S. House of Representatives

“Abusive Patent Litigation: The Impact on American Innovation & Jobs, and Potential Solutions” - March 14, 2013, House Judiciary Committee, Subcommittee on Courts, Intellectual Property and the Internet

“Abusive Patent Litigation: The Issues Impacting American Competitiveness and Job Creation at the International Trade Commission and Beyond” – April 16, 2013, House Judiciary Committee, Subcommittee on Courts, Intellectual Property and the Internet

“Patent Reform implementation and New challenges for Small Businesses” – May 15, 2013, House Committee on Small Business

“The Impact of Patent Assertion Entities on Innovation and the Economy”– Nov. 14, 2013, House Energy and Commerce Committee, Subcommittee on Oversight and Investigations

U.S. Senate

“Standard Essential Patent Disputes and Antitrust Law” – July 30, 2013, Senate Judiciary Subcommittee on Antitrust, Competition Policy and Consumer Rights

“Demand Letters and Consumer Protection: Examining Deceptive Practices by Patent Assertion Entities” – Nov. 7, 2013, Senate Commerce, Subcommittee on Consumer Protection, Product Safety, and Insurance

“Protecting Small Businesses and Promoting Innovation by Limiting Patent Troll Abuse.” – Dec. 17, 2013, Senate Judiciary Committee

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Bills introduced to address abusive patent litigation113th Congress

H.R. 845, “Saving High-Tech Innovators from Egregious Legal Disputes” (SHIELD) Act of 2013 (Rep. Defazio, D-OR-4) – introduced: 2/27/2013

Fee shifting

H.R. 2024, “End Anonymous Patents Act” (Rep. Deutch, D-FL-21) – introduced: 5/16/2013

Patent Owner Disclosure / Real Party in Interest

H.R. 2236, “Promoting Start-up Innovation Act” (Rep. Chabot, R-OH-1) –introduced: 6/4/2013

Raising the limits for Micro-entities

H.R. 2639, “Patent Litigation and Innovation Act” (Rep. Jefferies, D-NY-1) –introduced: 6/4/2013

Heighten Pleading Standards, Joinder, Stays, Discovery, Rule 11 sanctions

H.R. 3309, “Innovation Act” (Rep. Goodlatte, R-VA-6) – introduced: 10/23/2013

Various Litigation-Related and Other Provisions

H.R. 3349, “Innovation Protection Act” (Rep. Conyers, D-MI-13) – introduced 10/28/2013

USPTO Funding

S.866, “Patent Quality Improvement Act of 2013” (Sen. Schumer, D-NY) –introduced: 5/6/2013

Expanding PTO’s Transitional Proceeding for CBM

S. 1013, “Patent Abuse Reduction Act of 2013” (Sen. Cornyn, R-TX) –introduced: 5/21/2013

Litigation-Related Provisions inc. Discovery, Joinder

S. 1612, “Patent Litigation Integrity Act” (Sen. Hatch, R-UT) – introduced: 10/30/2013

Fee Shifting

S.1720, “Patent Transparency and Improvements Act of 2013” (Sen. Leahy, D-VT) – introduced 11/18/2013

Various Litigation-Related Provisions and “Bad Faith” Demand Letters

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H.R.3309, as passed by the House

H.R.3309, “The Innovation Act” -- Introduced 10/23/2013 (Goodlatte, R-VA)Amended and Reported out of Committee by a 33-5 vote

Passed by the House on 12/5/2013 by a 325-91 vote (D: 130-64, R: 195-27)

Key Provisions: o Provides heightened pleading requirements (Sec. 3)o Requires patent owner litigant to disclosure of the “Real Party in Interest” (Sec 4)o Shifts presumption and enhances fee-shifting under 35 USC 285.o Creates a Manufacturer’s Stay Provisiono Limits discovery before Markman claim construction hearing o Directs the Judicial Conference to consider/issue rules related to discoveryo Clarifies law as it relates to treatment of IP in bankruptcy caseso Extends term of patent cases pilot from 10 to 20 yearso Requires various studieso Directs USPTO to develop educational resources for small business (within existing resources)o Makes technical changes and clarifications

Revises language under “Inventor’s Oath or Declaration” Codifies patent term adjustment calculations (In Re Exelsis) Codifies language on obviousness-type double patenting Changes Post Grant estoppel provision when appealing to the Federal Circuit (strikes “or

could have raised”)

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SAP on H.R.3309

STATEMENT OF ADMINISTRATION POLICYH.R. 3309 – Innovation Act

(Rep. Goodlatte, R-VA, and 16 cosponsors) - December 3, 2013

“The Administration supports House passage of H.R. 3309, as reported with a strong, bipartisan vote by the House Judiciary Committee. The bill builds on the important patent reforms contained in the America Invents Act (P.L. 112-29) and successfully implemented by the U.S. Patent and Trademark Office. The bill would improve incentives for future innovation while protecting the overall integrity of the patent system.”

The SAP also expressed some concerns with the bill to be addressed as the process moves forward including maintaining judicial discretion and limiting use of BRI in PTAB Post-Issuance proceedings.

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S.1720, as introduced

S. 1720, the “Patent Transparency and Improvements Act of 2013” (Leahy, D-VT) - Introduced Nov. 18, 2013Committee Hearing held Dec. 17, 2013

** Mark-up Scheduled for March 27, 2014 **

Key Provisions:• Requires disclosure of ownership information to USPTO• Provides a stay of litigation based on consent of manufacturer or supplier• “Bad-faith” demand letters subject to FTC Act as unfair or deceptive acts or practices• Requires new education on abusive litigation and USPTO website on litigation information• Requires USPTO to construe claims in post grant using district court standards (vs. BRI)• Provides protection for IP licenses in Bankruptcy proceedings• Codifies obvious-type double patenting doctrine for FITF patents• Requires new studies and reports on secondary market oversight, government patents,

examination quality and patent small claims court

Note: Introduced bill did not include provisions on expanding CBM, enhancing fee-shifting, or limiting discovery; these issues were discussed in the Dec. 17 committee hearing and in subsequent staff briefings. Some of these issue expected in amendments.

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Thank you.

Dana Robert ColarulliDirector

Office of Governmental AffairsU.S. Patent and Trademark Office

(571) 272 [email protected]

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mailto:[email protected]

IPO 24th Annual Conference on Patent and Trademark Office Law and Practice

Patent Trial and Appeal Board Update

Vice Chief Judge Scott BoalickUnited States Patent and Trademark OfficePatent Trial and Appeal Board

AIA Trial Statistics and Progress

AIA Progress (as of March 6, 2014)

• Cumulative Number of AIA Petitions

924

1275

1056

0

200

400

600

800

1000

1200

IPR CBM Derivation Total


• AIA Monthly Filings

Total 1,056IPR 924CBM 127DER 5


• AIA Petition Technology Breakdown

70.6%

15.3%

8.1%

5.4%

0.6%

Electrical/Computer (745)

Mechanical (162)

Chemical (86)

Bio/Pharma (57)

Design (6)


• Cumulative Patent Owner Preliminary Responses

Filed WaivedIPR 490 162CBM 85 3


• AIA Petition Dispositions

Trials Instituted Joinders Percent

Instituted Denials

Total No. of Decisions

on Institution

IPRFY13 167 10+ 87% 26 203

FY14 204 1+ 81% 49 254

CBMFY13 14 82% 3 17

FY14 27 90% 3 30


• AIA Final Dispositions

Settlements AdverseJudgments

Final Written

Decisions

IPR FY13 38 2 0FY14 58 15 16

CBM FY13 3 0 1FY14 8 0 8

APJ Staffing

Board Expansion

• Since October 2011– Reviewed nearly 2,100 applicant records– Interviewed more than 370 candidates– Selected 128 highly qualified candidates to

become new Judges– We stand at 181 Judges as of March 10, 2014.

• Opportunities at Detroit/Denver/Dallas/Silicon Valley Satellite Offices (for now)– Selecting candidates from postings now

• Goal for FY2014 - add more judges

Board Expansion

• Selectees have come from the following:– USPTO Patent Examining Corps, Office of the

General Counsel, and the PTAB– International Trade Commission and

Department of Justice– Private Practice (solo to very large)– All types of industries

Current Judge Staffing

* As of March 10, 2014 (181 judges)

39.2%

39.2%

10.0%

8.3%

3.3%

AIA

Ex parte Appeals

Inter Partes Reexamination Appeals

Management

Interferences

Comparison of AIA Proceedings with Inter Partes Reexamination

and District Court Litigation

AIA vs. Inter Partes Reexamand District Court Litigation

AIA Inter Partes Reexam District Court Litigation

Standards for Institution

Reasonable Likelihood/More Likely Than Not

Reasonable Likelihood of prevailing with respect to at least one claim being challenged

Notice Pleading; legal contentions warranted by nonfrivolous argument, factual contentions have/will have evidentiary support

Amendments Right to move to amend; Limited ability to amend

Amendment before final entered as a matter of right, Amendment after final must comply with 37 C.F.R. § 1.116

No amendment

Discovery Routine Discovery; Initial Disclosures; Additional Discovery by agreement or motion

None Reasonably calculated to lead to admissible evidence

Time to Completion

1 year from institution 75% completed within 18months; average time to completion 21 months from filing

Median time-to-trialapproximately 2.5 years

AIA Trial Overview

Trial Structure

• Same basic structure for all the proceedings

• Reduction of burdens on the parties via:– Streamlining and converging issues for decision; – Use of page limits and electronic filing;– Use of conference calls; and – Institution of a trial on a claim-by-claim,

ground-by-ground basis

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Major Differences between IPR, PGR, and CBM

Inter PartesReview (IPR)

Petitioner Estoppel Standard Basis

Post Grant Review (PGR)

• Person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent

• Must identify all real parties in interest

• Raised or reasonably could have raised

• Applied to subsequent USPTO/district court/ITC action

More likely than notORNovel or unsettled legal question important to other patents/applications

101, 102, 103, 112,double patenting but not best mode

Inter Partes Review (IPR)

• Person who is not the patent owner, has not previously filed a civil action challenging the validity of a claim of the patent, and has not been served with a complaint alleging infringement of the patent more than 1 year prior (exception for joinder)

• Must identify all real parties in interest

• Raised or reasonably could have raised

• Applied to subsequent USPTO/district court/ITC action

Reasonable likelihood

102 and 103 basedon patents and printed publications

Covered Business Method (CBM)

• Must be sued or charged with infringement

• Financial product or service• Excludes technological

inventions• Must identify all real parties in

interest

• Office—raised or reasonably could have raised

• Court-raised

Same as PGR Same as PGR (some 102 differences)

Major Differences between IPR, PGR, and CBM

Proceeding Available Applicable Timing

Post Grant Review (PGR)

From patent grant to 9 months after patent

grant or reissue

Patent issued under first-inventor-to-file

Must be completed within 12 months from

institution, with 6 months good cause exception possible

Inter PartesReview (IPR)

For first-inventor-to-file, fromthe later of: (i) 9 months after patent grant or reissue; or (ii) the date of termination of any post grant review of the patent.For first-to-invent, available after grant or reissue(technical amendment)

Patent issued underfirst-to-invent or

first-inventor-to-file

Must be completed within 12 months from institution, with

6 months good cause exception possible

CoveredBusiness

Method (CBM)

Available 9/16/12 (for first-inventor-to-file only after PGR

not available or completed)

Patents issued under first-to-invent and

first-inventor-to-file

Must be completed within 12 months from institution, with

6 months good cause exception possible

Trial Proceedings

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Additional Discovery andMotions to Amend

Discovery

• Initial disclosures (Trial Practice Guide 77 Fed. Reg. 48756, 48761-62)

• Routine Discovery– Cited exhibits– Cross-examination of witnesses– Inconsistent information

• Additional Discovery

Lessons Learned –Additional Discovery

• Requests for specific documents with a sufficient showing of relevance are more likely to be granted whereas requests for general classes of documents are typically denied.

– Mere possibility exists that discovery request will lead to something useful is insufficient to meet necessary interests of justice standard. 35 U.S.C. § 316(a)(5).

– Requests must not be overly burdensome given expedited nature of trials.

– Board will take into account whether party seeking information can reasonably obtain the information sought without need for discovery.


• Five factor test to consider in evaluating requests for additional discovery (IPR2012-00001, Garmin v. Cuozzo, Paper 26):

– More than a possibility and mere allegation must exist that something useful might be found.

– Is the request merely seeking early identification of opponent’s litigation position?

– Can party requesting discovery generate the information?

– Interrogatory questions must be clear.

– Are requests overly burdensome to answer?


• Motion granted:Corning v. DSM, IPR2013-00043 (Paper

27) - lab notebooks related to expert testimony

• Motion denied:

Microsoft v. Proxyconn, IPR2012-00026 (Paper 32) – no nexus

Additional Discovery in CBM

• Cases that grant additional discovery under good cause standard:– CBM2012-00001 (Paper 24) – a discovery request for specific

documents that were not burdensome for the petitioner to produce was granted

– CBM2013-00005 (Paper 32) discusses the differences in the standards and states that the Garmin factors, slightly modified, are helpful in determining whether discovery requests under the good cause standard should be granted because the proceedings share the same public policy, statutory, and regulatory considerations for discovery

Additional Discovery in CBM

• Case CBM2013-00005 granting in part motion for additional discovery by patent owner– Request granted – the production of all documents and things

reviewed or considered by a testifying expert in conjunction with preparation of his declaration

– Request not granted – for production of prior art known to the petitioner not submitted in the petition and documents and things reviewed or considered by the petitioner in conjunction with the preparation of the petition, no showing of relevance to the instituted grounds of unpatentability

– Request not granted – for items related to licensing and commercial implementation — patent owner fails to provide a specific factual reason or evidence for expecting that the discovery will be “useful”

Motions to Amend

• Idle Free v. Bergstrom, IPR2012-00027 (Paper 26)

• Board conference required 37 C.F.R. § 42.121(a)

• Normally one-for-one claim substitution• Must narrow scope • Need to show patentable distinction• Clearly state the contingency of substitution

Motions to Amend

• Unlike examination proceedings before the USPTO, the PTAB does not “examine” amended claims during an AIA proceeding.– No search is conducted by the PTAB.– No rejection of the claims is made by the

PTAB.• The burden is on the movant (i.e., the patent

owner) to show the patentable distinction of the proposed amended claim over all prior art.

Other Lessons Learned

Lessons Learned - Petitions

• Conclusions need to be supported by:

– Sound legal analysis

– Citations to evidentiary record

• Better to provide detailed analysis for limited number of challenges than identify large number of challenges for which little analysis is provided.

• See Wowza Media v. Adobe, IPR2013-00054 (Paper 12) – denying petition

Lessons Learned – Claim Charts

• Use standard two-column format (see FAQ D13)

• Claim charts are not sufficient by themselves, they must be explained

• Charts should contain pinpoint references to the supporting evidence (see FAQ D12)

Lessons Learned – Claim Construction

• Claim constructions should be supported by citations to the record that justify the proffered construction and analysis provided as to why the claim construction is the broadest reasonable construction. 37 C.F.R. 42.104(b)(3).

• An example of a failure to provide a sufficient claim construction occurs where claim terms are open to interpretation but party merely restates claim construction standard to be used, e.g.,

– A claim subject to inter partes review receives the “broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).

Lessons Learned - Experts

• Tutorials are helpful especially for complex technologies.

• Expert testimony without underlying facts or data is entitled to little or no weight. 37 C.F.R. § 42.65(a). See Monsanto Co. v. Pioneer Hi-Breed Int’l, IPR2013-00022, Paper 43 (denying petition).

• Avoid merely “expertizing” your claim charts.

Lessons Learned – Obviousness

• The question of obviousness is resolved based on underlying factual determinations identified in Graham. This includes addressing differences between claimed subject matter and the prior art.

– Address the specific teachings of the art relied upon rather than rely upon what others have said, e.g.,

The Examiner found that all limitations of the challenged claims except X were present in AAA, BBB and CCC. Additional reference DDD teaches X. Thus, the challenged claims are unpatentable as obvious over prior art references AAA, BBB, CCC and DDD.

Lessons Learned –Obviousness

• Parties are to address whether there is a reason to combine art (KSR) and avoid conclusory statements such as:

– It would have been obvious at the time of the priority date of the challenged patent to incorporate a widget as disclosed by references AAA, BBB, CCC, DDD or EEE into FFF’s wadget. See MPEP § 2143(A), (C).

• See Veeam Software v. Symantec, IPR2013-0045 (Paper 12); Heart Failure Tech. v. CardioKinetix, IPR2013-00183 (Paper 12) – denying petition

Lessons Learned –Depositions

• Federal Rules of Evidence apply• Objections to admissibility waived• Follow the Testimony Guidelines (Practice

Guide Appendix D)– No “speaking” objections or coaching– Instructions not to answer are limited

• Foreign language/country see Ariosa v. Isis, IPR2013-00022 (Papers 55,67)

Lessons Learned – Joinder

• Must be a like review proceeding• Requires filing a motion and petition• File within one month of institution• Impact on schedule important• Dell v. Network-1, IPR2013-00385 (Paper 17)

– joinder granted• Sony v. Network-1, IPR2013-00386 (Paper

16) – joinder denied

Post Grant Resources

Post Grant Resources

• Information concerning the Board and specific trial procedures may be found at:

http://www.uspto.gov/ip/boards/bpai/index.jsp

• General information concerning implementation of the Leahy-Smith America Invents Act, including post grant reviews, may be found at:

http://www.uspto.gov/aia_implementation/index.jsp

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http://www.uspto.gov/ip/boards/bpai/index.jsp

http://www.uspto.gov/aia_implementation/index.jsp

Thank You

Vice Chief Judge Scott BoalickUnited States Patent and Trademark OfficePatent Trial and Appeal Board

Appendix

Trial Proceedings

• Petitioner = any third party (not patent owner)• Review is barred if petitioner or RPI filed a “civil

action” challenging validity of a claim of the patent before filing petition

• If petitioner or RPI files a “civil action” challenging validity on or after filing date of IPR petition, civil action is automatically stayed

• A counter-claim challenging validity is not a “civil action” for purposes of above

42

Trial Proceedings

IPR is barred if petition is filed more than 1 year after date a complaint alleging infringement is served. 35 U.S.C. § 315(b)

43

Trial Proceedings

• Standard of proof – A “preponderance of evidence”

• Lower than “clear and convincing evidence” required to challenge validity in district courts

• Final decision within 12 months of institution – Can extend by 6 months, but only for “good

cause” = rare– Generally, entire process (petition →

termination or final decision) will take 18 months or less

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Trial Proceedings

Estoppel for civil actions and ITC proceedings Precludes petitioner, any real party in interest, or

privy from later challenging same patent claim

IPR/PGR: any ground “raised or reasonably could have raised” during review that resulted in final written decision

CBM: any ground “raised” during review that resulted in final written decision

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What Patents and When

• IPR: depends on effective filing date• Is effective f/d before or after March 16, 2013?• Pre-AIA patents – anytime after issuance

(technical amendment)• Post-AIA patents – 9 months after patent

issues or PGR is terminated (whichever is later)• CBM: anytime after suit or charge of infringement • PGR: within 9 months of patent issuance

• Post-AIA patents only

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Scope for Initiating Review

• IPR: “a reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim

• CBM/PGR: “more likely than not that at least one claim is unpatentable” or the petition raises “a novel or unsettled legal question that is important to other patents or applications”

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Scope of Grounds in Petition

• IPR: only on § 102 and § 103 grounds, and only on basis of prior art consisting of patents and printed publications

• PGR: on any grounds for invalidity (except best mode)

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Scope of Review

• CBM: same as PGR, but must be a “covered business method” patent– claims a method or corresponding apparatus for

performing data processing or other operations used in the practice, administration, or management of a financial product or service

– does not include patents for “technological inventions”

– whether claimed subject matter as a whole recites a technological feature that is novel and unobvious over prior art, and solves a technical problem using a technical solution

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Transitional CBM

• Generally employs PGR procedures/standards except: – Petitioner, RPI, or privy must have been sued for

infringement or charged with infringement– Can file any time after issuance (not just within 9

mos.)– Both first-to-invent (pre-AIA) and first-inventor-to-file

(post-AIA) patents are eligible– Ground cannot be based on 35 U.S.C. § 102(e)

secret prior art– Civil action/ITC estoppel: any ground “raised”

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Judicial Review in Trial Proceedings

• Decision whether to institute – No appeal to court– But may file a request for rehearing

• Explain how “Board misapprehended or overlooked” something

• May appeal final written decisions to the Federal Circuit only– No appeal to district court

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Trial Rules

Inter Partes Review§§ 42.100 – 42.123

Post-Grant Review§§ 42.200 – 42.224

Covered Business Method Patent Review

§§ 42.300 – 42.304

Derivation ProceedingProposed §§ 42.400 –

42.412

Umbrella Trial Rules§§ 42.1 – 42.80

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PROPRIETARY AND CONFIDENTIAL

Considerations for IPRs in Parallel with Litigation

Dianna L DeVore, PhD JD Sr VP of IP and Legal Affairs

Ariosa Diagnostics, Inc. March 25, 2014

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Considerations for IPRs in Parallel with Litigation

These events should be considered in preparing any strategy using IPR in parallel with other adversarial proceedings

Estoppel Provisions Statutory Time Bar to an Inter Partes Review

Effect of Litigation on IPR Claim Construction

Possibility of Stay of Litigation Settlement Opportunities


Estoppel Provisions

Petitioner is estopped from challenging invalidity in District Court or ITC on any argument that is raised or reasonably could have been raised in an IPR Estoppel attaches upon a written determination of the PTAB, not at the exhaustion of all appeals as in IPX Attainable within 12-18 months rather than roughly 5-6 year time frame for CAFC decision

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Statutory Time Bar to an Inter Partes Review

35 USC 315(b) PATENT OWNER’S ACTION - An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).

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Events Found Not To Trigger Time Bar

Filing of Complaint without Service (Unless Waived) Motorola Mobility LLC v. Michael Arnouse, IPR2013-00010

Filing of Complaint with No Evidence of Waiver of Service

Macauto U.S.A. v. Bos GMBH & KG, IPR2012-00004

Declaratory Judgment for Non-infringement Ariosa Diagnostics, Inc. v. Isis Innovations, Inc. IPR2012-00022

Arbitration Amkor Technology, Inc. v. Tessera, Inc., CBM2013-00242

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Time Bar: Real Party in Interest

315(b) limits the one year time bar to the "petitioner, real party in interest, or privy of the petitioner." Under 35 USC 312(a)(2) also states that an IPR petition must identify all real parties in interest Intellectual Ventures Management v. Xilinx, Inc., IPR2012-00018

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Litigation and IPR Claim Construction

IPR Claim Construction: Broadest Reasonable Construction in Unexpired Patents ● Rationale that Patent Owner has opportunity to amend the

claims ● Arguments that claims should be construed as in litigation may

or may not be persuasive

Expert Testimony Can Be Persuasive ● PTAB has changed its position regarding the construction of a

relevant claim term following Institution Synopsis, Inc. v. Mentor Graphics Corp., IPR2012-00042 ● Claims by Patent Owner or Patent Owner’s expert that claims

in District Court are Broader than Patent Owner’s advocated Construction


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Stay of Litigation

District Court judges considering whether or not to stay the litigation pending the outcome of an IPR may consider the following scenarios:

If the stay is granted, in 12-18 months IPR will either simplify the validity issues in dispute by operation of estoppel, or perhaps resolve the dispute altogether by invalidating the patent If the stay is not granted and the court result comes first, IPR will continue and possibly conclude with a different result. A failure to prove invalidity will not impact the ongoing IPR If the stay is not granted and the USPTO result comes first the court may be wasting resources in continuing on a parallel track, as estoppel provisions will apply


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Settlement Opportunities 35 USC § 317 allows parties to terminate an instituted inter partes review (IPR) “unless the Office has decided the merits of the proceeding before the request for termination is filed.”

Ability to settle IPR may encourage settlement of both IPR and parallel litigation

The earlier the settlement is reached, the more likely the case will be terminated ● Even with settlement, if IPR is late stage PTAB may still issue a final

written decision as to the Patent Owner’s claims. Blackberry Corp., et al v. Mobilemedia Ideas, LLC IPR2013-00016 and IPR 2013-0036

STRATEGIES FOR SUCCESS IN POST-GRANT PROCEEDINGS: PREPARING REVIEW PETITIONS THAT AVOIDREDUNDANT GROUNDS

PRESENTED AT IPO’S PTO DAYMARCH 25, 2014

KEVIN B. LAURENCE

DEVELOPING GROUNDS FOR PETITION

Fully develop all possible grounds in preparation for drafting petitionPresent best grounds in petition, not all

grounds• Can be tricky in light of estoppel• Substantive defects generally cannot be cured• Anticipate possible pruning by PTAB via

redundancy rejectionCopyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

EXPERTS PLAY CRITICAL ROLE IN REVIEWS

Contact possible experts as early as possible Interview potential experts at least by phone and

then work together Assess expert’s contacts with opposing party

and make sure that each expert does not have a conflict of interest Consider use of separate experts for distinct

topics• Avoid using excessive number of experts


DECLARATION BY EXPERTS

Only one who understands the level of ordinary skill in the art can say what one of ordinary skill in the art would think!Each assertion in a claim chart in a

petition should reference a statement by an expert witness


CONTENT OF EXPERT’S DECLARATION

Declaration of expert witness must provide facts that support a conclusion of anticipation or obviousnessTutorial of state of the art may be helpful

but focus on technical issues that are not apparent from the prior art referencesExpert should explain any facts that would

only be apparent to the skilled artisanCopyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

EXPERT’S SIGNATURE BLOCK

Consider including a signature block for a declarant such as:“In signing this declaration, I understand that the declaration will be filed as evidence in a review proceeding before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. I acknowledge that I may be subject to cross examination in the case and that cross examination will take place within the United States. If cross examination is required of me, I will appear for cross examination within the United States during the time allotted for cross examination.”


GROUNDS MUST NOT BE REDUNDANT

While the majority of petitions for review result in institution of a review trial, some proposed grounds are often not adopted In some circumstances, the PTAB may

decline to institute trial on a proposed ground of unpatentability when the ground is redundant with another ground that is relied on for the institution of trial.


CONFLICTING OBJECTIVES OF PETITIONER AND PTAB

Review petitioner is motivated to raise as many diverse grounds as possible and to avoid being estopped due to failure to raise a challenge• If possibly redundant challenge is presented then the

petitioner should provide the required explanation why those challenges are not redundant

PTAB motivated to filter the issues and focus the proceeding in order to complete trial within one year after institution.• Prevents expansive combinations as in

reexamination.Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

VERTICALLY REDUNDANT GROUNDS(A ≅ A + B]

When review is instituted based on anticipation of claims by reference A, proposed rejections for the same claims as being obvious based on references A and B may be considered redundant when reference B has not been described as more clearly satisfying some elements of the claims relative to reference A.• Oracle v. Clouding IP, IPR2013-00088, Paper 13 (June 13, 2013)

• Liberty Mutual Ins. v. Progressive Casualty Ins., CBM2012-00010, Paper 7, at 2 (Oct. 25, 2012)


HORIZONTALLY REDUNDANT GROUNDSA = X AND B = Y ∴ A + B = X + Y

Horizontally redundant grounds involve a plurality of prior art references applied not in combination to complement each other but as distinct and separate alternatives. All the references relied on provide essentially the same

teaching to meet the same claim limitation, and the associated arguments do not explain why one reference more closely satisfied the claim limitation at issue in some respects than another reference, and vice versa. Each reference has to be better in some respect or else the

references are collectively horizontally redundant.• See Liberty Mutual Ins. v. Progressive Casualty Ins., CBM2012-

00010, Paper 7 (Oct. 25, 2012)Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

REDUNDANCY VISUALIZED

Claim: A widget comprising A, B, and C References: Ref. 1, Ref. 2, and Ref. 3 Challenges:

Challenge 1: Anticipation by Ref. 1Challenge 2: Obviousness by Ref. 1 + Ref. 2Challenge 3: Anticipation over by Ref. 3

Claim Limitation A B C

Ref. 1 X X XRef. 2 XRef. 3 X X X

Vertically Redundant

Horizontally Redundant

CASE STUDY #1: CARL ZEISS V. NIKON

Decision on Petitioner’s Request for Rehearing in Carl Zeiss GmbH. v. Nikon Corp., IPR2013-00363, Paper 17 (Jan. 30, 2014)• In its Petition, Petitioner asserted anticipation based on a

§ 102(b) reference and based on a § 102(e) reference and also asserted obviousness based on combinations of each § 102 reference with other references.

• PTAB declined to institute on the ground based on the § 102(b) reference.

• Petitioner expressed concern in its Request for Rehearing that the § 102(e) reference could be antedated.

• PTAB declined to change its position as the 102(e) prior art reference more clearly discloses the limitations of the challenged claims.


CASE STUDY #2: MODIFICATION OF REDUNDANCY DECISION

In the Decision on Petitioner’s Request for Rehearing in Illumina, Inc. v. Columbia University, IPR2012-00075, Paper 54 (May 10, 2013): The PTAB modified its earlier decision regarding the

redundancy of grounds based on a U.S. patent (StempleIII) that issued from the nationalization of a PCT application (Stemple II). Illumina successfully argued in its Request for Rehearing

that the effective filing date for Stemple II under § 102(a) and for Stemple III under § 102(e) are distinct and that the reference with the earliest date, Stemple III, should be substituted for Stemple II.


CONVENTIONAL WISDOM (GENERALLY) IN LITIGATION AND REVIEW PROCEEDINGS

Anticipation Obviousness

Litigation

Review Proceeding


SUGGESTIONS FORDEVELOPING NON-REDUNDANT GROUNDS FOR PETITIONRely on obviousness grounds instead of

anticipation• For pre-AIA cases, avoid § 102(a) and

§ 102(e) references Identify divergent obviousness attacks

that avoid redundancy If needed, explain reliance on

combination that appears redundantCopyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

REASONABLE ELASTICITY OF INSTITUTED GROUNDS

In the Decision on Petitioner’s Request for Rehearing in Mobotix Corp. v. E-Watch, Inc., IPR2013-00255, Paper 15 (Dec. 3, 2013), the PTAB indicated that there was elasticity with respect to the institution grounds • Petitioner asserted that certain claims are unpatentable (1)

under § 102(b) based on “Reference E” and (2) under § 103 based on “Reference E” and “Reference F”

• PTAB declined to institute on § 102(b) ground as being redundant

• Petitioner expressed concern in its Request for Rehearing that Reference F could be antedated because it is a 102(e) prior art reference


REASONABLE ELASTICITY OF INSTITUTED GROUNDS – MOBOTIX CONTINUED

In Mobotix Corp. v. E-Watch, Inc., IPR2013-00255, Paper 15 (Dec. 3, 2013), the PTAB stated “During the course of the proceedings, Petitioner will

have the opportunity to prove the presence of all required claim elements in [Reference E] alone. If petitioner proves that all elements of the claim are found in [Reference E] alone, then [Reference E] alone would be sufficient to render the claims . . . obvious, and the status of [Reference F] would be of no consequence. Therefore, it is unnecessary to add another ground expressly based on [Reference E] as an anticipatory reference.


REDUNDANCY – CAUTION, CRITICISM AND PRAISE

PTAB must continue to avoid putting form over substance• Example: Grounds in petition based on A + B + C. If B is

removed and yet the claim is still obvious based just on A + C then the claim should be held to be not patentable.

Variability of decisions regarding redundancy by panels• Decision not appealable• Decision is not final so a new petition may be possible

based on new combination of references. PTAB effectively focuses on key issues by avoiding

redundant groundsCopyright © 2013 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

THANK YOU KEVIN LAURENCE

[email protected]


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