Leveraging Post-Grant Patent Proceedings Before the PTAB

Transcription

1 Presenting a live 90-minute webinar with interactive Q&A Leveraging Post-Grant Patent Proceedings Before the PTAB Best Practices for Patentees and Third Parties in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Challenges THURSDAY, JUNE 12, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Greg H. Gardella, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va. Scott A. McKeown, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va. The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions ed to registrants for additional information. If you have any questions, please contact Customer Service at ext. 10.

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4 PTAB TACTICS: TAILORING YOUR PETITION TO THE UNIQUE AUDIENCE, YOUR NON-INFRINGEMENT CASE, AND EVOLVING PTAB REALITIES JUNE 12, 2014 OBLON SPIVAK LLP SCOTT MCKEOWN GREG GARDELLA

5 POLITICAL CLIMATE Reform dead for 2014 Major changes unlikely going forward Elections, republican majority? Lobbying Changes in law Octane Fitness/Nautilus/ Fresenius Demand letter law politically feasible PTAB/AIA Impact Significant Why more laws? IPNav, IV struggling with PTAB 5

6 POLITICAL CLIMATE Judge Rader Spooks USPTO (death squad) Response: Litigation driven challenges being punished Weak showing, ambiguous positions Unfamiliarity with standards and practices Not accustomed to debates with APJs Misplaced Advocacy CAFC appeal may be too late Substantial evidence Heightened focus on petition and PTAB practices No appeal 6

7 PTAB TREND 7

8 EARLY RESULTS All tech spaces Predictable arts -NPE suits Unpredictable Arts -High Stakes -ANDA Outcomes: % Success Rate Impact of Politics???? 8

9 UNPREDICTABLE ARTS 9

10 IPR/PGR/CBM 10

11 PETITION ONE SHOT 11

12 OUR EXPERIENCE Strict Petition Practice Crafting the grounds Claim constructions Prior art searching/selection of experts Joint Defense Groups, Indemnity and RPI CBM/PGR Standing Timing of Petition, Parallel Petitions Lack of Discovery Amendment Considerations 12

13 PETITION -ONE SHOT- Forget litigation motives All cards must be placed on the table in the petition in order to ensure consideration Arguments and evidence No notice pleading, beware 102/inherency No appeal most likely point of bias Defects in prima facie case cannot be cured later Rationale to combine (103) Could have been submitted earlier? 13

14 PETITION -ONE SHOT- 315(b) bar Often prevents later petition on new grounds Second try petitions Whether filed by original petitioner or new party Statute specifically provides that cumulativeness may be considered 14

15 CRAFTING THE GROUNDS OF UNPATENTABILITY Describe in detail the combined system or method Diversity in proposed grounds One should align with preferred embodiment One should align with accused system Two references can often be combined in many ways Creative license in crafting combination 15

16 DISTRICT COURT CLAIM CONSTRUCTIONS Often cited and relied upon (plain meaning) Institution: IPR Final written decision: CBM Especially when supported by an expert declarant PTAB is mindful of its role as providing litigation alternative Defeated by BRI which is narrower than District Court claim construction 16

17 PRIOR ART& EXPERTS 102 or 103? Not as critical as in district court 103 is preferred Netmoney v. Verisign Art from prosecution history? Again, not as critical as in district court Symposium articles, distribution? Authentication? 17

18 PRESENTING THE CHALLENGES Anticipation arguments are vulnerable Statistics: bases for unpatentability in FWDs 18

19 A WORD ABOUT ESTOPPEL Estoppel Claim-by-claim Genus/species? Ground or reference based? When is it effective? Amended claim...estoppel? Holding back art?...for what? Redundancy? 19

20 USING EXPERTS Role and choice of experts NOT AN EXPERT REPORT!! Qualities to look for? APJs need no help with basic technical issues Focus on industry-specific issues and facts not apparent from references themselves Build level of skill and knowledge to record Experts should cite supporting evidence (e.g., prior art) for each technical or scientific rationale Motivation to combine 20

21 REDUNDANCY Should explain non-redundancy Otherwise PTAB may deny grounds as redundant Even as between 102 and 103 Contrast relative strengths and weaknesses PTAB is looking for candor Reluctance from petitioners See, e.g., IPR (Ebay v. Locata) 21

22 JOINT DEFENSE, INDEMNITY AND REAL PARTY IN INTEREST Basic Rules Cannot file petition if RPI or privy was served with complaint more than 1 year prior RPI and privies estopped under 315 Privy ~ funding or control When was indemnification triggered? Discovery? District court 22

23 JOINT DEFENSE, INDEMNITY AND REAL PARTY IN INTEREST Indemnification scenarios Atlanta Gas supplier had no control Apple v. Achates publishing Could slap PTAB Timing to Seek Different answer in district court? Preserve for appeal? Abuse of discretion? 23

24 TIMING OF PETITION, PARALLEL PETITIONS Second petition filed before institution Same party v. different party PTAB discretion: synchronize, deny as cumulative Second petition filed within 30 days of institution Joinder opportunity Response page limit logistics Second petition filed after joinder period Cumulativeness may defeat 2 nd petition 24

25 TIMING OF PETITION, PARALLEL PETITIONS 25

26 DISCOVERY OR LACK THEREOF Prior art known to patent owner? Generally, no Objective Evidence of Nonobviousness Generally, no Info considered by experts Yes Evidence of RPI If you have some evidence of control or funding, yes Must be *very* narrowly tailored (see, Paper 29 in IPR ) 26

27 AMENDING AT THE PTAB? Motion Practice (Burden on Movant) Not a matter of right Not Examination No Search Support, Skill in the Art, Scope of the Art Page Limit Includes Claims Supporting declaration?? Bad examples early Other Options? (IPR ) 90/013,148 27

28 SUCCESS! International Flavors & Fragrances v. U.S. Dept of Agriculture IPR (bug repellant) Settlement by Amendment No opposition, or oral hearing Proves possibility at least Declaration key Designated Informative PTAB wants public to know 28

29 PETITIONER/PATENTEE STRATEGY CONCERNS PTAB Petitioner.Concerns? Fighting on two fronts Subsequent suit?.licensing leverage (NPE) Patentee Concerns? Amending in more liberal environment Living to fight another day Estoppel clock is ticking 42.73(d)(ii) Collateral damage control 29

30 PETITIONER/PATENTEE STRATEGY CONCERNS PETITIONER How to oppose dual track? Protest (reissue), 3P submission (cont)? Reissue, reexam (same patent) Stay? Serial reexam to attack? Mandatory Notices, related proceedings (patent centric) Standing order? (claims) Intervening Rights does it matter? 30

31 PETITIONER/PATENTEE STRATEGY CONCERNS Patentee.Continuations? Reassess Portfolio Strategy TDs? Threat of simple reexams? Restrictions Force Divisional practice Safe harbor (distinct) Broaden, slightly? No Continuations? 31

32 PETITIONER/PATENTEE STRATEGY CONCERNS Patentee.No Continuations? Reissue/Reexamination/Supp. Exam Reissue Benefits: Tanaka makes it easy Restart continuation practice? Downside: Risk patent anew? KSR/Bilski Pendency!!!! Protest 32

33 PETITIONER/PATENTEE STRATEGY CONCERNS Reexamination/Supp. Exam Benefits: Speed No 112/101 Insulate claims Pick uncovered claim No protest PTAB has stayed Downside: No continuations SNQ showing Enhanced Scope (Supp. Exam) 33

34 CONCLUSIONS PTAB is changing the face of litigation PTAB punishes inexperienced Petition stage has heightened importance No appeals Unpredictable Arts Growing Quickly Beware Amendments What do you do? Prosecution strategies? New Rules in July? 34

35 THANK YOU SCOTT MCKEOWN GREG GARDELLA PatentsPostGrant.com