Presentation to SDIPLA

Transcription

1 Presentation to SDIPLA Anatomy of an IPR Trial by Andrea G. Reister Chair, Patent Office and Advisory Practice Covington & Burling LLP February 20, 2014

2 Outline 1. Overview 2. Preliminary Phase 3. Decision to Institute 4. Discovery 5. Responses and Replies 6. Motions to Amend 7. Oral Hearing 8. Settlement 2

3 Overview AIA Trials Instituted As of Feb. 6,

4 Overview Final Written Decisions Proceeding Parties (Petitioner v. PO) Outcome IPR Garmin v. Cuozzo Claims Cancelled IPR Idle Free v. Bergstrom Claims Cancelled IPR Nichia v. Emcore Claims Cancelled IPR Motorola Mobility v. Arnouse Claims Cancelled IPR Intellectual Ventures v. Xilinx Claims Cancelled IPR Intellectual Ventures v. Xilinx Claims Cancelled IPR Intellectual Ventures v. Xilinx Claims Cancelled IPR Intellectual Ventures v. Xilinx Claims Cancelled 4

5 Overview Final Written Decisions Proceeding Parties (Petitioner v. PO) Outcome CBM SAP America v. Versata Software Claims Cancelled CBM Liberty Mutual v. Progressive Claims Cancelled CBM Liberty Mutual v. Progressive Claims Cancelled CBM CRS v. Frontline Technologies Claims Cancelled CBM Liberty Mutual v. Progressive Claims Cancelled CBM Liberty Mutual v. Progressive Claims Cancelled CBM Interthinx v. Corelogic Solutions Claims Cancelled 5

6 Overview Trial Schedule PO Preliminary Response Petition Filed No more than 3 months 3 months Decision on Petition PO Response & Motion to Amend Claims Petitioner Reply to PO Response & Opposition to Amendment PO Reply to Opposition to Amendment Oral Hearing Final Written Decision 3 months 3 months 1 month Hearing Set on Request No more than 12 months Period for Observations & Motions to Exclude Evidence 6

7 Preliminary Phase Petition Targeted, focused explanation of best ground of unpatentability for each challenged claim Avoid conclusory statements with no analysis Explanation of reasons why references can be combined Expert declaration Background technology Claim construction Reasons to combine references Strict adherence to rules 60 pages double spaced, except claim charts Times New Roman, 14 point font 7

8 Patent Owner Preliminary Response As of Feb. 6, 2014 Statutory time bars Real parties in interest Claim construction 8

9 Patent Owner Preliminary Response Statutory time bars 35 U.S.C. 315(a)(1) civil action challenging validity of a claim of the patent filed before the petition Excludes counterclaims ( 315(a)(3)) Petitioner filing declaratory judgment of noninfringement with affirmative defense of invalidity to counterclaim of infringement not bar subsequent IPR (Ariosa Diagnostics v. Isis Innovation Ltd., IPR , Paper 20 (Feb. 12, 2013)) DJ of non infringement not a civil action challenging the validity of a patent Affirmative defense of invalidity treated differently than counterclaim for invalidity not a filing of a civil action for invalidity 9

10 Patent Owner Preliminary Response Statutory time bars 35 U.S.C. 315(b) petition filed more than one year after being served with complaint alleging infringement Includes counterclaims (St. Jude Medical v. Volcano, Corp., IPR , Paper 29 (Oct. 16, 2013)) Service of a complaint nullified if civil action subsequently dismissed without prejudice (Macauto U.S.A. v. BOS GmbH & Co. KG, IPR , Paper 18 (Jan. 24, 2013)) 10

11 Patent Owner Preliminary Response 35 U.S.C. 315(b) petition filed more than one year after being served with complaint alleging infringement Counterclaim alleging infringement in arbitration proceeding not trigger one year bar Served with a complaint alleging infringement of the patent means a complaint in a civil action for infringement Amkor Technology, Inc. v. Tessera, Inc., IPR , Paper 98 (Jan. 31, 2014) What about ITC proceeding? 11

12 Patent Owner Preliminary Response Patent owner challenges accuracy of real partiesin interest (RPIs) named by petitioner Discovery May lead to time bar Funds, directs, controls, or participate[s] in some manner Review or comment on draft petition Directly or indirectly contribute to funding Communicating with other defendants on the IPR petition Patent owner also required to name RPI in Mandatory Notices 12

13 Patent Owner Preliminary Response Claim construction Consider terms for which no construction is offered in the petition Opportunity to offer constructions to the PTAB with no input from petitioner PTAB adopted its own claim construction, as opposed to one proposed by either party, in almost half the cases Heavy reliance by the PTAB on the specification, with dictionaries as a second source 13

14 Decision to Institute PTAB may deny some or all grounds for unpatentability 37 C.F.R (b) PTAB frequently institutes trial on only some grounds in the petition; denies other grounds as redundant or cumulative [I]nstituting a trial on each ground proffered would not result in a just, speedy and inexpensive resolution of every proceeding (see, e.g., Amkor Technology, Inc. v. Tessera, Inc., IPR ) Horizontally redundant numerous prior art references for the same teaching Vertically redundant multiple combinations to render a claim obvious 14

15 Decision to Institute Redundant Grounds Amkor Technology, Inc. v. Tessera, Inc. (IPR ) Petitioner filed Request for Reconsideration of certain grounds not adopted in the Decision to Institute PTAB not bound by M.P.E.P., or its definition of cumulative references Decision stated that grounds of unpatentability in the petition cumulative to the instituted grounds Notwithstanding the estoppel for Petitioner, no injustice in instituting on the limited grounds given the competing demands for speedy and inexpensive resolution and providing dispositive determinations of the patentability of claims 15

16 Decision to Institute Redundant Grounds Can Petitioner rely on redundant grounds on appeal to Federal Circuit? Rexnord Indus. LLC v. Kappos, 705 F.3d 1347 (Fed. Cir. 2013) PTAB confirmed claims in inter partes reexam and held Rexnord (appellee) waived arguments on other prior art Federal Circuit reversed PTAB appellee can defend on any ground supported by the record, whether or not appellant raised the argument 16

17 Decision to Institute Redundant Grounds IPR/CBM Appeals Appellee likely to be petitioner Redundant grounds in record No statutory mandate on remands Cross examine petitioner s declarant on redundant grounds? Scope of cross examination includes redundant grounds, but not substantively denied grounds (Intelligent Bio Systems, Inc. v. Illumina Cambridge Ltd., IPR , Paper 27 (Nov. 26, 2013)) 17

18 Decision to Institute Redundant Petitions Intelligent Bio Systems, Inc. v. Illumina Cambridge Ltd., (IPR ) Multiple petitions attacking the same claims of the same patent by the same petitioner; second petition by same petitioner denied Petitioner not provide any special justification for the second petition, and did not distinguish any teaching present in the references for the second petition that is lacking in the first petition 35 U.S.C. 325(d)... the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office 18

19 Discovery Routine Discovery (Board approval not required) Exhibits cited in a paper or testimony Cross examination of affidavit testimony Information that is inconsistent with a position advanced by a party during the proceeding 19

20 Discovery Additional Discovery (Board approval required) Motion authorization expected to be, and has been, rare Moving party must show additional discovery is in the interests of justice for IPR PGR/CBM employ a lower good cause standard 20

21 Discovery Garmin v. Cuozzo very first IPR petition Patent owner Cuozzo filed motion for additional discovery Five factors for additional discovery See Decision on Motion for Additional Discovery, IPR More than a possibility and mere allegation Party requesting discovery should already have evidence tending to show beyond speculation that something useful will be uncovered Useful = favorable in substantive value to a contention of the moving party ; more than relevant or admissible 21

22 Discovery Five factors for additional discovery Litigation positions and underlying basis not necessary in the interest of justice Ability to generate equivalent information by other means Easily understandable instructions Requests not overly burdensome to answer Financial, human resources, IPR schedule All requests in Garmin denied 9 interrogatories 10 document requests Deposition of corporate representative 22

23 Additional Discovery Bloomberg v. Markets Alert PTY, CBM , Paper 32 (May 29, 2013) PTAB granted request for production of all documents and things considered by Bloomberg s expert in order to prepare for cross examination of the expert PTAB cited two specific examples provided by Markets Alert showing that the expert was relying on information that had not yet been produced 23

24 Additional Discovery Corning v. DSM IP Assets, IPR , Paper 27 (June 21, 2013) Corning synthesized certain molecules described in the prior art to support their argument that the molecules inherently possessed certain characteristics PTAB granted DSM additional discovery to obtain, among other things, notebooks showing the lab protocols and data obtained during synthesis and testing of the molecules 24

25 Responses and Replies Patent Owner Response First meaningful opportunity for patent owner to present expert or other declaration testimony (e.g., declarations of prior invention to swear behind prior art, secondary considerations) Depose petitioner s declarants 60 pages for opposition, excluding declarations 25

26 Responses and Replies Reply Depose patent owner s declarants 15 pages, excluding declarations Make rebuttal link clear Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM , Final Written Decision, Paper 66 (Jan. 23, 2014) Publications and declaration evidence submitted to confirm level of skill an issue raised in patent owner response Publications cited in reply evidence knowledge of one skilled in the art, and not being used to combine with prior art to form new grounds 26

27 Motions to Amend Limited practical opportunity to amend the claims in IPR, in sharp contrast to reexamination 37 C.F.R : Presumption that one substitute claim sufficient Amendment must be responsive to the grounds of unpatentability, have support in the original disclosure, and not enlarge scope of claims or introduce new matter 27

28 Motions to Amend Patent Owner has the burden to identify the narrowing feature added to each claim and explain how the feature patentably distinguishes over the cited art in the proceeding and other prior art known by the patent owner 15 page motion Explain how narrowing feature overcomes all prior art known to the patent owner Detailed explanation of the support in the original disclosure of the application Claim construction for newly added features Claim listing 28

29 Motions to Amend Key PTAB decisions Patent owner s burden to patentably distinguish over the prior art Idle Free Systems Inc. v. Bergstrom, IPR Avaya Inc. v. Network 1 Security Solutions Inc., IPR ZTE Corp. v. ContentGuard Holdings Inc., IPR Burden of identifying written description support for proposed substitute claims Nichia Corp. v. Emcore Corp., IPR

30 Oral Hearing Nothing new can be presented, no new evidence, no new arguments IPR : What constitutes a new argument? Object is red => green; pink; shades of red Demonstratives [W]ritten text setting forth various statements, characterizations, and assertions go beyond serving as visual aids, as they constitute additional briefings themselves Burden on party presenting the demonstrative slide to show not present new evidence; cannot be overly cumbersome for PTAB or opposing party 30

31 Oral Hearing Final oral hearing not an opportunity for a party to expand upon its reliance on declaration testimony in a manner not already presented Strategy on allocation of time Petitioner Patent Owner 31

32 Settlement 35 U.S.C. 317(a) 37 C.F.R (a) IPR shall be terminated upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits before the request is filed. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision. The parties may agree to settle but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice 32

33 Settlement The Board can continue IPR even if all parties settle See, e.g. IPR : In view of the parties settlement agreement Board determines it is appropriate to terminate the involvement of [the petitioner]. However, in view of the advanced stage of the proceeding, rather than terminate this proceeding, the Board will proceed to a final written decision. 33

34 Settlement CBM : Parties terminated prior to oral hearing. Board proceeded to final written decision and cancelled several claims Considerably lower risk in the preliminary phase or prior to Patent Owner Response 34

35 Settlement PTAB May Proceed to FWD PO Preliminary Response IPR Petition Filed How late can parties settle before PTAB will proceed to a final written decision? Decision on Petition PO Response & Motion to Amend Claims Petitioner Reply to PO Response & Opposition to Amendment PO Reply to Opposition to Amendment Oral Hearing Final Written Decision IPR IPR CBM IPR

36 Settlement Settlement prior to written decision avoids estoppel for petitioner (35 U.S.C. 317(a), 327(a)) Must file unredacted settlement agreement May request that the agreement be kept confidential exhibits not required Made available to any person on a showing of good cause and payment of fee very rare occurrence 36

37 Questions? Andrea G. Reister Covington & Burling LLP