Recent Changes To U.S. Patent Law

Transcription

1 Recent Changes To U.S. Patent Law Courtenay C. Brinckerhoff IPO Education Foundation PTO Day March 25, Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative of clients 321 N. Clark Street, Suite 2800, Chicago, IL

2 Three Sets Of Patent Law Changes 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, Foley & Lardner LLP

3 The America Invents Act 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 2013 Foley & Lardner LLP

4 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 nonprovisional 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 2013 Foley & Lardner LLP

5 The Technical Corrections 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) 2013 Foley & Lardner LLP

6 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 2013 Foley & Lardner LLP

7 The Technical Corrections Act 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, Foley & Lardner LLP

8 The Patent Law Treaty Implementation Act 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 2013 Foley & Lardner LLP

9 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 Foley & Lardner LLP

10 Restoring Priority Claim Filing Deadline Filing Deadline + 2 Months Restoration Period 2013 Foley & Lardner LLP

11 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 nonprovisional application» Still must describe/enable eventual claims Non-provisional application filed without claims will receive Notice to File Missing Parts 2013 Foley & Lardner LLP

12 Simplified Filing Requirements 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 2013 Foley & Lardner LLP

13 Simplified Filing Requirements 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 2013 Foley & Lardner LLP

14 Simplified Filing Requirements 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 Foley & Lardner LLP

15 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 Foley & Lardner LLP

16 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 2013 Foley & Lardner LLP

17 Two Month Response Period 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 2013 Foley & Lardner LLP

18 Unintentional Standard For Revival/Delayed Maintenance Fees new 35 USC 27 amended 35 USC 41 (maintenance fees) amended 35 USC 133 (revival) 37 CFR is revised to provide for revival only under the unintentional standard 37 CFR 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 Foley & Lardner LLP

19 Pending Legislation 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, Foley & Lardner LLP

20 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 years Judiciary Committee hearings held December 17, Foley & Lardner LLP

21 Questions? 2013 Foley & Lardner LLP

22 Thank you! Courtenay C. Brinckerhoff For ongoing analysis and updates, please subscribe to Foley & Lardner LLP

23 IPO Education Foundation s PTO Day Legislative Update Patents Dana Robert Colarulli Director, Office of Governmental Affairs March 25, 2014 Revised: 3/24/2014

24 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. 2

25 Various proposals/approaches to address abusive patent litigation: White House Announcement : June 4, Executive Actions (4 of which USPTO is implementing): 1. Promoting Transparency of Patent Ownership 2. Tightening Functional Claiming 3. Empowering Downstream Users 4. Expanding Dedicated Outreach and Study 5. Strengthen Enforcement Process of Exclusion Orders February 20, Executive Actions: 1. Crowdsourcing Prior Art 2. 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) 3

26 Various proposals/approaches to address abusive patent litigation: 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 parties 3. Expand the PTO s Transitional Program for Covered Business Methods 4. Protect off-the-shelf use by consumers and businesses 5. Change the ITC standard for obtaining an injunction 6. Use demand letter transparency to help curb abusive suits 7. Ensure the ITC has adequate flexibility in hiring qualified Administrative Law Judges Included in House or Senate Bills? 4 out of 7 recommendations addressed in current bills. 4

27 113 th Congress Hearings 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 5

28 Bills introduced to address abusive patent litigation 113 th 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 H.R. 2024, End Anonymous Patents Act (Rep. Deutch, D-FL-21) introduced: 5/16/2013 H.R. 2236, Promoting Start-up Innovation Act (Rep. Chabot, R-OH-1) introduced: 6/4/2013 H.R. 2639, Patent Litigation and Innovation Act (Rep. Jefferies, D-NY-1) introduced: 6/4/2013 H.R. 3309, Innovation Act (Rep. Goodlatte, R-VA-6) introduced: 10/23/2013 H.R. 3349, Innovation Protection Act (Rep. Conyers, D-MI-13) introduced 10/28/2013 S.866, Patent Quality Improvement Act of 2013 (Sen. Schumer, D-NY) introduced: 5/6/2013 S. 1013, Patent Abuse Reduction Act of 2013 (Sen. Cornyn, R-TX) introduced: 5/21/2013 S. 1612, Patent Litigation Integrity Act (Sen. Hatch, R-UT) introduced: 10/30/2013 S.1720, Patent Transparency and Improvements Act of 2013 (Sen. Leahy, D- VT) introduced 11/18/2013 Fee shifting Patent Owner Disclosure / Real Party in Interest Raising the limits for Micro-entities Heighten Pleading Standards, Joinder, Stays, Discovery, Rule 11 sanctions Various Litigation-Related and Other Provisions USPTO Funding Expanding PTO s Transitional Proceeding for CBM Litigation-Related Provisions inc. Discovery, Joinder Fee Shifting Various Litigation-Related Provisions and Bad Faith Demand Letters 6

29 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 vote (D: , R: ) 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 Provision o Limits discovery before Markman claim construction hearing o Directs the Judicial Conference to consider/issue rules related to discovery o Clarifies law as it relates to treatment of IP in bankruptcy cases o Extends term of patent cases pilot from 10 to 20 years o Requires various studies o 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 ) 7

30 SAP on H.R.3309 STATEMENT OF ADMINISTRATION POLICY H.R 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 ) 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. 8

31 S.1720, as introduced S. 1720, the Patent Transparency and Improvements Act of 2013 (Leahy, D-VT) - Introduced Nov. 18, 2013 Committee 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. 9

32 Thank you. Dana Robert Colarulli Director Office of Governmental Affairs U.S. Patent and Trademark Office (571)

33 IPO 24 th Annual Conference on Patent and Trademark Office Law and Practice Patent Trial and Appeal Board Update Vice Chief Judge Scott Boalick United States Patent and Trademark Office Patent Trial and Appeal Board

34 AIA Trial Statistics and Progress

35 AIA Progress (as of March 6, 2014) Cumulative Number of AIA Petitions IPR CBM Derivation Total 5

36 AIA Progress (as of March 6, 2014) AIA Monthly Filings Total 1,056 IPR 924 CBM 127 DER 5

37 AIA Progress (as of March 6, 2014) AIA Petition Technology Breakdown 0.6% 8.1% 5.4% Electrical/Computer (745) 15.3% Mechanical (162) Chemical (86) Bio/Pharma (57) 70.6% Design (6)

38 AIA Progress (as of March 6, 2014) Cumulative Patent Owner Preliminary Responses Filed Waived IPR CBM 85 3

39 AIA Progress (as of March 6, 2014) AIA Petition Dispositions Trials Instituted Joinders Percent Instituted Denials Total No. of Decisions on Institution IPR CBM FY % FY % FY % 3 17 FY % 3 30

40 AIA Progress (as of March 6, 2014) AIA Final Dispositions IPR Settlements Adverse Judgments Final Written Decisions FY FY CBM FY FY

41 APJ Staffing

42 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, Opportunities at Detroit/Denver/Dallas/Silicon Valley Satellite Offices (for now) Selecting candidates from postings now Goal for FY add more judges

43 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

44 Current Judge Staffing 3.3% 8.3% 10.0% 39.2% AIA Ex parte Appeals Inter Partes Reexamination Appeals Management Interferences 39.2% * As of March 10, 2014 (181 judges)

45 Comparison of AIA Proceedings with Inter Partes Reexamination and District Court Litigation

46 AIA vs. Inter Partes Reexam and 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 No amendment Discovery Time to Completion Routine Discovery; Initial Disclosures; Additional Discovery by agreement or motion None 1 year from institution 75% completed within 18 months; average time to completion 21 months from filing Reasonably calculated to lead to admissible evidence Median time-to-trial approximately 2.5 years

47 AIA Trial Overview

48 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 16

49 Major Differences between IPR, PGR, and CBM Inter Partes Review (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 not OR Novel 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) Raised or reasonably could have raised Applied to subsequent USPTO/district court/itc action Reasonable likelihood 102 and 103 based on patents and printed publications Must identify all real parties in interest 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)

50 Major Differences between IPR, PGR, and CBM Proceeding Available Applicable Timing Post Grant Review (PGR) Inter Partes Review (IPR) From patent grant to 9 months after patent grant or reissue For first-inventor-to-file, from the 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 under first-inventor-to-file Patent issued under first-to-invent or first-inventor-to-file Must be completed within 12 months from institution, with 6 months good cause exception possible Must be completed within 12 months from institution, with 6 months good cause exception possible Covered Business Method (CBM) Available 9/16/12 (for firstinventor-to-file only after PGR not available or completed) Patents issued under first-toinvent and first-inventor-to-file Must be completed within 12 months from institution, with 6 months good cause exception possible

51 Trial Proceedings 19

52 Additional Discovery and Motions to Amend

53 Discovery Initial disclosures (Trial Practice Guide 77 Fed. Reg , ) Routine Discovery Cited exhibits Cross-examination of witnesses Inconsistent information Additional Discovery

54 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.

55 Lessons Learned Additional Discovery Five factor test to consider in evaluating requests for additional discovery (IPR , 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?

56 Lessons Learned Additional Discovery Motion granted: Corning v. DSM, IPR (Paper 27) - lab notebooks related to expert testimony Motion denied: Microsoft v. Proxyconn, IPR (Paper 32) no nexus

57 Additional Discovery in CBM Cases that grant additional discovery under good cause standard: CBM (Paper 24) a discovery request for specific documents that were not burdensome for the petitioner to produce was granted CBM (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

58 Additional Discovery in CBM Case CBM 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

59 Motions to Amend Idle Free v. Bergstrom, IPR (Paper 26) Board conference required 37 C.F.R (a) Normally one-for-one claim substitution Must narrow scope Need to show patentable distinction Clearly state the contingency of substitution

60 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.

61 Other Lessons Learned

62 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, IPR (Paper 12) denying petition

63 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)

64 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 (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 (b).

65 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 (a). See Monsanto Co. v. Pioneer Hi-Breed Int l, IPR , Paper 43 (denying petition). Avoid merely expertizing your claim charts.

66 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.

67 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, IPR (Paper 12); Heart Failure Tech. v. CardioKinetix, IPR (Paper 12) denying petition

68 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, IPR (Papers 55,67)

69 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, IPR (Paper 17) joinder granted Sony v. Network-1, IPR (Paper 16) joinder denied

70 Post Grant Resources

71 Post Grant Resources Information concerning the Board and specific trial procedures may be found at: General information concerning implementation of the Leahy-Smith America Invents Act, including post grant reviews, may be found at: 39

72 Thank You Vice Chief Judge Scott Boalick United States Patent and Trademark Office Patent Trial and Appeal Board

73 Appendix

74 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

75 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

76 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 44

77 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 45

78 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 46

79 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 47

80 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) 48

81 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 49

82 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 50

83 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 51

84 Trial Rules Inter Partes Review Post-Grant Review Umbrella Trial Rules Covered Business Method Patent Review Derivation Proceeding Proposed

85 Considerations for IPRs in Parallel with Litigation Dianna L DeVore, PhD JD Sr VP of IP and Legal Affairs Ariosa Diagnostics, Inc. March 25, PROPRIETARY AND CONFIDENTIAL

86 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 2 PROPRIETARY AND CONFIDENTIAL

87 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 months rather than roughly 5-6 year time frame for CAFC decision 3 PROPRIETARY AND CONFIDENTIAL

88 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). 4 PROPRIETARY AND CONFIDENTIAL

89 Events Found Not To Trigger Time Bar Filing of Complaint without Service (Unless Waived) Motorola Mobility LLC v. Michael Arnouse, IPR Filing of Complaint with No Evidence of Waiver of Service Macauto U.S.A. v. Bos GMBH & KG, IPR Declaratory Judgment for Non-infringement Ariosa Diagnostics, Inc. v. Isis Innovations, Inc. IPR Arbitration Amkor Technology, Inc. v. Tessera, Inc., CBM PROPRIETARY AND CONFIDENTIAL

90 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., IPR PROPRIETARY AND CONFIDENTIAL

91 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., IPR Claims by Patent Owner or Patent Owner s expert that claims in District Court are Broader than Patent Owner s advocated Construction 7 PROPRIETARY AND CONFIDENTIAL

92 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 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 8 PROPRIETARY AND CONFIDENTIAL

93 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 IPR and IPR PROPRIETARY AND CONFIDENTIAL

94 STRATEGIES FOR SUCCESS IN POST- GRANT PROCEEDINGS: PREPARING REVIEW PETITIONS THAT AVOID REDUNDANT GROUNDS PRESENTED AT IPO S PTO DAY MARCH 25, 2014 KEVIN B. LAURENCE

95 COMPARATIVE FILING REQUIREMENTS AND DISCOVERY AVAILABILITY THOROUGHNESS OF INITIAL FILING Review Proceeding Litigation DISCOVERY Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

96 DEVELOPING GROUNDS FOR PETITION Fully develop all possible grounds in preparation for drafting petition Present 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 rejection Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

97 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 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

98 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 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

99 CONTENT OF EXPERT S DECLARATION Declaration of expert witness must provide facts that support a conclusion of anticipation or obviousness Tutorial of state of the art may be helpful but focus on technical issues that are not apparent from the prior art references Expert should explain any facts that would only be apparent to the skilled artisan Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

100 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. Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

101 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. Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

102 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

103 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, IPR , Paper 13 (June 13, 2013) Liberty Mutual Ins. v. Progressive Casualty Ins., CBM , Paper 7, at 2 (Oct. 25, 2012) Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

104 HORIZONTALLY REDUNDANT GROUNDS A = 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., CBM , Paper 7 (Oct. 25, 2012) Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

105 REDUNDANCY VISUALIZED Claim: A widget comprising A, B, and C References: Ref. 1, Ref. 2, and Ref. 3 Challenges: Challenge 1: Anticipation by Ref. 1 Challenge 2: Obviousness by Ref. 1 + Ref. 2 Challenge 3: Anticipation over by Ref. 3 Claim Limitation A B C Ref. 1 X X X Ref. 2 X Ref. 3 X X X Vertically Redundant Horizontally Redundant

106 CASE STUDY #1: CARL ZEISS V. NIKON Decision on Petitioner s Request for Rehearing in Carl Zeiss GmbH. v. Nikon Corp., IPR , 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. Copyright 2013 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

107 CASE STUDY #2: MODIFICATION OF REDUNDANCY DECISION In the Decision on Petitioner s Request for Rehearing in Illumina, Inc. v. Columbia University, IPR , Paper 54 (May 10, 2013): The PTAB modified its earlier decision regarding the redundancy of grounds based on a U.S. patent (Stemple III) 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. Copyright 2013 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

108 CONVENTIONAL WISDOM (GENERALLY) IN LITIGATION AND REVIEW PROCEEDINGS Anticipation Obviousness Litigation Review Proceeding Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

109 SUGGESTIONS FOR DEVELOPING NON-REDUNDANT GROUNDS FOR PETITION Rely 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 redundant Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

110 REASONABLE ELASTICITY OF INSTITUTED GROUNDS In the Decision on Petitioner s Request for Rehearing in Mobotix Corp. v. E-Watch, Inc., IPR , 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 Copyright 2013 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

111 REASONABLE ELASTICITY OF INSTITUTED GROUNDS MOBOTIX CONTINUED In Mobotix Corp. v. E-Watch, Inc., IPR , 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. Copyright 2013 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

112 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 grounds Copyright 2013 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

113 THANK YOU KEVIN LAURENCE Copyright 2013 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

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