Lessons Learned from Two Years of Post-Grant Proceedings

June 2015 Lessons Learned from Two Years of Post-Grant Proceedings Among many other changes it enacted, the America Invents Act provided for three new types of post-grant proceedings before the Patent Trial and Appeals Board (PTAB), an inter-partes review (IPR) 1, a post-grant review (PGR) 2 and a covered business method patent review (CBM). 3 Congress envisioned these reviews to add a level of quality control that is not otherwise feasible in ex parte challenges to patents. Congress, however, also enacted protections for patent owners to prevent an avalanche of post-issue challenges by, for example, imposing a high burden of proof on patent challengers to have a review initiated and by imposing substantial estopple provisions against a patent challenger should the challenger lose in a final decision. Two years on, certain lessons have been learned about post-grant proceedings. First, they are far more popular than anyone thought they would be. Second, once a post-grant proceeding has been commenced and a final judgment is rendered, a large majority of challenged claims have been invalidated. Third, the PTAB runs a tight ship and the rules must be complied with. Fourth, it is critical for both the challenger and the patent owner to rely on declaration evidence, especially expert declarations. Fifth, it is extremely difficult for a patent owner to amend a claim. Finally, there is no guarantee that an underlying district court litigation will be stayed in favor of a post-grant proceeding. To more fully appreciate the lessons learned over the first two years of post-grant proceedings, a brief review of IPRs, PGRs and 1 35 U.S.C. 311-319. 2 35 U.S.C. 321-329. 3 AIA 18. CBMs, and how they are the same and different, is helpful. COMPARING IPRS, PGRS AND CBMS In an IPR, any third party can request cancellation of one or more patent claims of any patent as anticipated or obvious, but only on the basis of prior art patents or publications. 4 An IPR can only be filed after the later of 9 months after the grant of a patent or reissue or after the conclusion of any post-grant procedure such as a PGR. 5 If, however, a petitioner or real party in interest has already commenced a civil action, or if a patent owner commenced a civil action greater than one year earlier against the petitioner or other real party in interest, then an IPR cannot be filed. 6 The burden of proof is on the petitioner to show that there is a reasonable likelihood that at least one of the challenged claims is invalid. 7 In a PGR, any third party can request cancellation of one or more patent claims of any patent filed under the first inventor to file rule on any ground except best mode, 8 or by showing that the petition raises an unsettled ground or unsettled legal question that is important to other patents or applications. 9 A PGR must be filed no later than 9 months after the grant of a patent or reissue patent. 10 The burden of proof is on the petitioner to show it is more likely than not that at least one challenged claim is 4 35 U.S.C. 311(b). 5 35 U.S.C. 311(c). 6 35 U.S.C. 315 (a)(1) and (2). 7 35 U.S.C. 314(a). 8 35 U.S.C. 321 (a) and (b). 9 35 U.S.C. 321(c). 10 35 U.S.C. 321(c).

unpatentable. 11 Note that the burden of proof for seeking a PGR is greater than the burden for seeking an IPR. A CBM follows most of the same rules as a PGR, but differs from a PGR in that it can only be commenced against a CBM patent 12 and can only be commenced by a party or real party in interest who has been charged with infringing such a patent. 13 A CBM can be commenced against a patent filed under the first inventor to file rule or the first to invent rule. There is no time limit for commencing a CBM, and if a CBM proceeds to final judgment it will invoke an estopple where the petitioner and real parties in interest will only be barred from later raising any contention which was in fact raised in the CBM. 14 CBM will end on September 16, 2020. 15 Unless otherwise stated, any discussion in this paper relating to PGRs includes CBMs. IPRs and PGRs share a number of things in common. In both, a petition to commence a proceeding must identify all real parties in interest. 16 The petition in both can (and should) be accompanied by one or more affidavits or declarations. 17 Also, both proceedings (except CBM patent reviews) will invoke an estopple if the proceeding reaches a final decision (that is, the proceeding is not settled beforehand), where the petitioner, any real party in interest or any party in privy with the petitioner cannot raise in a PTO proceeding, district court action or ITC proceeding any invalidity ground it raised or 11 35 U.S.C. 324. 12 A CBM patent is a patent that 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, except for technological innovations. AIA 18(a)(1). 13 AIA 18(a)(1)(B). 14 AIA 18(a)(1)(A). 15 AIA 18(a)(3). 16 35 U.S.C. 312(a)(2)(IPR), 322(a)(2)(PGR). 17 35 U.S.C. 312(a)(3)(B)(IPR), 322(a)(3)(B)(PGR). reasonably could have raised in the proceeding. 18 As for timing, the Director shall determine whether or not to institute a proceeding within 3 months after receiving a preliminary response from the patent owner or 3 months after the last date the response was due 19, and must issue a final determination within 1 year after the proceeding was commenced, which can be extended for good cause by not more than 6 months. 20 POST-GRANT PROCEEDURES ARE VERY POPULAR Because of the newness of the procedures and the strong estopple provisions which can apply, there was initially some concern as to whether post-grant procedures would be popular. After two years, the answer is clear. Post-grant procedures are very popular, and indeed popular beyond expectations. For example, in the first two years, over 1,700 petitions for post-grant procedures have been filed. 21 Michelle K. Lee, then Deputy Director of the Patent and Trademark Office, testified that this is 200 percent more than predicted. 22 In fact, the PTAB is now the second busiest patent jurisdiction, trailing only the Eastern District of 18 35 U.S.C. 315(e)(IPR), 325(e)(PGR). 19 35 U.S.C. 314(b)(IPR), 324(c)(PGR). 20 35 U.S.C. 316(a)(11)(IPR), 326(a)(11)(PGR). 21 Harness & Dickey, Harnessing Patent Office Litigation, Vol. VII (Sept, 16, 2014). 22 Statement of Michelle K. Lee, Deputy Director of Commerce for Intellectual Property and Deputy Director of the United States Patent Office, Before the Subcommittee on Courts, Intellectual Property and the Internet, Committee on the Judiciary, U.S. House of Representatives, U.S. Patent and Trademark Office: The America Invents Act and Beyond, Domestic and International Policy Goals (July 30, 2014) at page 6. 2

Texas. 23 Further demonstrating the popularity of post-grant proceedings is that their increase in popularity runs counter to the trend in the district courts, where the number of patent lawsuits filed has been decreasing. 24 Of the 1,700-plus petitions filed in the first two years, over 1,600 have been IPRs, about 315 have been CBMs, and 2 have been PGRs. 25 One reason why the number of PGRs is so low is that a PGR can only be commenced against a patent filed under the first inventor to file rule and those patents are now only beginning to issue. Breaking down by technology, 63.4% of post grant proceedings have been against electrical/computer patents, 24.8% have been against mechanical/business method patents, 7.8% against bio/pharma patents, 3.7% against chemical patents and 0.3% against design patents. 26 There are a number of reasons why post-grant proceedings are so popular. First, there is no presumption of validity. Second, claim terms are given their broadest reasonable interpretation, not the more narrow person of skill in the art interpretation used in litigation. 27 This expands the pool of potential prior art. Third, the PTAB judges are knowledgeable about patent law and skilled in the technology. Fourth, post-grant reviews have proven to be a fast, cost-effective way to challenge a patent. Finally, as discussed more fully below, challengers have been very 23 Sheridan, A. and Cutler, M., A Fair and Efficient Litigation Alternative: Two Years of Inter Partes Review, ACC Docket (Nov. 2014) at page 84. 24 Year in Review 2014, Docket Navigator, at page 5. 25 Harness & Dickey, supra n.21. 26 www.uspto.gov/patents-applicationsprocess/patent-trial-and-appeal-board/statistics (April 15, 2015). 27 In re Cuozzo Speed Techs., LLC, 778 F.3d. 1271, 1278-79 (Fed. Cir. 2015). successful in having challenged claims invalidated. THE MAJORITY OF CHALLANGED CLAIMS ARE CANCELLED IN A FINAL WRITTEN DECISION Initially, once a post-grant proceeding was instituted, a final written decision was a virtual death sentence for challenged claims, with about 96% of all challenged claims being cancelled. 28 That number has come down somewhat but even now, almost 73% of all challenged claims are cancelled. 29 Also, in about 65% of final written decisions, all of the challenged claims are cancelled. 30 The high fatality rate for challenged claims is the result of a number of factors. First, recent Supreme Court decisions concerning patentable subject matter 31 and indefiniteness 32 have called into question the validity of many patents, especially in the Internet, computer and biotechnical arts. Second, because of the high 28 Harness & Dickey, supra n.21. 29 Ibid. 30 Davis, R., 5 Surprises From the First 2 Years of AIA Reviews, Law 360 (Sept. 11, 2014). 31 Alice Corp v. CLS Bank, 573 U.S., 134 S. Ct. 2347 (2014) (mere implementation of an abstract idea with a computer is not patent eligible under 35 U.S.C. 101); Mayo Collaborative Services v. Prometheus Labs, Inc., 566 U.S., 132 S. Ct. 1289 (2012), (claims to a method of giving a patient a drug, measuring a metabolite and adjusting the dose of drug not patent eligible under 35 U.S.C. 101); Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S., 133 S. Ct. 2107 (2013) (claims to isolated gene sequences which are identical to naturally occurring gene sequences are not patent eligible under 35 U.S.C. 101). 32 Nautilus, Inc. v. Biosig Instru., Inc., 572 U.S., 134 S. Ct. 2120 (2014) (if a claim fails to inform a person of ordinary skill in the art with reasonable certainty about the scope of the invention, then the claim is invalid as indefinite). 3

burden a petitioner must meet in order to have a post-grant review declared, many ill-conceived petitions are denied. Third, due at least in part to the strong estopple effect if a challenged claim is not cancelled in a final decision, most petitions are filed only against patent claims for which there are substantial questions of patentability. In other words, post-grant reviews appear to be functioning as intended. While the cancellation rate of challenged claims remains high, the rate has begun to come down as patent owners gain more experience in opposing post-grant proceedings. One question patent owners face is whether or not to file a preliminary response to a petition for review. Preliminary responses are permitted but not required, 33 and the patent owner cannot submit any declarations with the preliminary response except as authorized by the PTAB. 34 Practitioners are divided on whether to file a preliminary response. In the first year, 17% of all patent owners waived the opportunity to file such a response and in the second year, the number rose to 23%. 35 On the other hand, petitions were granted 89% of the time when a preliminary response was not filed and only 75% of the time when a preliminary response was filed. 36 Petitioners agree that if there is a fundamental flaw in the petition, such as a statute of limitations problem, failure to comply with PTAB rules or the petition does not address a claim element, then a preliminary response should be filed pointing out such flaws because then the petition might be denied. A preliminary response can also narrow issues where a petition is relying on redundant or cumulative references. The PTAB can and frequently does decline to consider such arguments. Patent owners may also wish to file a preliminary response to counter an asserted claim 33 35 U.S.C. 313(IPR), 323(PGR). 34 37 CFR 42.107(c)(IPR), 42.207(c)(PGR). 35 Harness & Dickey, supra n.21. 36 Ibid. construction argument, especially where the asserted construction is extreme. At a minimum, filing a preliminary response for this reason puts the PTAB on notice that claim construction will be a contested issue. Finally, a preliminary response may be successful in having the petition granted only to some of the challenged claims. A district court may be less likely to grant a stay if that occurs. THE PTAB RUNS A TIGHT SHIP The practitioner would do well to become familiar with the PTAB Rules and Regulations. Failure to comply with them can have serious repercussions. For example, the page limit for an IPR 37 petition is 60 pages and the page limit for a PGR 38 or a CBM 39 petition is 80 pages. Attempts to circumvent these page limits will not be successful. In Fidelity National Information Services, Inc. v. Data Treasury Corp. 40, petitioner sought to circumvent the 60 page limit for an IPR petition by submitting a 300 page expert declaration and a 1003 page singlespaced claim chart. The petition itself did not contain the required full statement of the reasons for the relief requested, including a detailed explanation for the significance of the evidence 41, but rather cited to and incorporated the supporting documentation. The PTAB expressly refused to consider the supporting documentation and, finding the petition itself failed to establish a reasonable likelihood the challenged claims were unpatentable, refused to institute an IPR 42. Petitioner met with a similar fate in Cisco Systems, Inc. v. C-Caution Technologies, LLC. 43 37 37 CFR 42.24(a)(1)(i). 38 37 CFR 42.24(a)(1)(ii). 39 37 CFR 42.24(a)(1)(iii). 40 IPR2014-00489, Paper 9 (Aug. 13, 2014). 41 This showing in the petition is required by 37 CFR 42.24(2). 42 Fidelity National, supra n.37, at Paper 9 (Aug. 13, 2014). 43 IPR2014-00454, Paper 12 (Aug. 29, 2014). 4

The lesson is clear. Petitioners should not try to circumvent the page limit for petitions. Petitioners are not, however, without remedy. A petitioner can move to have the page limit waived upon a showing that it is in the interest of justice 44. In the alternative, a petitioner can always file more than one petition. The PTAB is also prohibits the introduction of information at oral argument that was not included in the briefing. 45 The PTAB has stated the reason for this is that [u]nlike trials conducted in district court, a trial before the Board is conducted on paper. 46 For example, in Level 3 Communications, LLC v. AIP Acquisition LLC, 47 the PTAB refused to consider a patent owner s citation to a new case and reliance upon unexpected results because both were raised for the first time at the oral argument. While the PTAB is strict about prohibiting the introduction of information at oral argument which was not included in the briefing, the PTAB has been reluctant to exclude evidence obtained, for example, during discovery. One author has reported that in about 72 decisions on motions to exclude evidence made in a final written decision, only five motions were granted, they were only granted-in-part, and only two exhibits were excluded. 48 That does not mean, however, that motions to exclude should not be 44 37 CFR 42.24(2). 45 A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument. Office Trial Practice Guide, 77 Fed. Reg. 157, 48768 (Aug. 14, 2014). 46 CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 118 (Oct. 23, 2013). 47 IPR2013-00296, Paper 42 (Oct. 8, 2014). 48 McCall, B., Expect Denial: The PTAB Denies Almost All Motions to Exclude Evidence, AIPLA Newsstand (July 21, 2014). made. Quite the contrary. Most motions to exclude are denied as moot because the PTAB did not rely on the contested evidence in the final decision. That is, when evidence is contested, the PTAB tries to avoid relying on it. Therefore, even if a motion to exclude is denied as moot, the movant has obtained the desired relief because the evidence was not relied upon in the final decision. Discovery is also an issue the PTAB keeps strict control over. The Rules 49 allow for limited discovery in the interests of justice and from the outset, the PTAB made it clear that it would not permit the broad discovery allowed in district court litigation. While additional discovery is possible, the PTAB set forth a clear set of factors it would consider when deciding a motion for additional discovery in Garmin Int l Inc. v. Cuozzo Speed Tech. LLC. 50 The request for additional discovery must be based on more than a mere possibility or allegation. The moving party must be able to show beyond speculation that something useful will be uncovered. Requesting the other party s litigation position and underlying basis is not necessary in the interest of justice and will not be allowed. Also, if information can be obtained by the moving party through other means, it will not be in the interest of justice to have the other party produce it. In addition, the discovery requests must be easy to understand. If, for example, the discovery requests include 10 pages of instructions, the requests will be viewed as prima facie unclear. Finally, the requests must not be overly burdensome to answer. Several cases illustrate the PTAB s views towards limited additional discovery. In Corning Inc. v. DSM IP Assets B.V., 51 petitioner contended the patented compositions were inherently disclosed in the prior art and submitted an expert report to that effect. The PTAB granted DSM s request that the laboratory 49 37 CFR 42.51. 50 IPR2012-00001, Paper 26 (March 5, 2013). 51 IPR2013-0043, Paper 27 (June 21, 2013). 5

notebooks be produced but denied DSM s request that samples be produced because DSM failed to show it did not have enough time to produce its own samples and failed to state the quantity of each sample it needed. In Apple Inc. v. Achates Reference Pub., Inc., 52 the PTAB granted petitioner s motion for additional discovery into an exchange of emails between the patent owner s experts because the existence of those emails was deduced during deposition. The upshot on additional discovery is that the PTAB will allow it if it is based on more than mere speculation, it is in the interests of justice, the movant could not reasonably obtain the information by other means, and the requests are narrowly drafted. THE USE OF DETAILED EXPERT DECLARATIONS IS CRITICAL Although not required, the use of expert declarations is highly encouraged. As the USPTO stated in the Office Trial Practice Guide, [t]he Board expects that most petitions will rely upon affidavits of experts. 53 In addition, the expert declaration must disclose the underlying facts and data relied upon. Conclusory declarations may be given little or no weight. 54 Failure to adhere to these guidelines can be fatal. For example, in Monsanto Co. v. Pioneer Hi- Bred Int l, Inc., 55 petitioner challenged the validity of certain claims based on an expert declaration. The PTAB declined to consider the declaration because it was conclusory and did not grant the petition. Petitioner met with a similar fate in Panasonic Corp. v. Optical Devices LLC. 56 52 IPR2013-00080, -00081, Paper 58 (June 31, 2014). 53 77 Fed. Reg. 157, supra n.42, at 48763. 54 37 CFR 42.65. 55 IPR2013-00022, Paper 43 (Apr. 11, 2013). 56 IPR2014-00302, Paper 9 (July 11, 2014). Petitioner in Trivascular, Inc. v. Shaun L. W. Samuels 57 met with an even worse fate. There, petitioner sought an IPR but did not submit any supporting declarations. The petition was granted. The patent owner countered with two expert declarations. The PTAB did not invalidate any of the challenged claims, noting in part that petitioner did not submit any expert declarations supporting its contentions. Here, not only did petitioner lose the IPR, petitioner was also saddled with the estopple effects of losing the IPR. 58 Bolstering the credibility of an expert can also be important. This was demonstrated in ABB Inc. v. Roy-G-Biv Corp. 59 There, the patent owner was able to bolster the credibility of its own expert during cross-examination of petitioner s experts, where petitioner s experts stated that the patent owner s expert was held in high regard and that one of petitioner s experts had written multiple letters of recommendation for patent owner s expert. Based in part on this testimony, the PTAB gave greater weight to the patent owner s expert opinion and did not invalidate any of the challenged claims. The PTAB has made it clear that reliance upon detailed, non-conclusory expert declarations is critical. Also, the PTAB will favorably consider evidence bolstering an expert s credibility. IT IS VERY DIFFICULT FOR PATENT OWNERS TO AMEND CLAIMS In an ex parte reexamination, a patent owner can freely amend claims. 60 While a patent owner can also amend a claim in a post-grant 57 IPR2013-00493, Paper 45 (Dec. 3, 2014). 58 That is, petitioner could not in the future raise any anticipation or obviousness argument based on patents or prior publications it raised or reasonably could have raised in the IPR proceeding. 35 U.S.C. 315(e). 59 IPR2013-00062, -00282, Paper 84 (Apr. 11, 2014). 60 35 U.S.C. 305. 6

proceeding, 61 difficult. amending claims has proven Motions to amend claims in post-grant reviews are governed by 37 CFR 42.121 for IPRs and 37 CFR 42.221 for PGRs. Both provisions are the same and the motion to amend a claim must respond to the ground of rejection raised in the petition, must not expand the scope of the claim or add new matter, can only propose a reasonable number of substitute claims and must show where the support for the proposed amendment appears in the specification. In addition to the above, the PTAB has set forth an additional requirement to amend a claim. In Idle Free Systems Inc. v. Bergstrom, Inc., 62 the PTAB held that in order for a patent owner to prevail on a motion to amend a claim, the patent owner must further demonstrate that the proposed amended claim is patentable over the prior art of record as well as prior art not of record which is known to the patent owner. The PTAB further held that absent special circumstances, a challenged claim could only be replaced by one proposed amended claim. The PTAB explained that its restrictive policy towards amending claims in post-grant reviews is necessary because of the statutory deadlines the PTAB must meet in issuing its final decision and because the PTAB is required to conduct post-grant proceedings in a just as well as speedy and inexpensive manner. In this case, the PTAB denied the motion to amend a claim. In fact, the PTAB has granted a motion to amend a claim in only three proceedings. In Int l Flavors & Fragrances Inc. v. U.S. Dep t of Agriculture, 63 the PTAB allowed the patent owner to amend a claim to limit a broader Markush group to five compounds. The patent owner was able to demonstrate that, inter alia, the proposed amended claim was patentable over all the prior art. One should not take too much comfort from Int l Flavors, however. The 61 35 U.S.C. 316(d)(IPR), 326(d)(PGR). 62 IPR2012-00027, Paper 26 (June 11, 2013). 63 IPR2013-00124, Paper 12 (May 20, 2014). motion to amend the claim was unopposed. Also, the patent owner sought to amend a second claim and that request, even though it was unopposed, was denied because the patent owner could not establish that this second proposed amended claim was patentable over all the prior art. In Riverbed Technology, Inc., v. Silver Peak Systems, Inc., 64 two related proceedings, the PTAB allowed a patent owner to amend some of its claims. In both cases the patent owner did not file a response to the petition but rather filed motions to amend claims. With respect to the claims the PTAB allowed the patent owner to amend, the PTAB found, inter alia, that those amended claims contained limitations not found in the petition. Although amending claims in post-grant proceedings is difficult, that does not mean that a patent owner is without a remedy. If there is a co-pending application, the patent owner can submit the proposed amended claim there. Also, a patent owner can pursue other procedures, such as a reissue or ex parte reexamination, in order to obtain its proposed amended claims. 65 THERE IS NO GUARANTEE THAT A DISTRICT COURT WILL STAY A CASE IN FAVOR OF A POST-GRANT PROCEEDING Petitions for post-grant proceedings are frequently filed after a petitioner has been sued for infringement in a district court. Indeed, this is a prerequisite for filing a CBM petition. 66 The petitioner or sometimes the patent owner will then frequently move to stay the district court litigation until the post-grant proceeding is 64 IPR2013-00402, Paper 35(Dec. 30, 2014), IPR2013-00403, Paper 33 (Dec. 30, 2014). 65 See, e.g., Game Show Network, LLC v. John H. Stephenson, IPR2013-00289, Paper 31 (March 21, 2014), expressly approving these procedures. 66 AIA 18(a)(1)(B). 7

concluded. There is no guarantee, however, that the motion to stay will be granted. In determining whether to issue a stay, district courts frequently apply a three-part test: 1) the status of discovery and trial at the district court; 2) whether a stay will simplify the issues before the court; and 3) whether a stay will unduly prejudice the non-moving party. 67 Some courts will also consider other factors. 68 Courts have refused to stay a case if a petition for a post-grant proceeding has not yet been granted, holding that the stay request is premature. 69 Other courts, however, have granted a stay, at least until the PTAB rules on the petition for review. 70 Also, some courts will refuse to grant a stay if an IPR petition is granted only as to some of the asserted claims 71 or where the petitioner-defendant has raised invalidity grounds in its pleadings which were not raised in the IPR 72, because the IPR will not necessarily simplify the issues. Finally, where a patent owner and an accused party-petitioner are direct competitors, especially in a narrow field with few competitors, some district courts will not issue a stay because of undue prejudice to the patent owner. 73 Seeking a stay where a CBM petition has been filed is different. In addition to the above factors to consider before issuing a stay, a district court is also statutorily required to consider whether a stay, or a denial thereof, will reduce the burden of litigation on the parties and on the court. 74 Also, the aggrieved party has the right to an immediate statutory appeal to the Federal Circuit. 75 One such statutory appeal was VirtualAgility Inc. v. Salesforce.com, Inc. 76 There, where a CBM was declared against all of the asserted claims, the Federal Circuit held it was an abuse of discretion for the district to deny a stay even though the plaintiff and defendants were competitors because the CBM would simplify issues and reduce the burden of litigation on the parties and the court. 77 CONCLUSIONS Post-grant proceedings have been more popular than anyone anticipated. They have proven to be a fast, cost-effective way of challenging patents. The majority of challenged claims are 67 See, e.g., Advanced Micro Devices, Inc. v. LG Elec., Inc., 2015 WL545534, at *2 (N.D. Cal. Feb. 9, 2015). 68 See, e.g., Automatic Mfg. Systems, Inc. v. Primera Tech., Inc., 2013 WL1969247, at *1 (M.D. Fla. May 13, 2013) (holding that the court should look to the totality of the circumstances ). 69 See, e.g., TruePosition, Inc., v. Polaris Wireless, 2013 WL5701529, at *6 (D. Del. Oct. 21, 2013), aff d, 2013 WL6020798 (D. Del. Nov. 12, 2013). 70 See, e.g., Advanced Micro Devices, supra n.65, at *4. 71 See. e.g., Proctor & Gamble Co. v. Team Tech., Inc., 2014 WL533494, at *4 (S.D. Ohio Feb. 11, 2014). 72 See, e.g., TruePosition, Inc., supra n.67, at *5. 73 See, e.g., Princeton Digital Image Corp. v. Konami Digital Ent mt, Inc., 2014 WL3819458, at *6 (D. Del. Jan. 15, 2014). 74 AIA 18(b)(1)(D). 75 AIA 18(b)(2). 76 759 F.3d 1307 (Fed. Cir. 2014). 77 In Versata Software, Inc. v. Callidus Software, Inc., 771 F.3d 1368 (Fed. Cir. 2014), the Federal Circuit held it was an abuse of discretion to not stay a district court action even though the pending CBM did not cover all of the asserted claims. That opinion, however, was vacated because the day before the opinion issued, the parties settled their dispute and filed a stipulation of dismissal with the district court pursuant to FRCP 41(a). The Federal Circuit held the dismissal was effective on the day it was filed, thus mooting its opinion. F.3d., 2015 WL981523 (Fed. Cir. Feb. 27, 2015). 8

cancelled, although the cancellation rate is declining as patent owners become more experienced in opposing post-grant petitions and challenges to the more susceptible patents are resolved. The PTAB runs a tight ship and therefore full familiarity with the PTAB Rules and Regulations is necessary. Detailed expert declarations are critical for both patent owners and petitioners. It remains difficult for patent owners to amend claims, although other procedures for amending claims are available. Finally, there is no guarantee that a district court will stay a litigation because of a post-grant proceeding, although a stay is easier to obtain once a CBM proceeding is commenced. Post-grant proceeding practice and procedures will continue to evolve. These are still new proceedings and growing pains are to be expected. Also, the USPTO has indicated a willingness to address issues as they arise. For example, in a blog post 78 by Director Michelle K. Lee, Director Lee said that effective immediately the page limits for motions to amend and petitioner s reply briefs will be increased from 15 to 25 pages. She also said that in the near future, the motion to amend practice might be amended to remove the requirement patent owners must establish that the proposed amended claim is patentable over all the prior art known to the patent owner. Rather, the patent owner would only need to address the prior art of record. Other changes might include modifying the type of evidence a patent owner can rely upon in a preliminary response, a clarification of claim construction standards applicable to expired patents, emphasizing the importance of live testimony at oral hearing, amending how to handle multiple proceedings involving the same patent, amending discovery to establish real parties in interest and a single judge pilot program where one judge will decide whether to institute a proceeding and then, if a proceeding is instituted, adding two more judges at that time. It will be interesting to track how post-grant proceedings evolve. For more information on the topic discussed, contact Gerard F. Diebner at diebner@thsh.com. To view our recent publications, visit us on online at www.thsh.com and go to Publications. To subscribe for the newsletter, send email to marketing@thsh.com. About Tannenbaum Helpern Syracuse & Hirschtritt LLP Since 1978, Tannenbaum Helpern Syracuse & Hirschtritt LLP has combined a powerful mix of insight, creativity, industry knowledge, senior talent and transaction expertise to successfully guide clients through periods of challenge and opportunity. Our mission is to deliver the highest quality legal services in a practical and efficient manner, bringing to bear the judgment, common sense and expertise of well trained, business minded lawyers. Through our commitment to service and successful results, Tannenbaum Helpern continues to earn the loyalty of our clients and a reputation for excellence. For more information, visit www.thsh.com. Follow us on LinkedIn and Twitter: @THSHLAW. 78 Lee, Michelle K., PTAB s Quick-Fixes for AIA Rules Are to Be Implemented Immediately, Director s Forum: A Blog from USPTO s Leadership (Mar. 22, 2015). 9