United States Patent and Trademark Office Patent Trial and Appeal Board
PTAB Organization
Statutory Members of the Board The Board is created by statute (35 U.S.C. 6). 35 U.S.C. 6(a) provides: There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. 3
Board Action by Panel Decision 35 U.S.C. 6(b) requires final decision by minimum of 3-member Panels: Each appeal and interference shall be heard by at least three members of the Board, who shall be designated by the Director. 4
Judge Qualifications 35 U.S.C. 6(a) provides: The judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary of Commerce in consultation with the Director. Each Judge has a law degree from an accredited law school and has been admitted to at least one state bar Each Judge has at least a bachelors degree in science or engineering or equivalent Many Judges have advanced degrees in science or engineering 5
Backgrounds of Judges Judges have joined the Board from: Private Practice (solo to very large) International Trade Commission and Department of Justice USPTO Patent Examining Corps, Office of the General Counsel, and the PTAB All types of industries 6
Judges and Offices (as of July 14, 2014) 211 Administrative Patent Judges 5 Offices Washington, DC (Alexandria & Arlington, VA) Elijah J. McCoy Office (Detroit) Byron G. Rogers Building (Denver) Dallas Silicon Valley (Menlo Park) 7
PTAB Organization 8
Proceedings before PTAB Appeals From adverse decisions of examiners in ex parte patent applications and in ex parte and inter partes reexamination proceedings Post Grant Proceedings under America Invents Act (AIA proceedings) Inter partes reviews (IPR) Covered business method reviews (CBM) Post-grant reviews (PGR) Interferences/Derivations 9
PTAB Office Location Demographics as of July 14, 2014 5.21% 8.06% Virginia 4.27% Michigan 3.79% Colorado Texas 78.67% California 10
Allocation of Judges 7% 2% AIA 9% 35% Ex parte Appeals Inter Partes Reexamination Appeals Management 47% Interferences * As of July 14, 2014 (211 judges) 11
AIA Proceedings
AIA Proceeding Timeline 13
Structure of Proceeding 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 14
Major Differences IPR, PGR, and CBM IPR All patents are eligible Petitioner has not filed an invalidity action and petition is filed no more than one year after service of infringement complaint for the patent PGR Only FITF patents are eligible Petitioner has not filed an invalidity action CBM Both FTI & FITF patents are eligible, but must be a covered business method patent Petitioner must be sued or charged w/ infringement Only 102 and 103 grounds based on patents or printed publication Only 101, 102, 103, and 112, except best mode Only 101, 102, 103, and 112, except best mode 15
AIA 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 16
AIA 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 17
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 18
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 19
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 20
Derivation Derivation differs from IPR, PGR and CBM Only an applicant for patent may file a petition to institute a derivation proceeding Applicant must file petition within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application s claim to the invention The petition must set forth with particularity the basis for finding that an inventor named in an earlier application or patent derived the claimed invention 21
Judicial Review of AIA 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 22
Petition Filing 23
AIA Progress (as of July 24, 2014) AIA Monthly Filings Total 1,741 IPR 1,539 CBM 196 DER 6
AIA Progress (as of July 24, 2014) AIA Petition Technology Breakdown 0.4% 7.1% 5.3% Electrical/Computer (1,251) 15.3% Mechanical (266) Chemical (123) Bio/Pharma (93) 71.9% Design (8)
Petition Challenges (As of 6/18/2014) Challenged < All Claims Challenged < All Claims Challenged = All Claims Challenged = All Claims 0% 20% 40% 60% 80% 100% 0% 20% 40% 60% 80% 100% C u m u l a t i v e 84 101 C u m u l a t i v e 877 474 CBM IPR 26
101 and 112 Grounds Raised in CBM Petitions Only (As of 6/18/2014) Yes No Yes No 0% 20% 40% 60% 80% 100% 0% 20% 40% 60% 80% 100% C u m u l a t i v e 114 71 C u m u l a t i v e 67 118 101 Grounds 112 Grounds 27
Petitions Analysis needs to appear in petition itself (no incorporation by reference from declaration) Advise petitioners that it is better to provide detailed analysis for limited number of challenges than identify large number of challenges for which little analysis is provided. Conclusions need to be supported by: Sound legal analysis; and Citations to evidentiary record. 28
Claim Charts Petitions include claim charts in a standard twocolumn format (e.g., claim language in first column and prior art in second column). Claim charts are not sufficient by themselves; they must be explained. Claim charts should contain pinpoint references to the supporting evidence. 29
Claim Construction A claim subject to AIA review receives the broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. 42.100(b). Claim constructions must be supported by citations to the record that justify the proffered construction and analysis provided as to why the claim construction is the broadest reasonable construction. 37 C.F.R. 42.104(b)(3). An example of a failure to provide a sufficient claim construction occurs where claim terms are open to interpretation, but party merely restates claim construction standard to be used. 30
Experts Tutorials are helpful especially for complex technologies. Expert testimony without underlying facts or data is entitled to little or no weight. 37 C.F.R. 42.65(a). 31
Obviousness Question of obviousness is resolved based on underlying factual determinations identified in Graham Includes addressing differences between claimed subject matter and the prior art. We advise petitioners to address the specific teachings of the art relied upon rather than rely upon what others have said (e.g., examiners) Parties are to address whether there is a reason to combine art (KSR) and avoid conclusory statements. 32
Patent Owner Preliminary Response 33
AIA Progress (as of July 24, 2014) Cumulative Patent Owner Preliminary Responses Filed Waived IPR 833 239 CBM 132 18
Patent Owner Preliminary Response Patent Owners cannot present new testimonial evidence BUT can cite existing testimony and reports. We advise patent owners to clearly identify procedural and substantive reasons to deny petition, e.g., Statutory bar under 35 U.S.C. 315 or 325? Failure to identify real parties-in-interest/privies? Weaknesses in Petitioner s case? Petitioner s claim construction is improper Cited references are not, in fact, prior art Cited references lack material element(s) 35
Decision on Petition 36
Institutions (As of 6/18/2014) Petitions Denied Petitions Denied Petitions Instituted Petitions Instituted 0% 20% 40% 60% 80% 100% 0% 20% 40% 60% 80% 100% C u m u l a t i v e 21 68 CBM C u m u l a t i v e 136 562 IPR 37
Institutions (As of 6/18/2014) Instituted Claims < Challenged Claims Instituted Claims < Challenged Claims Instituted Claims = Challenged Claims Instituted Claims = Challenged Claims 0% 20% 40% 60% 80% 100% 0% 20% 40% 60% 80% 100% C u m u l a t i v e 12 56 CBM C u m u l a t i v e 143 419 IPR 38
AIA Progress (as of July 24, 2014) AIA Petition Dispositions Trials Instituted Joinders Percent Instituted Denials Total No. of Decisions on Institution IPR CBM FY13 167 10 + 87% 26 203 FY14 425 13 + 75% 147 585 FY13 14 82% 3 17 FY14 58 1 + 73% 22 81 DER FY14-0% 3 3
Joinder 40
Joinders (As of 7/17/14) Trials Instituted Joinders IPR 592 23+ CBM 72 1+ +24 cases joined to 22 base trials for a total of 46 cases involved in joinder. 41
Joinder Must be a like review proceeding Requires filing a motion and petition Must be filed within one month of institution Impact on schedule important 42
Discovery Discovery Period 43
Types of Discovery Initial disclosures Routine Discovery Cited exhibits Cross-examination of witnesses Inconsistent information Additional Discovery 44
Additional Discovery Five factor test used in evaluating additional discovery requests: 1. More than a possibility and mere allegation must exist that something useful might be found. 2. Is the request merely seeking early identification of opponent s litigation position? 3. Can party requesting discovery generate the information? 4. Interrogatory questions must be clear. 5. Are requests overly burdensome to answer? 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. 45
Depositions Federal Rules of Evidence apply Objections to admissibility waived Follow the Testimony Guidelines No speaking objections or coaching Instructions not to answer are limited 46
Motion to Amend Motion to Amend 47
Motions to Amend Board conference required Normally one-for-one claim substitution Must narrow scope Need to show patentable distinction Clearly state the contingency of substitution 48
Motions to Amend Unlike during examination, PTAB does not examine amended claims during an AIA proceeding. No search is conducted No claim rejections made Burden is on the movant (i.e., the patent owner) to show the patentable distinction of the proposed amended claim. 49
Oral Hearing 50
51
Oral Hearing Almost all AIA proceedings include an oral hearing. Oral Hearings are typically limited to one hour per side. Panel may have more than three judges. Some panel members may participate by video. Live testimony is permitted, but it is rarely allowed. All questions from the judges are based on the written record, including arguments made in the parties briefs and expert testimony filed in support of the parties briefs. 52
Oral Hearing No new evidence or argument is permitted. Demonstrative exhibits should serve merely as visual aids. Pages of the record, with appropriate highlighting (e.g., highlighted figures), are effective and could be very helpful 53
Settlement and Termination Settlement and Termination 54
Settlements * (As of 6/18/2014) Settled Before Institution Settled Before Institution Settled After Institution Settled After Institution 0% 20% 40% 60% 80% 100% 0% 20% 40% 60% 80% 100% C u m u l a t i v e 16 4 CBM C u m u l a t i v e 68 81 IPR * Pool is taken from 169 cases that have settled since inception. 55
AIA Progress (as of July 24, 2014) AIA Final Dispositions IPR CBM Settlements Adverse Judgments Final Written Decisions FY13 38 2 0 FY14 132 31 94 FY13 3 0 1 FY14 18 0 10
Settlement Parties may file a joint motion to terminate a proceeding on the basis of settlement Preauthorization is required; and May be filed at any stage of the proceeding, even before institution. Board has discretion to proceed to final written decision, especially at an advanced stage when all briefing is complete. Board is more likely to grant early motions to terminate. 57
Settlement When there are multiple petitioners, proceeding may be terminated with respect to one petitioner when that petitioner settles with patent owner. Joint motion to terminate must be accompanied by a true copy of the settlement agreement; a redacted version is not permitted. Parties may request that the settlement agreement be treated as business confidential information. 58
Final Written Decision 59
Final Written Decisions in IPRs (As of 6/18/2014) All Instituted Claims Unpatentable Some Instituted Claims Unpatentable None of Instituted Claims Unpatentable 0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% C u m u l a t i v e 38 14 15 *IPR (67 Final Written Decisions) 60
Final Written Decisions in CBMs (As of 6/18/2014) All Instituted Claims Unpatentable Some Instituted Claims Unpatentable None of Instituted Claims Unpatentable 0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% C u m u l a t i v e 8 2 1 *CBM (11 Final Written Decisions) 61
Final Written Decisions: Basis for Unpatentability (As of 6/18/2014) 102 103 112 101 102 103 70% 60% 64% 80% 70% 72% 50% 40% 30% 20% 10% 18% 0% 27% 60% 50% 40% 30% 20% 10% 39% 0% 0% CBM (11 decisions) IPR (67 decisions) * Multiple bases can be reported for a single Final Written Decision 62
PTAB Points of Contact For questions or status information, please contact: Chief Judge James Donald Smith (571) 272-7928 James.Smith@uspto.gov Vice Chief Judge (Acting) Scott Boalick (571) 272-8138 Scott.Boalick@uspto.gov
Thank You U.S. Patent and Trademark Office Patent Trial and Appeal Board
Reference Materials
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) 66
Major Differences between IPR, PGR, and CBM Proceeding Available Applicable Timing Post Grant Review (PGR) From patent grant to 9 months after patent grant or reissue Patent issued under first-inventor-to-file Must be completed within 12 months from institution, with 6 months good cause exception possible Inter Partes Review (IPR) 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-to-invent or first-inventor-to-file 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 67
Post Grant Resources Information concerning the Board and specific trial procedures may be found at: http://www.uspto.gov/ip/boards/bpai/index.jsp General information concerning implementation of the Leahy-Smith America Invents Act, including post grant reviews, may be found at: http://www.uspto.gov/aia_implementation/index.jsp 68