Evolving PTAB Trial Practice: Navigating Complex...

Evolving PTAB Trial Practice:

Navigating Complex Procedural Rules Strategically Using Routine and Additional Discovery, Requests for Joinder, and Motions to Amend

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

The audio portion of the conference may be accessed via the telephone or by using your computer's

speakers. Please refer to the instructions emailed to registrants for additional information. If you

have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.

MONDAY, DECEMBER 15, 2014

Presenting a live 90-minute webinar with interactive Q&A

Greg H. Gardella, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Scott A. McKeown, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Sound Quality

If you are listening via your computer speakers, please note that the quality

of your sound will vary depending on the speed and quality of your internet

connection.

If the sound quality is not satisfactory, you may listen via the phone: dial

1-866-570-7602 and enter your PIN when prompted. Otherwise, please

send us a chat or e-mail [email protected] immediately so we can

address the problem.

If you dialed in and have any difficulties during the call, press *0 for assistance.

Viewing Quality

To maximize your screen, press the F11 key on your keyboard. To exit full screen,

press the F11 key again.

FOR LIVE EVENT ONLY

For CLE purposes, please let us know how many people are listening at your

location by completing each of the following steps:

• In the chat box, type (1) your company name and (2) the number of

attendees at your location

• Click the SEND button beside the box

If you have purchased Strafford CLE processing services, you must confirm your

participation by completing and submitting an Official Record of Attendance (CLE

Form).

You may obtain your CLE form by going to the program page and selecting the

appropriate form in the PROGRAM MATERIALS box at the top right corner.

If you'd like to purchase CLE credit processing, it is available for a fee. For

additional information about CLE credit processing, go to our website or call us at

1-800-926-7926 ext. 35.

FOR LIVE EVENT ONLY

If you have not printed the conference materials for this program, please

complete the following steps:

• Click on the ^ symbol next to “Conference Materials” in the middle of the left-

hand column on your screen.

• Click on the tab labeled “Handouts” that appears, and there you will see a

PDF of the slides for today's program.

• Double click on the PDF and a separate page will open.

• Print the slides by clicking on the printer icon.

FOR LIVE EVENT ONLY

UPDATE ON PTAB POST-

GRANT PATENT

PROCEEDINGS

BY: SCOTT MCKEOWN

GREG GARDELLA

6 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

PTAB ADAPTS TO DEMAND

• Lack of bandwidth/public perception impact? • Trial Institutions Decisions

• Joinder

• Discovery

• Feedback from public • New Rules?

• Concern over patent value?

• Growth Issues

• PTAB Triples in Size

• New offices

• Quality control?


CAFC SURGE

• IPRs/CBMs Head to CAFC

• Threshold Issues – Garmin v. Cuozzo (IPR2012-00001)

• Justiciability of Trial orders

• Neuman….only precludes interlocutory review

– SAP/Versatta (CBM2012-00001)

• 101 for CBM?

• Definition of CBM?

• Claim construction?

• Other issues coming

– RPI?

– Redundant Grounds


AIA PROGRESS (AS OF DECEMBER 2014)

Total 2,216

IPR 1,966

CBM 242

PGR 2

DER 6


AIA PETITION DISPOSITION


AIA FINAL DISPOSITIONS (AS OF DECEMBER 2014)


INTER PARTES REVIEW PETITIONS

TERMINATED TO DATE (AS OF 10/16/2014)

14,396 Claims in 436 Petitions

6,186 Claims Challenged (436 Petitions)

4,173 Claims Instituted (67% of Claims Challenged)

(296 Petitions)

1,415 Claims Found

Unpatentable (34% of Claims Instituted,

23% of Claims Challenged)

(119 Petitions)

8,210 Claims Not Challenged

2,013 Claims

Challenged

but Not

Instituted (33% of Claims

Challenged)

677 Claims Cancelled or Disclaimed (Non-PTAB) (16% of Claims Instituted, 11% of Claims Challenged)

2,081 Claims Patentable (50% of Claims Instituted, 33% of Claims Challenged)


OVERVIEW JUDGES


OVERVIEW AIA STATISTICS AS OF OCTOBER 2014


NEW OPPORTUNITY

Post Grant Review

• First-to-file Patents (March 16, 2013)

• Must be filed within 9 months of issuance

• All statutory defenses allowed

• Prior DJ invalidity challenges preclude PGR

• Standard – more likely than not that at least one claim

is unpatentable

• 3 filed so far (watch for Bio/Pharma)

• Beware window for IPR filings


MOTION TO AMEND REQ’S

1-for1 substitution

Burden is to demonstrate patentability

Substitute claims always contingent

Cancellation is never contingent

Support in all ancestral specs

Level of skill

Discussion not conclusion

What was known, what was not known

Claim interpretation

Anticipate disputes

Plain meaning to all not enough

42.73!!


MOTION TO AMEND REQ’S

Amendment Distinguishes

over all known art

Not just art of record

Search not required

May be advisable

Responsive to unpatentability

No broadening

Show changes

By markings (e.g., underline,

bracket)

15 pages, double spaced!!

Includes text of new claims!

Requirements bring significant controversy


AMENDMENTS RELATIVELY UNCOMMON


MOTIONS TO AMEND - DOWNTREND


PTAB REACTION

Motion to Amend:

2. What modifications, if any, should be made to the

Board’s practice regarding motions to amend?

New Representative Order: Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-

00441, Paper 19, October 30, 2014,

-claim appendix new standard

-More pages allocated??

-Shifting of pages?....stay tuned

-Best practices?


PARTY GAMES

Joinder/RPI/Privity


RPI/PRIVY BASICS

What is an RPI/privy?

PTAB applies factors of Taylor v. Sturgell, 553

US 890 (2008) 1) the existence of an agreement that the non-party be bound by a

determination of issues in an action between the parties,

2) the existence of a pre-existing substantive legal relationship

between the non-party and a party,

3) representation in an action by someone with the same interests as

the non-party,

4) the assumption of control over an action by the non-party,

5) re-litigation of issues through a proxy, and

6) the existence of a special statutory scheme.


GROWING TREND

WRONG COMPANY NAME?

All Real-Parties-in-Interest Must be Named

35 U.S.C. § 312(a) – all RPIs must be named

Beware corporate relationships

ZOLL Lifecor Corp. v. Philips Electronics North America

Corp. (IPR2013-00609, Paper No. 15)

Zoll Medical parent of Zoll Lifecor

Wholly owned, same management, overlapping interests

PTAB determined both RPI and privy

PTAB weighs “control” over all other factors for both

RPI and privy

Courts may disagree, err on side of caution


INDEMNIFICATION

Atlanta Gas Light Company v. Bennett Regulator Guards Inc.,

(IPR2013-00453, Paper 31, January 22, 2014)

If indemnification demand is met prior to petition filing,

PTAB may find opportunity of “control.”

Existence of indemnification agreement not enough

Apple Inc. v. Achates Reference Publishing, Inc., Case

Nos. IPR 13-00080 and IPR 13-00081 (PTAB, June 2,

2014)

No evidence of control

Apple was sued separately

Discovery denied

First Data v. Cardsoft IPR2014-00715 (indemnification

persuasive)


JOINT PETITION?

Multiplies RPI/Privy issues

If one falls, all may fall

Cannot Divorce bad actor

Must speak with one voice

Consistent claim constructions?

Rare agreement

But….optics favorable to court


JOINDER

Issue Joinder/Party Joinder

Microsoft Corp v. Proxyconn Inc. (IPR2013-00109)

NO!.....Target Corp. v. Destination Maternity Corp., (IPR2014-

00508)

Controversial, disagreement across panels

Rehearing pending (expanded panel)

Discretionary–

• “If the Director institutes an inter partes review, the

Director, in his or her discretion, may join as a party

to that inter partes review any person who properly

files a petition under section 311 . . . .” 35 U.S.C. §

315(c)


FOLLOW-ON PETITIONS

35 USC § 325(d)

Substantially similar issue presented in petition?

Medtronic, Inc. v. Nuvasive, Inc., Paper 8, No. IPR2014-00487 (11 September 2014)

Unified Patents, Inc. v. PersonalWeb Techs., LLC, Paper 13, No. IPR2014-00702 (24 July

2014)

Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., Paper 14, No. IPR2014-00315 (8 July

2014)

Unilever, Inc. v. Procter & Gamble Co., Paper 17, No. IPR2014-00506 (7 July 2014)

Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., Paper 17, No. IPR2014-00436 (19

June 2014)

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, Paper 19, No. IPR2013-00324

(21 November 2013)

ZTE Corp. v. ContentGuard Holdings, Inc., Paper 12, No. IPR2013-00454 (25 September

2013


DISCOVERY

Discovery Changes


DISCOVERY

IPR (interests of justice)…Much Ado About Nothing

Deposition of Declarants, little else

Routine Discovery in vast majority of trials

Need a compelling story Garmin v. Cuozzo (IPR 00001)

“more than a possibility or allegation”

No litigation positions

Can you get it yourself?

Not overly burdensome, easy instructions

Some panels more receptive than others

Be reasonable and precise


DISCOVERY

CBM…lower threshold showing (cause)

Deposition of Declarants, more if on sale or public use

Most CBMs stick to documents

Follows Garmin factors

Even where discovery available, mostly limited value

PTAB has technical expertise…they pick the correct submission

Beauty contests typically fail

No live testimony or video

Depo video by agreement only

waste of time in most cases


PTAB SEEKS INPUT FROM PUBLIC

• Request for Comments on Trial Proceedings Under the

America Invents Act Before the Patent Trial & Appeal

Board: 17 questions posed, due October 16, 2014

• Questions show areas where Board is inclined to grant

discovery:

Obviousness:

4. Under what circumstances should the Board permit

discovery of evidence of non-obviousness held by the

petitioner, for example, evidence of commercial success for

a product of the petitioner? What limits should be placed on

such discovery to ensure that the trial is completed by the

statutory deadline?



Real Party in Interest:

5. Should a patent owner be able to raise a challenge

regarding a real party in interest at any time during a trial?

If not, are the interests of justice easier to satisfy during the

preliminary proceeding?



Extension of 1 Year Period to Issue Final

Determination:

14. What circumstances should constitute a finding of good

cause to extend the 1-year period for the Board to issue a

final determination in an AIA trial?

Oral Hearing:

15. Under what circumstances, if any, should live testimony

be permitted at the oral hearing?

16. What changes, if any, should be made to the format of

the oral hearing?


PROCEDURAL - OTHER

Multiple Proceedings



Multiple Proceedings:

7-13. How should multiple proceedings before the USPTO

involving the same patent be coordinated? Multiple

proceedings before the USPTO include, for example: (i)

two or more separate AIA trials; (ii) an AIA trial and a

reexamination proceeding; or (iii) an AIA trial and a reissue

proceeding.

-reissue at CRU

-reexamination faster (except for designs)



General:

17. What other changes can and should be made in AIA

trial proceedings? For example, should changes be made

to the Board’s approach to instituting petitions, page limits,

or request for rehearing practice?

-rehearing timing?

-delays could benefit trolls by skewing timing statistics


CONCLUSIONS

Issue Joinder/Second Chance Petitions Uncertain

New Rules Expected Early ’15

Amendment to become easier

New Legislation?

Congress still repeating ‘11 patent reform mantra

Questions?

THANK YOU

CONTACT:

SCOTT MCKEOWN/GREG GARDELLA

703.412.6297

[email protected]

[email protected]

Evolving PTAB Trial Practice: Navigating Complex...

Documents

Transcript of Evolving PTAB Trial Practice: Navigating Complex...