Proactive Patent Procurement and Prosecution Strategies:...

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Proactive Patent Procurement and

Prosecution Strategies: Minimizing

the Threat of Post-Grant Challenges Insulating Your Patent Portfolio From New Threats

Today’s faculty features:

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

THURSDAY, OCTOBER 8, 2015

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

Margaret A. Focarino, Senior Patent Advisor, Oblon McClelland Maier and Neustadt,

Alexandria, Va.

Scott A. McKeown, Partner, Oblon McClelland Maier & Neustadt,

Alexandria, Va.

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Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP

Proactive Patent Procurement

and Prosecution Strategies:

Minimizing the Threat of Post-

Grant Challenges SCOTT MCKEOWN PEGGY FOCARINO

Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP 5

The New Assertion Landscape


Roadblock PTAB

6


PTAB Disrupts District Courts

7


Institution is the Key

8


Prosecution: Adapt

PTAB is not going away

Alternative to litigation – Its working

Major legislative change unlikely – Is it really unfair??

Time to Adapt – Make Institution difficult

9


Changing USPTO Landscape

10


Current PTO Landscape

Three Game-Changers

Reduced patent application backlog

Reduced patent application pendency

A sustainable funding model

11


Changes → New PTO Initiatives

Focus on Compact Prosecution

Enhanced Patent Quality Initiative

Improving Global Patent Prosecution

12


The New Face of PTO

Interview Practice

Wait - what’s different?

Why do we care?

What’s in it for me?

13


Post-Issuance: What’s New at PTO?

Reissue

Ex Parte

Reexamination

14


PTO Rulemaking & Reform

PTAB Proposed Rules

Current Proposed Legislation

15


The Challenge for Patentees

16


Breadth/Infringement Drives prosecution – Over-reaching on scope – Avoiding summary judgment – Reexam too slow to matter – Leverage of cost and time (trolls) – Clear and convincing – Presumption of validity – Non-technical juries

PTAB…..Now What?

Patentees Planned for the Wrong

Forum

17


Broadest Reasonable Claim Construction

Preponderance of Evidence

Lack of Burdensome/Costly Discovery

Low Cost…SPEED

Patentee estoppel

Business Method Patents…DEAD – SAP: broad scope?

– Virtual Agility

Technical Judges

Early Claim Construction

Challenger Estoppel?

Challenger Friendly

18


Unprecedented Speed

19


Continuation estoppel 42.73(d)(3)(i) Patent applicant or owner. A patent applicant or owner whose claim is canceled is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct to a finally refused or cancelled claim ; . . .

Collateral Damage

20


Amendments very limited before PTAB – Wild West days of reexam are over

Motion…not “Amendment” – Burden on movant….tables turned

Strict showings • One-for-one replacement only • Must amend or lose opportunity for continuations • Could devastate large continuation investments • Co-pending reissue/reexam? • Single success to date (contested)

New Rules/Informational Decisions

Amendments?

21


Patentee PTAB Strategies:

Amend?

22


Inter Partes Reexam as Barometer – 45% cancelled/disclaimed – 43% Amended – Expect 70-80% cancellation in IPR (Death Squad?)

Stays on the Rise – Speed

• 7month trial schedule

– Technical Judges

Portfolios developed with outdated prosecution tactics being killed

Outcomes?

23


Perception, Petitions & Politics

Lack of bandwidth/public perception impact? • Trial Institutions Decisions • Single APJ Pilot? • Discovery

Feedback from public • New Rules • Concern over patent value

Growth Issues • PTAB Triples in Size • New offices • Quality control?

24


The Challenge for Patentees at the PTAB

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What Can You Do to Win as

Patentee?

Know the game….know it has changed – Be realistic

– Understand the PTAB hurdle is now the biggest

Rehabilitate Existing Portfolio

Develop New Prosecution Strategies

Preliminary Resp. (new evidence in ‘16?)

26


Survival Inherency/103

Target overreaching on 102 for litigation TSM test may not be dead!

– Capitalize on diminished resource – Don’t make silly arguments

Target overreaching on non-infringement Above all: Understand your audience Understand the clock Forum shop with an eye toward PTAB tendencies Understand Panel tendencies

27


Survival: Procedural Pitfalls

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

Paramount Home Entertainment Inc. v. Nissim Corporation (Case IPR2014-00961) (2015)

12 month window issue

28


Adapt: Prosecution Strategies

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Protecting Your Portfolio:

Strategies for Every Stage

Portfolio Strategies – Tips to avoid pitfalls that weaken patents – Premium on strong prosecutors – Portfolio remodel (CRU)

Application Drafting – How to draft disclosures for a broad scope of

protection and strong patentability defenses

Prosecution Strategies – New approaches that can strengthen your position

when your patent is challenged

30


Post Issuance Mitigation:

Ex Parte Reexamination

Patent owner friendly – Patent Owner can conduct interviews with the

examiner – No opportunity for challengers to participate

Examination limited to prior art issues, which is especially useful in certain technology areas – No review of patent eligibility under §101 – Only consider §112 on amendatory language

Create record that can be used by patent owner in response to an IPR petition

31


Post Issuance Mitigation:

Reissue

Can potentially broaden claims

Perceived more like continuation prosecution

– Board less likely to stay parallel proceedings

BUT…

– Third Party protests available

– § 101 and § 112 issues considered as well as § 102/ § 103 issues

– Examination now in the CRU

32


Patents that are difficult to attack – Meaningful dependent claims – Reasonable claims scope

• Varied portfolio • Numerous claims of varied scope • Divisionals

– MPF claims!! – Specification Definitions – Artful presentation of business methods – Quality, bullet claims….not broad over reaching – Reissue the new continuation?

What Can You Do to Adapt?

33


Portfolio Management:

Avoid Overbroad Claims

Claims drafted for literal infringement with weak support in the disclosure

Bullet claims of more value going forward

Claims supported by boilerplate alternative embodiments, but directed to a disparaged alternative solution

Claims that are broader than scope enabled by the disclosure

34


Application Drafting:

Detailed Disclosure

STOP ADMITTING!! – Background (generic)

• Foreign cases beware!!

– Incorporation by reference of prior art, including your own!!

Include enabling support for multiple embodiments – Boilerplate statements regarding alternatives may not be enough – Increases the opportunities to ensnare followers – More likely to have support for claims that are patentably distinct

Include a wide range of examples within embodiments – Preserve your flexibility for claims in later applications or

amendments at the PTAB

35


Application Drafting:

Claim Strategies

Draft multiple claims with overlapping scope – Creates a cost deterrent to potential

challengers • Difficult to address claims of varying scope within

page limit restrictions of a single petition • Expensive to file multiple petitions

– Vary your language among claims – Don’t just parrot apparatus features in method

format

36


Prosecution Tips:

Use Prosecution Record

Old Way – Avoid any statements on the record that may

limit claim scope. – Comment on reasons for allowance. – Argue all claims independently

New Way – Adapt statements on the record to define claim

scope that preserves validity and tracks markets.

37


Prosecution Tips:

Use Prosecution Record

There are limits on what is “reasonable” under the broadest reasonable interpretation

Prosecution history can be favored over extrinsic evidence, such as dictionary definitions, when the extrinsic evidence is inconsistent with the intrinsic evidence

Don’t just amend – See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed.

Cir. 2014); see also In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)

– Microsoft v. Proxyconn (CAFC 2014)

38


Portfolio Management:

Maintain a Pending Application

Your portfolio is a moving target Address newly discovered prior art

– Statement of relevance?

Preserves flexibility to adapt to PTAB challenges Remove disavowal/disclaimer

– (Hakim v. Cannon Avent Grp.) (CAFC 2007)

Vary Claim terms – More flexibility than reissue applications (broaden) – Speed?

Stockpile Indicia for important cases!!

39


Protecting Your Portfolio:

Prosecution Tactics

Present claims that provoke a restriction requirement to avoid continuation estoppel – Examiner supports view that claims in different

groups are “patentably distinct”

Consider the impact of filing terminal disclaimers – Common in unpredictable arts with multiple

overlapping families – Admission claims are not “patentably distinct”?

40


Strengthening Your Portfolio:

Prosecution Tactics

Create financial deterrents to potential IPR attack through PR challenges

Cost deterrents to potential post-grant challenges - more is better – More issued patents covering similar subject

matter

– Multiple claim sets with overlapping scope within a patent

41


Strengthening Your Portfolio:

Benefit of Multiple Related Families

Create portfolio diversity with several related but patentably distinct families covering various unpredictable elements of invention – Be sure to have enabling, descriptive support

for earliest possible priority date – Priority to multiple provisional applications

More patentably distinct claim sets in different families decreases likelihood of Continuation Estoppel

42


Portfolio Review:

Identify Potential Weaknesses in Current Portfolio

Review your portfolio as though you were a competitor – Better to be aware of the prior art than take

the ostrich approach

– View the art through the prism of potential IPR Petitioner

Take active steps to mitigate identified vulnerability to IPR attack

43


THANK YOU

QUESTIONS?

CONTACT:

SCOTT MCKEOWN

[email protected]

[email protected]

Proactive Patent Procurement and Prosecution Strategies:...

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