Evolving PTAB Trial Practice: Navigating Complex Procedural Rules

Size: px

Start display at page:

Download "Evolving PTAB Trial Practice: Navigating Complex Procedural Rules"

Gladys Golden
6 years ago
Views:

1 Presenting a live 90-minute webinar with interactive Q&A Evolving PTAB Trial Practice: Navigating Complex Procedural Rules Strategically Using Routine and Additional Discovery, Requests for Joinder, and Motions to Amend MONDAY, DECEMBER 15, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Greg H. Gardella, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va. Scott A. McKeown, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va. The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions ed to registrants for additional information. If you have any questions, please contact Customer Service at ext. 10.

2 FOR LIVE EVENT ONLY 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 and enter your PIN when prompted. Otherwise, please send us a chat or sound@straffordpub.com 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.

3 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 ext. 35.

4 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 lefthand 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.

5 UPDATE ON PTAB POST- GRANT PATENT PROCEEDINGS BY: SCOTT MCKEOWN GREG GARDELLA

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

7 CAFC SURGE IPRs/CBMs Head to CAFC Threshold Issues Garmin v. Cuozzo (IPR ) Justiciability of Trial orders Neuman.only precludes interlocutory review SAP/Versatta (CBM ) 101 for CBM? Definition of CBM? Claim construction? Other issues coming RPI? Redundant Grounds 7 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

AIA PROGRESS (AS OF DECEMBER 2014) Total 2,216 IPR 1,966 CBM 242 PGR 2

AIA PETITION DISPOSITION 9 Copyright 2014

AIA FINAL DISPOSITIONS (AS OF DECEMBER 2014) 10

11 INTER PARTES REVIEW PETITIONS TERMINATED TO DATE (AS OF 10/16/2014) 14,396 Claims in 436 Petitions 6,186 Claims Challenged (436 Petitions) 8,210 Claims Not Challenged 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) 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) 11 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

OVERVIEW JUDGES 12 Copyright 2014 Oblon,

OVERVIEW JUDGES 13 Copyright 2014 Oblon,

OVERVIEW AIA STATISTICS AS OF OCTOBER 2014 14

15 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 15 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

16 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!! 16 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

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

17 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 17 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

20 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., IPR , Paper 19, October 30, 2014, -claim appendix new standard -More pages allocated?? -Shifting of pages?...stay tuned -Best practices? 20 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

22 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. 22 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

23 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. (IPR , 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 23 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

24 INDEMNIFICATION Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR , 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 and IPR (PTAB, June 2, 2014) No evidence of control Apple was sued separately Discovery denied First Data v. Cardsoft IPR (indemnification persuasive) 24 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

25 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 25 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

26 JOINDER Issue Joinder/Party Joinder Microsoft Corp v. Proxyconn Inc. (IPR ) NO!...Target Corp. v. Destination Maternity Corp., (IPR ) 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 U.S.C. 315(c) 26 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

27 FOLLOW-ON PETITIONS 35 USC 325(d) Substantially similar issue presented in petition? Medtronic, Inc. v. Nuvasive, Inc., Paper 8, No. IPR (11 September 2014) Unified Patents, Inc. v. PersonalWeb Techs., LLC, Paper 13, No. IPR (24 July 2014) Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., Paper 14, No. IPR (8 July 2014) Unilever, Inc. v. Procter & Gamble Co., Paper 17, No. IPR (7 July 2014) Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., Paper 17, No. IPR (19 June 2014) Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, Paper 19, No. IPR (21 November 2013) ZTE Corp. v. ContentGuard Holdings, Inc., Paper 12, No. IPR (25 September Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

29 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 29 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

30 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 30 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

31 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? 31 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

32 PTAB SEEKS INPUT FROM PUBLIC 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? 32 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

33 PTAB SEEKS INPUT FROM PUBLIC 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? 33 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

35 PTAB SEEKS INPUT FROM PUBLIC Multiple Proceedings: 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) 35 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

36 PTAB SEEKS INPUT FROM PUBLIC 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 36 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

37 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? 37 Copyright 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

38 THANK YOU CONTACT: SCOTT MCKEOWN/GREG GARDELLA

Recommended Textbook: Patent Office Litigation by Sterne, Kessler, Goldstein & Fox P.L.L.C. (published by Thomson Reuters Westlaw)

Recommended Textbook: Patent Office Litigation by Sterne, Kessler, Goldstein & Fox P.L.L.C. (published by Thomson Reuters Westlaw) LAW 306 - Patent Office Litigation Fall 2016 The recent passage of the Leahy-Smith America Invents Act (AIA) has shifted the battleground of certain patent challenges from district court to the USPTO by