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ACC GuideSM

A Corporate Counsel Guide to

Post-Grant Proceedings at the

United States Patent &

Trademark Office (USPTO)

Sponsored by:

A Corporate Counsel Guide to Post-Grant Proceedings at the United States Patent & Trademark Office (USPTO)

Copyright © 2019 Association of Corporate Counsel and Kilpatrick Townsend & Stockton LLP

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A Corporate Counsel Guide to Post-Grant

Proceedings at the United States Patent &

Trademark Office (USPTO)

September 2019

Provided by the Association of Corporate Counsel 1001 G Street NW, Suite 300W Washington, DC 20001 USA tel +1 202.293.4103 fax +1 202.293.4107 www.acc.com

This ACC Guide provides an overview of recent developments in post-grant proceedings before the United States Patent Trial and Appeal Board (PTAB), an arm of the United States Patent & Trademark Office (USPTO), and specifically on two relatively new administrative proceedings for challenging competitor patents: inter partes review (IPR) and post-grant review (PGR). First, we provide a general overview of IPR and PGR proceedings, followed by a statistical analysis of the more than 10,000 petitions filed since enactment of the America Invents Act (AIA). Second, we take a deep dive into each step of a typical AIA trial—including how to draft a winning petition, motion to amend (MTA) practice, discovery, oral hearing and appeal. Third, we provide some strategic considerations when faced with a co-pending litigation or USPTO proceeding. Finally, we offer our strategic considerations and takeaways on how best to implement IPR and PGR practice into your overall corporate intellectual property (IP) strategy. As with any overview, the treatment of these topics is more illustrative than exhaustive. Nevertheless, the hope is that they will assist in-house and outside counsel in considering whether to file a patent infringement case or in defending a patent litigation.

The information in this ACC Guide should not be construed as legal advice or legal opinion on specific facts, and should not be considered representative of the views of Kilpatrick

Townsend & Stockton, LLP or of ACC or any of its lawyers, unless so stated. This ACC Guide is not intended to be a definitive statement on the subject, but rather to serve as a resource providing practical information to the reader.

This material was compiled by Justin Krieger, John Alemanni, Michael Morlock and David Reed of Kilpatrick Townsend & Stockton LLP, the 2019 Sponsor of the ACC Intellectual Property Network. For more information on Kilpatrick Townsend & Stockton, LLP, visit their website at www.kilpatricktownsend.com, or see the About the Authors section of this ACC Guide. The ACC wishes to thank the members of the Intellectual Property Network for their contributions to the development of this ACC Guide.

http://www.acc.com/

http://www.kilpatricktownsend.com/

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Contents

I. Introduction ..................................................................................................................................... 5

II. IPR and PGR Timeline .................................................................................................................... 6

III. PTAB Statistics ............................................................................................................................... 8

IV. The Petition and Institution ......................................................................................................... 13

A. Determining the “Real Party in Interest” (RPI) .................................................................................................................. 13

B. Claim Construction ................................................................................................................................................................... 14

1. The Board Applies the Phillips Claim Construction Standard .................................................. 14

2. The Ramifications of a Finding of Indefiniteness........................................................................... 16

C. Discretionary Denial of Institution ........................................................................................................................................ 16

V. Amendment Practice ................................................................................................................... 18

A. Burden of Proof .......................................................................................................................................................................... 18

B. Motion to Amend Pilot Program ........................................................................................................................................... 19

1. Request for Preliminary Guidance ................................................................................................... 20

2. Revised Motion to Amend (Revised MTA) ................................................................................... 20

C. Motions to Amend v. Reissue/Reexamination ................................................................................................................... 22

VI. Discovery and Evidentiary Issues at the PTAB........................................................................... 23

A. Availability of Discovery ........................................................................................................................................................... 23

B. Pre-Institution Discovery into Real-Party in Interest ....................................................................................................... 24

C. Expert Considerations: Be Sure Your Expert Is an Expert ............................................................................................ 25

D. Objections to Evidence, Supplemental Evidence, and Motions to Exclude ................................................................ 25

E. Proving Public Availability ......................................................................................................................................................... 26

VII. Oral Hearing .................................................................................................................................. 27

A. Overview ...................................................................................................................................................................................... 27

B. Requesting and Scheduling Oral Hearing ............................................................................................................................. 28

C. Oral Hearing Procedures ......................................................................................................................................................... 29

D. Demonstrative Exhibits ............................................................................................................................................................ 30

E. Recommendations ...................................................................................................................................................................... 32

VIII. Requests for Rehearing and Appeal ............................................................................................ 32



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A. Rehearing Standard, Procedure, and Statistics ................................................................................................................... 32

B. Appeal to the Federal Circuit ................................................................................................................................................. 33

IX. Strategy Issues Arising from Co-Pending Litigation or USPTO Proceeding ........................... 34

A. The One-Year Deadline under 35 USC § 315(b). ............................................................................................................. 34

B. Estoppel Considerations .......................................................................................................................................................... 35

X. Strategic Considerations and Takeaways ................................................................................... 36

XI. About the Authors ........................................................................................................................ 37

XII. Glossary ......................................................................................................................................... 39

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I. Introduction

The America Invents Act of 2011 (AIA) brought many changes to the United States patent system. In addition to changing United States patent law from a first-to-invent to a first-to-file system, the AIA created several new types of proceedings for challenging patents in the US Patent & Trademark Office (USPTO). The two most common types of proceedings for challenging patents created by the AIA are Inter Partes Review (IPR) and Post-Grant Review (PGR).1 These proceedings are heard before a panel of judges at the Patent Trial and Appeal Board (PTAB), which is an arm of the USPTO. IPR and PGR proceedings are similar to one another in terms of procedure but differ in the scope of permitted invalidity arguments and timing (when a petition may be filed). Specifically, challenges brought in IPR proceedings are limited to novelty and obviousness based on patents or printed publications, whereas challenges brought in PGR proceedings may be based on any ground related to patentability, including those based on prior art arguments as well as indefiniteness, lack of enablement, lack of written description support, and as unpatentable subject matter. In addition, PGR challenges are only available for patents filed under the AIA2 and may only be filed within the first nine months of issuance. Conversely, IPR challenges may be filed at any time for non-AIA patents, but only after the nine-month period has expired for AIA patents. Notably, the filing of a petition may trigger certain estoppel provisions, limiting invalidity arguments that may be raised by a petitioner in a parallel litigation or USPTO proceeding.



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This ACC Guide provides a comprehensive overview of IPR and PGR practice before the PTAB. We also discuss the many recent changes in practice and procedure before the PTAB. In addition, we take a deep dive into how to draft a winning petition, the changing nature of Motion to Amend (MTA) practice, evidentiary concerns and issues, preparing for oral argument, estoppel, and considerations when involved in a co-pending litigation. Lastly, we address how best to incorporate PTAB practice as a part of your overall corporate intellectual property (IP) strategy.

II. IPR and PGR Timeline

IPR and PGR proceedings begin with the filing of a Petition, which lays out the petitioner’s case-in-chief as to why the challenged claims should be declared invalid. Petitions are lengthy documents, frequently accompanied by numerous exhibits, which provide evidentiary support for factual assertions made in the Petition. USPTO rules dictate that a Petition for IPR cannot exceed 14,000 words (typically about 60 pages), whereas PGR Petitions are limited to 18,700 words (typically about 85 pages).3

A patent owner has the opportunity to respond to the Petition via an optional preliminary response.4 The preliminary response is due “no later than three months after the date of a notice indicating that the request to institute an inter partes review has been granted a filing date.”5 As discussed in further detail below, the patent owner may include expert testimony supporting the preliminary response, but any factual issues at this stage will be resolved by the Board in a light most favorable to petitioner—thereby limiting the effectiveness of expert declarations at this point in the proceeding.6 The preliminary response is the patent owner’s only opportunity to avoid institution of the proceeding.

Within three months of the preliminary response, approximately six months from the filing date of the Petition, the Board issues an institution decision.7 In an IPR, the institution decision determines whether, in the eyes of the PTAB, the petitioner has “demonstrate[d] that there is a reasonable likelihood that at least one of the claims challenged in the petition

is unpatentable.”8 In PGRs, the standard for institution is slightly higher: whether the petitioner has demonstrated that it is “more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”9 Early on, the Board had issued institution decisions on a ground-by-ground and a claim-by-claim basis. But in the United States Supreme Court’s SAS Inst. Inc. v. Iancu decision in 2018, the Court held that the PTAB must institute or deny on all challenged claims in an IPR petition.10 Thus, the PTAB no longer issues partial institution decisions.

Notably, the decision on whether to institute is entirely discretionary.11 Indeed, the PTAB has denied institution even when petitioners have satisfied the institution threshold as to some claims, but not as to others.12 As a result, petitioners would be well advised not to present relatively weak grounds in a Petition, as doing so may undermine more solid arguments for other claims, potentially resulting in a denial of institution on all claims and grounds. The institution decision may also include a preliminary ruling on claim construction.

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The rules indicate, and the United States Supreme Court has found, that the institution decision is both final and non-appealable.13 Thus, if the Board denies institution, the proceeding concludes.14

If, however, the Board institutes a proceeding, a limited discovery period opens, allowing the patent owner to take discovery from the petitioner. This discovery is ordinarily limited to cross-examination of any declarants who submitted declaration testimony in support of the Petition.15 Unlike district court litigation, deposition testimony in IPRs and PGRs constitutes trial testimony, and may be directly cited as such in the parties’ responses, replies and motions. The patent owner may request permission for broader discovery.16 Such requests are rarely granted, however, as the Board only grants such requests if the moving party shows that such additional discovery is in the interests of justice.17

After the period of patent owner discovery has expired, the patent owner files its substantive Response to the Petition, typically citing a declaration of its own expert witness as well as the cross-examination testimony of petitioner’s expert witness. The expert witness may or may not be the same witness that provided testimony in support of the preliminary response. Additionally, the patent owner has the option of filing an MTA on one or more of the challenged claims.18 MTA grant rates have been historically low, resulting in fewer MTAs being filed. Recently, however, the USPTO promulgated a MTA pilot program, discussed in detail below, in which the patent owner may seek preliminary guidance from the Board on a Motion to Amend.19 The Pilot Program was intended to give patent owners a more realistic opportunity to amend their claims. The effects of the new pilot program remain to be determined.

After the patent owner files its Response and optional Motion to Amend, the petitioner may take limited discovery from the patent owner. This discovery is again generally limited to cross-examination of the patent owner’s experts and any fact witnesses. After petitioner’s discovery has concluded, the petitioner may file a reply, responding to patent owner’s Response, and an Opposition to patent owner’s Motion to Amend, if filed. Patent owner may also file a Sur-Reply to petitioner’s Reply, thereby having the last word on the primary pleadings. Additional back-and-forth discovery may continue, followed by a patent owner Reply and a petitioner Sur-Reply on the Motion to Amend, if a Motion to Amend was originally filed by patent owner. Thus, the petitioner has the last word on any Motion to Amend briefing.

At the conclusion of briefing, the parties are given the opportunity to file motions to exclude evidence and request oral argument.20 Oral argument is conducted before a panel of administrative law judges (typically three) at the Board. Both sides are usually given from 30 minutes to one hour to present arguments, and parties may not present new arguments or evidence at oral argument. A few months after the oral argument but not more than one year after the institution decision, the Board issues a final written decision either upholding or canceling the challenged claims.21 The Board also issues its decision on any motions to exclude simultaneously with the issuance of its final written decision. At the same time, the Board will issue a decision on Patent Owner’s Motion to Amend, if filed. The final written decision of the Board triggers certain estoppel effects on the petitioner which may significantly limit invalidity arguments that may be raised during any subsequent



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patent infringement litigation or USPTO proceeding. Once issued, the final written decision is appealable to the United States Court of Appeals for the Federal Circuit in Washington, DC

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A sample timeline for IPR and PGR proceedings is provided below. Specific deadlines are dictated by a scheduling order, which is issued shortly after institution.

III. PTAB Statistics

Since the first PTAB trials in 2013, the USPTO has developed a significant database that can provide insight into the parties’ likelihood of success. According to USPTO statistics, through June 30, 2019, 10,299 petitions for IPR, PGR or covered business method (CBM) have been filed, for a filing rate of about 1,600 petitions per year. The vast majority (93%) of these trials have been IPR proceedings, owing largely to the fact that relatively few patents challenged to date have been AIA patents that are PGR-eligible. That said, the PGR filing rate has increased slightly over the last few years but remains quite low at about 4% of all petitions filed in 2018.

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Of the petitions filed in the last year, the majority of cases (64%) have been in the electrical and computer science fields, followed by mechanical and business methods, with Bio/Pharma and Chemistry filling in the remainder of cases.

As discussed above, the PTAB will issue an Institution Decision approximately 6 months after a Petition is filed. In the Institution Decision, the PTAB indicates whether, in its view, the petitioner has satisfied its burden for instituting trial. As shown below, according to USPTO statistics, institution rates have declined but now have largely stabilized from a high of about 87% in FY2013 to about 62% today.



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As with district court litigation, PTAB trials frequently settle, with roughly 16% of cases settling before an institution decision, and about 25% of cases settling after institution.

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The overall disposition for PTAB trials all-time is shown below. The disposition of cases breaks down roughly as follows:

⚫ 30% of cases settle or are dismissed before the Board’s Institution Decision

⚫ 18% of Petitions are denied institution.

⚫ 51% of cases are instituted (roughly 75% of cases reaching the institutiondecision are instituted)

⚫ 25% of cases settle, are disclaimed or joined with another proceeding afterinstitution.

⚫ 25% of cases result in completed trials, receiving a final written decision.

⚫ Of trials that reached the final written decision:

• 68% resulted in all claims being deemed unpatentable,

• 17% resulted in all claims being upheld, and

• 15% resulted in a mixed claim finding (some claims upheld, and somedeemed unpatentable).



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Below is a trial flow diagram of all PTAB trials filed according to data compiled by Lex Machina23 for all 10,527 petitioned trials filed from September 16, 2012 through August 22, 2019.

Analysis of the above data demonstrates that PTAB trials are largely won or lost at the institution stage. That said, IPR and PGR proceedings remain a viable option for petitioners challenging competitor patents, but only if they establish a solid case worthy of proceeding to a Final Written Decision. Conversely, patent owners facing a challenge in the PTAB should focus their efforts on settlement discussions and the Preliminary Response, as they face long odds should the case proceed to a Final Written Decision.

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IV. The Petition and Institution

A. Determining the “Real Party in Interest” (RPI)

Under 35 U.S.C. § 315(b), an IPR “may not be instituted if the petition requesting the proceeding is filed more than year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” In discussing the AIA, United States Senator Kyl stated, “[i]deally, extending could-have-raised estoppel to privies will help ensure that if an inter partes review is instituted while litigation is pending, that review will completely substitute for at least the patents and-printed-publications portion of the civil litigation.”24 One of the goals of this extension of the one-year bar was to insulate patent owners from multiple and belated administrative attacks by related parties. While the Board initially seemed to define real-party-in-interest and privy relatively narrowly, the Board and the Federal Circuit have extended the reach of § 315(b) over the last couple of years.

For example in Applications in Internet Time, LLC (“AIT”) v. RPX Corporation (“RPX”), the Federal Circuit concluded that the Board applied an unduly restrictive test for determining whether RPX was a “real party in interest” within the meaning of § 315(b) and failed to consider the entirety of the evidentiary record in assessing whether § 315(b) barred institution of IPRs filed by RPX.25 In November 2013, AIT filed a complaint against Salesforce. Subsequently, Salesforce filed CBM petitions challenging the asserted patents; Salesforce’s petitions were denied. More than one year after Salesforce was served with the AIT complaint, RPX filed IPR petitions challenging the validity of the asserted patents, identifying itself as the “sole real-party-in-interest.” The Board granted AIT’s request for additional discovery regarding the issue of who was a real party in interest.

The court explained that the inclusion of the terms “real party in interest” (RPI) and “privy of the petitioner” in § 315(b) makes clear that Congress planned for the provision to apply broadly— sweeping in not only what might be traditionally known as real parties in interest, but privies as well. The court vacated and remanded so that the Board could consider all the evidence of record.26

The timing of corporate mergers can also play a significant role in determining the RPI and privy of parties to PTAB proceedings. The Federal Circuit recently held in Power Integrations, Inc. v. Semiconductor Components Indust., LLC, DBA ON Semiconductor, that the RPI and privy issue should be assessed at the time of institution—not at the time that an IPR petition is filed. Specifically, the court held that the “best reading of § 315(b) requires consideration of privity and RPI relationships arising after filing [of a petition] but before institution.”27 Thus, any party considering filing an IPR or PGR petition should be cognizant of any possible merger discussions so as not to unexpectedly trigger a time bar issue.



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B. Claim Construction

1. The Board Applies the Phillips Claim Construction Standard

When the Board initially implemented AIA trials, the Board adopted the broadest reasonable interpretation (BRI) claim construction standard. The BRI standard is the same standard applied by examiners during prosecution. By adopting the BRI standard, the Board created a situation where the validity of the same patent might be challenged simultaneously in two different venues under two different claim construction standards, potentially resulting in inconsistent findings. In late 2018, however, the Board changed the claim construction standard used in AIA trials, replacing the BRI claim construction standard with the narrower Phillips standard, traditionally applied in district court litigation and in investigations before the International Trade Commission (ITC). The new claim construction standard has been applied to all AIA trials filed on or after November 13, 2018, the effective date of the final rule.

Under the Phillips standard, patent claims are given their ordinary and customary meaning as understood by one of ordinary skill in the art. The Phillips standard is generally considered to be a narrower claim construction standard than the BRI standard. However, the difference can be subtle. Both the BRI and Phillips standards take into account the claims, specification, prosecution history and extrinsic evidence as necessary to determine the appropriate claim scope. As its name indicates, the focus under the BRI standard is on the “broadest” reasonable interpretation in the context of the specification, whereas the Phillips standard permits more narrow constructions in certain circumstances. For example, where a claim term remains ambiguous after fully considering the evidence of record, the Board is permitted under the Phillips standard to adopt a narrower interpretation if doing so preserves the claim’s validity—an option unavailable under the BRI standard. As a result, the shift to the Phillips standard is seen as a positive step for patent owners since claims may be construed more narrowly and are therefore less likely to read on the prior art. That said, the differences between the Phillips and BRI standards have not and will not play a significant role in most AIA trials.

The adoption of a uniform claim construction standard in AIA trials, the ITC and district courts will likely have a secondary benefit for patent owners. Under the old BRI standard, petitioners had at least some ability to hedge their bets and adopt alternative positions, construing the claims broadly in AIA trials to improve their invalidity arguments while simultaneously arguing for a more narrow construction before district courts and the ITC to defend against infringement claims. Since the Phillips standard is now being applied in all three venues, petitioners will need to exercise extreme caution in selecting their claim construction positions. Construing claims too broadly, although beneficial from a prior art and invalidity standpoint, may result in an unfavorable finding on infringement in district court. Conversely, seeking a narrow construction in an AIA trial, although potentially beneficial from a non-infringement position, may result in an unfavorable final written decision on validity before the PTAB. In practice, the resulting reduced strategic flexibility for petitioners likely will prove an even greater benefit for patent owners than the application of the narrower Phillips standard itself.

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Additionally, recent USPTO rules require the Board to “consider” claim construction orders issued by district courts and the ITC if timely made of record in the corresponding AIA proceeding. This rule raises significant strategic and cost considerations regarding the timing of petitions to account for the anticipated issuance of district court and ITC claim construction orders. If a petitioner delays filing of a petition to the end of the one-year-from-service deadline created by 35 U.S.C. § 315(b), claim construction orders by a district court or the ITC in a related proceeding may issue while the AIA trial remains pending. On the other hand, the filing of a petition soon after service of a complaint alleging patent infringement may result in the claim interpretation issue being resolved before the Board. Furthermore, an early preliminary injunction order may resolve one or more claim construction issues and could be relevant in a parallel or later-filed Board proceeding. In these ways, the new Board claim construction standard works to improve consistency among district court, ITC and Board proceedings. As there may be strategic and cost-related reasons to have this issue resolved before a both technically and legally trained Board panel rather than a district court or the ITC, petitioners should carefully consider the timing of their petitions to increase the likelihood that the forum of their choice is first to adjudicate any important claim construction issues.

In addition to the changes to the claim construction standard, in the most recent update to the Trial Practice Guide (TPG), the Board has made clear that the petitioner must provide claim construction positions with the initial petition and may not do so later in the proceeding. In the revised TPG, the Board notes that the petitioner is required to identify claim terms to be construed as part of the petition under 37 CFR § 42.104(b)(3). The Board also notes that while the petitioner may respond to any new claim construction issues raised by the patent owner, the petitioner cannot raise new claim construction issues that were not previously raised in its petition. Further, the Board stresses that a “petitioner who chooses not to address construction under §112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).”28

The Board’s aligning of the claim construction standard for AIA trials with the standard used by district courts and the ITC should result in more consistent and fair patent validity determinations based on the same claim scope used in infringement assessments. The new rules represent an ongoing policy shift by the Board under the leadership of Director Andrei Iancu for increased consistency, uniformity and predictability. But with the uniform claim construction standard, petitioners will need to tread cautiously in drafting their claim construction positions, carefully considering non-infringement positions in any related district court or ITC proceedings. In addition, timing considerations involving parallel trial court or ITC proceedings will need to be carefully evaluated to maximize the chances that the most favorable forum will first adjudicate any important claim construction issues. Often, petitioner/defendants should consider moving to stay any related district court or ITC case to reduce cost in the event the challenged patent is deemed invalid and to maximize the chances of a favorable ruling. Stays may be granted more liberally since the uniform claim construction standard may result in the simplification of legal issues, resulting in increased judicial efficiency.



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2. The Ramifications of a Finding of Indefiniteness

In a small percentage of AIA proceedings, despite the parties offering argument and evidence regarding a claim’s meaning, the Board has declined to institute proceedings on challenged claims on the basis that one or more of the challenged claims are indefinite.29

While this may at first blush seem like a positive outcome for a petitioner, the finding does not have the force of law; the patent remains valid and enforceable. Further, depending on the timing, the Board’s finding may not impact a parallel litigation on the challenged patent.

This practice has been criticized, including by Director Iancu in a 2016 article before he became director.30 Further, the United States Supreme Court’s recent decision in SAS suggests that this practice would not survive scrutiny by the Supreme Court. SAS held that the AIA statute requires that the petitioner, not the Board, define the contours of the review.31

Where the Board finds that the claims are indefinite and declines to institute, the Board is resting on a ground that could not have been raised by the petitioner, i.e., indefiniteness.32 The United States Supreme Court in SAS suggested that such a decision might be reviewable, noting that “[a]s Cuozzo recognized, we begin with the strong presumption in favor of judicial review.”33 The United States Supreme Court went on to note “that §314(d) does not enable the agency to act outside its statutory limits.”34 However, the Federal Circuit relied on §314(d) to dismiss challenges of non-institution on this basis (“The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”)

In some instances, the finding by the Board can complicate rather than simplify concurrent district court proceedings. For example, in some instances, the district court may have already conducted a preliminary injunction hearing. As part of such a hearing, the parties have likely presented claim construction positions supported by expert witness testimony. After having presented one position before the district court, the defendant may not be able to reverse course and take a position that the defendant now believes the claims to be indefinite on the basis of the Board’s finding.

C. Discretionary Denial of Institution

The Board can exercise its discretion in determining whether to institute an AIA proceeding. The Board’s discretion derives from 35 U.S.C. §§ 314(a) and 325(d). The Board’s discretion under these two sections is set out somewhat differently. Under § 314(a), “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines...that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.” The Board’s discretion under § 325(d) is set out more explicitly, “[i]n determining whether to institute..., the Director maytake into account whether, and reject the petition or request because, the same orsubstantially the same prior art or arguments previously were presented to the Office.”

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In late 2017, the Board designated one section of its decision in General Plastic Industrial Co.,Ltd. v. Canon Kabushiki Kaisha35 as precedential. In the designated section, the Board

addressed serial IPR petitions challenging the same patents. The Board identified seven factors that it would consider under § 314(a) in deciding whether to institute a trial for a follow-on petition:

1. whether the same petitioner previously filed a petition directed to the sameclaims of the same patent;

2. whether at the time of filing of the first petition the petitioner knew of the priorart asserted in the second petition or should have known of it;

3. whether at the time of filing of the second petition the petitioner already receivedthe patent owner’s preliminary response to the first petition or received theBoard’s decision on whether to institute review in the first petition;

4. the length of time that elapsed between the time the petitioner learned of theprior art asserted in the second petition and the filing of the second petition;

5. whether the petitioner provides adequate explanation for the time elapsedbetween the filings of multiple petitions directed to the same claims of the samepatent;

6. the finite resources of the Board; and

7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination notlater than 1 year after the date on which the Director notices institution of review.

Recently, the Board designated as precedential two additional decisions related to the standard for denying institution under 35 U.S.C. §§ 314(a) and 325(d). The first decision rested primarily on § 325(d) but also considered some of the General Plastics factors under § 314(a).36 In that case, the Board found that the Examiner had rejected the challenged claims over the same prior art combination asserted in the Petition. The Board further found that the petitioner’s arguments were substantially the same as the Examiner’s and found that the petitioner failed to show that the Examiner erred in evaluating the prior art combination. While petitioner presented an expert declaration, the Board found the declaration substantially similar to the Petition and unsupported by objective evidence. Based on these findings, the Board exercised its discretion under § 325(d) to deny institution of the petition.

But the Board’s inquiry did not end there. The Board further found that “simply because we exercise our discretion to deny the Petition under § 325(d) does not mean that we cannot consider and weigh additional factors that favor denying institution under § 314(a).”37 The Board noted that the district court proceeding was nearing its final stages. Thus, according to the Board, instituting inter partes review would not provide an effective and efficient alternative to district court litigation. The Board found this additional factor weighed in favor of denying the Petition under § 314(a).38



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The second decision39 rested solely on the Board’s analysis under § 314(a), applying theGeneral Plastics factors. HTC Corporation (HTC) had previously filed a petition requesting review of the same patent challenged by Valve Corporation (Valve). The Board denied institution of HTC’s petition because HTC failed to show a reasonable likelihood of establishing unpatentability of a challenged claim. Valve subsequently filed its Petition after the Board denied HTC’s petition.

The Board first noted that General Plastics is not limited to instances where the same petitioner files multiple petitions. The Board considered the relationship between Valve and HTC and between the two petitions. The Board found that Valve’s petitions relied on the same prior art combinations as HTC’s petition. Further, the Board noted that Valve and HTC were co-defendants in a parallel litigation, and HTC’s devices incorporated technology licensed from Valve. The Board stated that the complete overlap in the challenged claims and the “significant relationship” between Valve and HTC favored denying institution. The Board also remarked on the timing of the various petitions.40

In the most recent update to the trial practice guide (TPG), the Board addressed multiple petitions challenging a single patent, stating that one petition should be sufficient and filing more than one at the same time “may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” The updated TPG goes on to suggest that the petitioner “should” rank petitions if it files multiple petitions. The TPG also notes that the patent owner “could” respond. These suggestions follow a recent decision in which the Board required the petitioner to rank several petitions filed simultaneously, challenging the same patent.41

The updated TPG and recently designated decisions stress the importance of filing petitions as early as is practicable. Also, it is incumbent on the petitioner to explain why its petition raises arguments that differ from those previously raised by the Examiner in prosecution or by another previously filed or even simultaneously filed petition.

V. Amendment Practice

A. Burden of Proof

As discussed above, at the time of filing its substantive Response to the Petition, patent owner has the option of filing an MTA. Early on, USPTO rules mandated that patent owners had the burden of proof in demonstrating patentability for any claims presented in an MTA. Not surprisingly, especially since PTAB judges were not well-suited to conduct examination of claims presented in an MTA, very few MTAs were granted.

In October of 2017, the Federal Circuit issued an en banc decision in Aqua Products Inc. v. Matal, holding that patent owners no longer bear the burden of proving patentability of their amended claims. Instead, the burden appears to be on the petitioner or, in some cases, is shared with the Patent Trial and Appeal Board (PTAB).42 Many stakeholders and practitioners anticipated a substantial rise in MTA success rates in view of the shift in burden for proving unpatentability. Recent statistical data shows there was a noticeable uptick in MTA filings for FY2018.43

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Initial statistics show a significant increase in MTA grant rate after the burden shift in Aqua Products.44 This trend appears to have held strong, as the MTA grant rate has remained significantly greater than the pre-Aqua Products grant rate. Since the Aqua Products decision on October 4, 2017, the PTAB has granted or granted-in-part 22% of MTAs, which, although low, is nearly three times greater than the 8% pre-Aqua Products grant rate.45

B. Motion to Amend Pilot Program

The USPTO implemented a new pilot program on March 15, 2019 concerning MTA practice in AIA trials, including IPR, PGR and CBM proceedings before the PTAB. The Notice adds two new options for MTA practice:

⚫ Patent owner may request that the Board issue preliminary guidance on its MTA;

0%

5%

10%

15%

20%

25%

Pre-Aqua Products Post-Aqua Products

MTA Grant Rates Pre-and Post-Aqua Products

MTAs Filed by Fiscal Year

and/or

⚫ Patent owner may choose to file a revised MTA after receiving petitioner’sopposition to the original MTA or after receiving the Board’s preliminaryguidance (if requested).



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Traditionally, a patent owner has been permitted to file an MTA within three months of the institution decision in addition to responding to petitioner’s Petition arguments in a Patent Owner Response. In the MTA, the patent owner offers to replace one or more claims from the patent with substitute claims. The petitioner may then file its opposition to the MTA within three months, presenting arguments that the substitute amendments are unpatentable. The patent owner may then file a reply to the opposition within one month. Petitioner may then file a sur-reply, which is typically due one month after the reply. Because the MTA practice proceeds in parallel with the substantive case, a decision on the MTA will typically be contingent on a denial of the petitioner’s main assertions of unpatentability.

The new pilot program gives patent owners two additional options: (1) request preliminary guidance from the Board on the MTA, and/or (2) file a revised MTA after receiving the petitioner’s opposition and/or after receiving the Board’s preliminary guidance, if requested. If a patent owner selects neither option, the procedure regarding the MTA remains largely unchanged, except that deadlines are extended slightly and the petitioner may file a sur-reply as of right.

1. Request for Preliminary Guidance

When the patent owner specifically includes a request for preliminary guidance in its MTA, the petitioner will file its opposition, and within four weeks the Board will provide a non-binding opinion on whether there is a reasonable likelihood that the MTA satisfies the statutory and regulatory requirements, including a preliminary view on the patentability of the proposed substitute claims.

The preliminary guidance may give the parties an additional opportunity to resolve their differences and reach settlement.

2. Revised Motion to Amend (Revised MTA)

Regardless of whether that preliminary guidance has been requested, however, the patent owner has two possible responses to the petitioner’s opposition: (a) file a reply (which will be followed by a sur-reply), or (b) file a revised MTA. In the revised MTA, the patent owner may present a new set of claims, which must be responsive to petitioner’s arguments and/or the Board’s preliminary guidance, if requested. A revised MTA then triggers a new extended scheduling order and a rapid string of briefing: the petitioner’s new opposition is due in six weeks, the Patent Owner’s Reply is due three weeks thereafter, and the petitioner’s sur-reply is due in three weeks after the reply (i.e., one week before oral hearing). A comparison of these new options with existing MTA practice is illustrated below.

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The MTA pilot program went into effect on March 15, 2019 and applies to all AIA trials instituted on or after that date. Although no formal end date has been announced, the USPTO anticipates the program will last for approximately one year, at which time the USPTO will reassess its effectiveness. This means that the pilot program is now in effect and will be applied to any petition filed before the program ends.

Although the effects of the new pilot program remain to be seen, the MTA pilot program is welcome relief for patent owners, whose MTAs had a mere 19.1% grant rate last year. Indeed, the expectation is that the MTA grant rate will increase, at least somewhat, now that patent owners will have some preliminary insight into the Board’s thinking as well as an opportunity to tweak their substitute claim set before the Final Written Decision. The new options also give rise to a number of other issues latent to MTAs generally, such as the scope of intervening rights for petitioners. How the new MTA pilot program affects these issues will be something to watch in the coming months.

Below is a diagram highlighting the various options now available to patent owners under the new MTA pilot program.



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C. Motions to Amend v. Reissue/Reexamination

Considering the relatively low rate of granting MTAs in PTAB trials, Reissue and Ex Parte Reexamination may prove more attractive options for patent owners wishing to amend their claims. On October 29, 2018, the USPTO issued a Notice requesting comments on proposed modifications to MTA practice. The Office received a number of comments and questions concerning the interplay between reexamination and reissue proceedings during a co-pending AIA trial (IPR, PGR or CBM review). The USPTO recently responded to those comments by publishing a Notice discussing the handling of requests to amend claims through reexamination and reissue proceedings during co-pending AIA trials. Notably, the Notice was intended to summarize rather than amend or alter existing practice.

The Office indicated that it would consider a reissue application or a request for reexamination any time before, but not after, either (1) the Office issues a trial certificate cancelling all claims in a patent, or (2) the Federal Circuit issues a mandate concerning a decision finding all claims invalid. The Office will issue trial certificates after either the period for filing a notice of appeal from an AIA trial decision has closed (63 days after (i) a final written decision (FWD) or (ii) a decision on a request for rehearing following a FWD), or an appeal to the Federal Circuit has been finally resolved.

Additional important takeaways from the Notice include:

⚫ Patent owners (PO’s) may avail themselves of reissue or reexamination before,during, or even after an AIA trial has concluded, so long as it is filed before theOffice has issued a trial certificate, effectively providing PO’s with an additionaloption to try and amend their claims.

⚫ On motion or on its own, the Office will likely stay examination of a reissueapplication or reexamination pending an FWD in an AIA trial addressing thesame patent. A showing of good cause is required. The Notice provides severalfactors that may be considered in deciding whether to stay or lift a stay of a co-pending reissue or reexamination proceeding. A motion to lift a stay after FWDwill likely be granted if the PO has proposed amendments in that proceeding in ameaningful way not previously considered by Office, e.g., narrower claims thanthose previously considered in a related AIA trial.

⚫ The one-year bar to filing an IPR/PGR under 35 USC 315(b) after service of acomplaint does not apply to a reissued patent, which is considered a new patent.In contrast, the one-year bar does apply to reexamined patents, which are notconsidered new patents, even if the reexamination certificate results in amendedclaims.

⚫ Since reexamination requires raising a substantial new question of patentability(SNQ), a PO cannot raise a question in a ground already decided in a FWD. ASNQ may be based on such grounds, however, during an AIA trial. A SNQcannot be based on denied amended claims in an AIA trial.

⚫ The Office may deny institution of an AIA trial if a parallel Office proceeding is more advanced and involves overlapping issues.

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⚫ If a stay of a reissue application is lifted on PO’s motion pending Federal Circuitappeal of an FWD, the USPTO will delay issuing any notice of allowancepending resolution of the appeal. But reexamination typically will continue tocompletion, notwithstanding a Federal Circuit appeal.

The USPTO Notice concerning the interplay between reissue, ex parte reexamination and PTAB trial practice continues Director Iancu’s push to provide meaningful mechanisms for permitting PO’s to amend claims during AIA trials. Now, in addition to the recently launched MTA pilot program, which provides PO’s up to two opportunities to present amended claims, the Office has confirmed that PO’s may file for reissue or reexamination, even after a negative FWD, effectively affording a third opportunity for PO’s to amend their claims. The takeaway is that Reissue or Reexamination may provide an attractive alternative to the cost and expense, not to mention uncertainty, of filing an MTA—even under the new MTA pilot program.

VI. Discovery and Evidentiary Issues at the

PTAB

Perhaps the greatest difference between current PTAB practice and ex parte reexamination is the consideration of evidence, particularly in view of discovery. This means that parties must closely consider the risks and rewards of coming forward with evidence. For example, discovery may reveal that a reference was not publicly available, or that the expert was not an actual expert or did not consider relevant evidence in preparing an expert declaration. In either instance, a party’s arguments may be severely undercut by discovery into the evidence presented.

A. Availability of Discovery

Once the Board institutes a proceeding, a limited discovery period opens allowing the patent owner to take discovery from the petitioner. This discovery is ordinarily limited to cross-examination of any declarants who submitted declaration testimony in support of the petition.46 However, the patent owner may request permission for broader discovery.47 The Board only grants such requests if the “moving party [] show[s] that such additional discovery is in the interests of justice.”48 Practically speaking, the Board often denies such requests, as the intent of AIA proceedings was to reduce the cost of determining patent validity.

In determining whether a request for additional discovery is “in the interest of justice,” the Board follows a fact-based analysis considering at least the following factors: (1) there must be more than a possibility and mere allegation of finding something useful through additional discovery; (2) the litigation positions of the parties and the underlying basis for the requested discovery; (3) the ability to generate equivalent information by other means; (4) whether the discovery requests are easily understandable; and (5) the burden of the proposed requests.49



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The Board tends to focus on the first and fifth factors most often when deciding whether additional discovery is warranted. Thus, in general the Board will pro forma deny any request for discovery that seems like a “fishing expedition.” Consequently, a patent owner seeking additional discovery must generally possess some evidence establishing a basis for the additional discovery sought, and the requests for additional discovery should be tailored as narrowly as possible to avoid being perceived as burdensome.

After the patent owner files its response, the petitioner may take limited discovery from the patent owner.50 This discovery is again generally limited to cross-examination of the patent owner’s expert and fact witnesses. However, as with the patent owner, the petitioner may seek additional discovery, but again must show that discovery is in the interest of justice.51

B. Pre-Institution Discovery into Real-Party in Interest

One of the more common types of discovery for patent owners is an inquiry whether the petitioner has properly named all real parties in interest. As discussed above, an IPR cannot be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, a real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.52 Consequently, all real parties-in-interest must be identified in the petition.53

Notwithstanding the substantive merits of the petition, a patent owner may therefore be able to prevent institution of an IPR proceeding by identifying at least one real party-in-interest that was not named in the petition. To accomplish this, the patent owner must first determine who is an unnamed real party-in-interest, and then prove this fact to the Board. The Board has explained that “Narrowly focused requests for additional discovery on [real parties-in-interest] may, if appropriate, be permitted.”54

There are two factual contexts in which disputes frequently arise as to whether a real party-in-interest was properly named and whether additional discovery on the matter is warranted. As the Board stated, a party that funds, directs, and controls an IPR is a real party-in-interest.55 Consequently, the existence of indemnification agreements between the petitioner and unnamed third parties extending to either the IPR proceeding itself or any underlying, related litigations are often sufficient to raise a question of fact as to whether the unnamed third party is a “privy” to the petitioner or at least a real party-in-interest to the IPR proceeding.56 The second situation where disputes as to real parties-in-interest typically arise is where an unnamed party has the ability to exercise some or complete control over the filing of the petition and petitioner’s conduct of the proceeding. These situations frequently involve circumstances such as the acquisition of one entity by another, parent-subsidiary relationships between entities, and the use of the same counsel, prior art, and arguments between one proceeding and another.57

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C. Expert Considerations: Be Sure Your Expert Is an Expert

Because experts in post-grant proceedings are subject to cross-examination, an important practice point is selecting an expert with relevant technical experience. “The Board has broad discretion to assign weight to be accorded expert testimony.”58 A lack of relevant experience will likely come out on cross-examination, and the Board has often discounted testimony from experts with less relevant technical experience.

As one example, in a challenge of a patent claiming an athletic shoe design, Skechers selected an expert who “testifie[d] that he has not had occasion to work with athletic shoes.”59 The same expert testified in his declaration that he had relevant experience because “(1) he has participated ‘in the design and engineering of various biomechanical systems, including medical and dental devices, bicycle components, exercise equipment, and consumer products,’ and (2) that he ‘also engineered a spur system that is integrated into equestrian riding boots in a manner that eliminates traditional straps and provides enhanced control for riders.’”60 The Board highlighted that “[n]otably absent, however, from Mr. Ganaja’s stated experience is any exposure to, or consideration of, the design or construction of athletic footwear, which is central to this proceeding.”61 The Board contrasted this with testimony from two of adidas’ witnesses who both had “considerable experience in the design, creation, and analysis of footwear.”62 This experience led the Board to credit adidas’ expert over Skechers’ expert in affirming the validity of the challenged patent.63

Thus, it is important for both petitioners and patent owners to be cognizant of an expert’s relevant experience, and select an expert that can credibly testify as to the prior art.

Another practice point for deposing experts in PTAB proceedings is that, unlike in district court litigation, the mechanics of drafting the expert’s declaration is generally irrelevant. A BPAI decision “advise[d] the bar that (1) we assume that ordinarily an attorney prepares at least the first draft of a declaration after discussion with the witness, (2) the witness is probably paid for time involved in testifying, either because the witness is an outside expert or is employed by the real party in interest, (3) drafts, possibly numerous drafts, are created and revised through discussions between the witness and the attorneys and (4) ultimately a draft is agreed to which is signed. We have no problem whatsoever with the process.”64 The PTAB has confirmed this position, stating that “the mechanics of declaration preparation is ‘a waste of time, both for the witness and the Board’”65 and also that “Declarants often have assistance in authoring their declarations.”66

D. Objections to Evidence, Supplemental Evidence, and Motions to

Exclude

“A party wishing to challenge the admissibility of evidence must file any objections within five business days of service of evidence to which the objection is directed, or ten days after institution of trial.”67 Common objections include, e.g., lack of foundation, lack of relevance, the evidence will cause unfair prejudice, the evidence is inadmissible hearsay, or the evidence has not been properly authenticated.



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The party who served the evidence is then given ten business days to serve any supplemental evidence to remedy an objection.68 A common form of supplemental evidence is an authenticating declaration for evidence to respond to an authenticity objection. Supplemental evidence is served, but is not filed.69 The supplemental evidence may later be filed if the objecting party files a motion to exclude.70

The objections simply serve as a placeholder and are waived if the objecting party does not file a motion to exclude. Motions to exclude are due after the Petitioner’s Reply and the Patent Owner’s Sur-Reply. The motion to exclude should be limited to the substance of why the evidence is not admissible.71 The PTAB has been explicit that “[a] motion to exclude is not a vehicle for addressing the weight to be given evidence—arguments regarding weight should appear only in the merits documents.”72

The Board often finds that consideration of objected-to evidence is not necessary to come to the ultimate conclusion of patentability. In such instances, the Board simply finds the motion to exclude moot.73 In general, the Board declines to exclude evidence, thus parties often decline to file motions to exclude.

E. Proving Public Availability

The Board tends to be stricter in determining whether a document is a printed publication. Thus, as a general rule, petitioners are well served to rely upon Patents and Published Patent Applications where possible.

Where a petitioner must rely on a non-patent reference, the petitioner should be careful to establish the reference was publicly available. The Federal Circuit recently held that an article regularly maintained in an online database, assigned a unique identifier, and indexed by date and author is not necessarily a “printed publication” under Section 102.74 In Activision, the Federal Circuit stated that “although [the reference at issue] was indexed by author and year, it was not meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.”75

Petitioners relying on non-patent documents should include evidence that the document was available to the public and provide details regarding how a person of ordinary skill in the art could obtain the document. Further, if possible, petitioners should provide evidence that persons of ordinary skill did in fact obtain copies of the document and provide evidence that distribution was made without restriction. Similarly, if possible, the petitioner should provide not only declarations from distributors but from recipients of the document.

Patent owners should seek discovery into each of these points and attempt to establish a gap in public availability or show that the document on which the petitioner relies is different in some way from the evidence the petitioner has presented regarding that document’s publication.

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VII. Oral Hearing

A. Overview

Oral hearing is the final stage of a post-grant proceeding before the PTAB. Though the entire post-grant proceeding after institution is referred to as a “trial,” oral hearing is typically the only live proceeding held before the Board. Oral hearing provides the parties with a final opportunity to make argument and to interact directly with the Board before it reaches a final written decision. Accordingly, the hearing is the culmination of the proceeding.

Oral argument is typically presented to a panel of three administrative patent judges assigned to adjudicate the proceeding. The Board takes care to select panels that have suitable experience to handle the technology at issue and that are free of any conflicts of interest. Care is also taken to assign related cases to the same panel of judges. Administrative patent judges are well-versed in patent law and are comfortable analyzing the technologies that come before the Board.

Judges are assigned to panels according to the procedures laid out in the Board’s Standard Operating Procedure (SOP) 1.76 In certain cases, panels may be expanded to more than three judges, including where appropriate to secure and maintain uniformity of the Board’s decisions.77 The practice of using expanded panels has been criticized as “panel stacking” by the Board to achieve desired outcomes.78 In response to these concerns, SOP 1 provides heightened standards for assigning an expanded panel, including recommendation by the Chief Judge and approval by the Director of the UPSTO.79 Use of expanded panels by the Board has proven rare. The vast majority of cases will be decided by a three-judge panel appointed according to the normal procedures.

Oral hearing occurs after the presentation of all evidence. With limited exceptions for live testimony discussed below, no new evidence or arguments are permitted at oral hearing. Attorneys for the parties are permitted to present their case by offering a summation of arguments and evidence but may not go beyond the arguments and evidence already of record in the case. In this regard, oral hearing is procedurally similar to closing argument during trial in district court. But unlike closing argument, oral hearing before the Board involves an intense probing of the technical and legal issues in the case by an active panel of judges. The judges are likely to interrupt counsel early and often with questions. Counsel is well-served to know the record, to anticipate questions from the panel, and to answer questions directly and forthrightly. The purpose of oral hearing is not only to persuade the judges of the strengths of a party’s position but also to recognize and address any concerns that the Board may have. A well-developed strategy and thorough preparation are critical to achieving success.



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B. Requesting and Scheduling Oral Hearing

Oral hearing is granted by the Board in all cases, but only upon request by one or more parties to the proceeding.80 Requests for oral argument must comply with 37 C.F.R. § 42.70(a). That regulation provides that “[t]he request must be filed as a separate paper and must specify the issues to be argued.”81 Only issues identified in the parties’ requests may be argued during the hearing.

The due date for filing a request for oral hearing is set in the scheduling order issued by the Board upon institution of the proceeding. In addition to including a statement of issues to be argued, the request should include the amount of time a party considers sufficient to present its argument.82 Ordinarily the Board provides one hour per side for argument, but the Board commonly grants more or less time depending on the circumstances of a particular case.83 The oral argument request should also identify any special equipment or needs. Hearing rooms are equipped with a screen for slide presentations and the display of exhibits, but the parties must advise the Board of any other needs such as an easel for poster boards, an overhead projector/ELMO (a type of projector), or space to accommodate a wheelchair.84 A party with a special request should follow up by telephone with a Board paralegal.85 Finally, seating in the Board’s hearing rooms is very limited and is available on a first-come, first-served basis.86 The Board asks that any party anticipating that more than five individuals will attend argument on its behalf notify the Board as soon as possible, and no later than the request for oral argument.

The date for oral hearing is initially set in the scheduling order issued by the Board upon institution of the proceeding. Hearing schedules also are published by the Board on its website about one month in advance.87 Oral hearing usually occurs at least three months before the Board’s statutory one-year deadline88 to issue a final determination. The parties may not stipulate to a change to the date for oral argument. Rather, any request to modify the oral hearing date must be directed to the panel. In view of the busy schedules of both the Board and counsel for the parties, and the Board’s limited hearing room availability, any effort to modify the oral hearing date should be made far in advance of the date for oral hearing and should only be made for good cause. The Board regularly denies requests to modify oral hearing dates made without sufficient cause or advance notice.

Oral hearings are held in all USPTO offices, though it is very common for one or more of the judges to appear at the hearing remotely via video or audio. Most hearings are held at USPTO headquarters in Alexandria, Virginia in the United States. Morning and afternoon sessions are generally scheduled in each of the hearing rooms. Some hearings are held in the four USPTO regional offices including the Texas Regional Office in Dallas, Texas, the Rocky Mountain Regional Office in Denver, Colorado, the Midwest Regional Office in Detroit, Michigan, and the Silicon Valley Regional Office in San Jose, California.89 All the listed offices are located in the United States. And occasionally, the Board will conduct “road shows” in other locations that are sponsored by law schools or bar associations. The final date, time, length, and location for the hearing are confirmed by the Board in an oral hearing order.

After the parties receive the Board’s oral hearing order, the parties may request a pre-hearing conference call identifying any issues or objections for early resolution.

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In some cases, an early resolution of certain issues can resolve uncertainty going into the hearing and may prove strategically advantageous for a party. A pre-hearing conference call also may afford the parties an opportunity to seek guidance on issues that the panelwould like addressed. The parties may seek resolution of any pending motions to strike or exclude evidence and to discuss unresolved issues with demonstrative exhibits. Addressing these issues before the hearing may help conserve the parties’ limited time and avoid time-consuming procedural arguments on the day of the argument. The Board may rule on any issues raised at a pre-hearing conference or may defer its ruling until the hearing or until its final written decision.

C. Oral Hearing Procedures

During inter partes review and post-grant review, the petitioner has the burden of proving unpatentability by a preponderance of the evidence.90 As the party with the burden of proof, the petitioner argues first, followed by the patent owner. After each party presents its case, both parties are allowed to present rebuttal.

The petitioner has substantial flexibility to present argument in the order and manner it wants. If the petitioner wishes to reserve time for rebuttal, which it will desire in almost all cases, it must do so at the beginning of the argument. Often the Board will ask petitioner at the outset how much time it would like to reserve. Petitioner generally will not be permitted to reserve more than half of its allotted argument time for rebuttal. As a rule of thumb, it is common for a petitioner to reserve one-quarter to one-third of the allotted argument time for rebuttal. For example, for a one-hour argument, a petitioner often will reserve 15 to 20 minutes for rebuttal.

The patent owner presents its argument after petitioner and is afforded substantial flexibility in the order and manner in which it wants to present its argument. The Board’s Trial Practice Guide also permits patent owner to present a brief sur-rebuttal if requested.91 Sur-rebuttal is typically brief, usually no more than a few minutes. The patent owner should reserve time for sur-rebuttal at the outset of its argument.

Some cases are more complex, involving multiple patents or parties. Those patents or parties may be related or unrelated depending on the circumstances of a particular case, and thus may present the same or different issues. In more complex cases, the Board will craft a format that makes sense for the particular hearing and that provides each party with a fair opportunity to be heard. For example, in cases with multiple related patents, the Board may hear argument from the parties in one consolidated proceeding to preserve efficiency. In other cases with unrelated patents, the Board may hear separate argument even where the parties are identical. In cases with multiple joined petitioners, the Board often will require the petitioners to work together to present argument jointly unless there are issues unique to a particular petitioner.

Lead counsel for each party is required to appear at the oral hearing, but any counsel of record is permitted to make argument. Indeed, in some cases it can be effective to split time between two or more attorneys to address separate issues. The proceedings are open to the public and anyone is allowed to attend. Accordingly, it is important to take care not to divulge confidential information during the hearing. If the parties have concerns about



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disclosing confidential information or believe that doing so will be necessary, the parties must raise the issue with the Board before the hearing, for example at a pre-hearing conference call.

Live testimony is not permitted without permission from the Board and is only granted in limited cases. The Board considers requests for live testimony on a case-by-case basis. Factors that the Board may consider in deciding whether to allow live testimony include (1) whether the testimony may be case-dispositive, (2) whether the demeanor of a witness is critical to assessing credibility, and (3) whether the witness is a fact witness.92 An example where live testimony may be permitted is where declaration testimony is offered by an inventor to antedate prior art references.93 By contrast, the testimony of an inventor is considered new evidence and is not permitted where a declaration of an inventor has not previously been filed.94 The Board is unlikely to allow live testimony from experts, because the Board has explained that their credibility turns on the plausibility of their theories rather than demeanor.95 In most cases, parties can expect that oral argument will be limited to presentations by counsel and will not include testimony from witnesses.

The best oral arguments are a conversation between counsel and the judges. Counsel should listen carefully to the judges and should seek to identify and address any concerns that the Board has with the party’s position. Rather than rigidly marching through a PowerPoint presentation, counsel should be flexible and should adjust their presentation to focus on those areas of concern. In view of the limited time for argument, it is often not possible to comprehensively address every issue raised during the course of the trial. Thus, counsel must exercise judgment in curating the arguments to be presented at the hearing, resting on the briefs for other issues not presented.

Petitioners bear the ultimate burden of proof and must take special care to meet that burden by addressing each proposition of unpatentability, including claim-by-claim and element-by-element analysis of all disputed issues. Patent owners do not bear the burden and have more ability to zero in on flaws in a petitioner’s analysis. In all cases, the Board is tightly constrained by the record and by the grounds presented in the petition.96 Thus, the parties must maintain focus on the record and are well-served to use exhibits extensively. The Board is highly proficient with the technology at issue and will expect a substantive technical discussion by counsel.

D. Demonstrative Exhibits

The Board permits the parties to use demonstrative exhibits during oral argument. The Trial Practice Guide explains, however, that “elaborate demonstrative exhibits are more likely to impede than help an oral argument.”97 Instead, demonstratives usually take the form of a slide presentation. In some cases, counsel may find physical exhibits or a handout or binder to be useful. However, counsel should understand that one or more judges are likely to participate remotely and should plan the presentation accordingly. Counsel should also take care to identify demonstratives by page or slide number during argument so that any remote judges will be able to follow the presentation and the transcript will be easy to follow when the Board prepares its final written decision.

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The applicable regulations provide that “[d]emonstrative exhibits must be served at least seven business days before the oral argument and filed no later than the time of oral argument.”98 The deadline to serve demonstratives requires early preparation. It is not possible to continue to edit demonstratives up until the eve of the hearing. A party’s ability to modify demonstratives is limited after the deadline for service.

It is critical to understand that demonstrative exhibits are not evidence. Indeed, the Board requires that each slide of demonstratives be marked “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in a footer.99 Nothing may appear on the demonstratives that was not previously presented in the record.100 It is a best practice to include record citations for the content of every slide, and to refer to those record cites during oral argument. It is also a best practice to bring paper copies of demonstratives for the judges and the court reporter. Demonstratives should be filed as exhibits with the Board in accordance with the instructions of the panel, which varies from case to case.

As the party with the burden of proof, a petitioner will want to use demonstratives in almost all cases. Demonstratives can provide a roadmap for the judges to prepare a final written decision. Demonstratives are also helpful aids to assist a petitioner to identify and provide the Board with all of the evidence necessary for the petitioner to meet its burden of proof.

Patent owners face a more difficult strategic decision whether and how to use demonstratives. Patent owners present argument after the petitioner and thus will be in a position to respond directly to arguments made during that presentation. In this regard, patent owners in particular will need to be able to flexibly move between petitioner’s own demonstratives and the actual papers and exhibits in the record. Thus, patent owners should not constrain themselves to materials contained within their own slide deck. On the other hand, as explained above, demonstratives can be a helpful roadmap for judges when reaching a final determination. Demonstratives also can help the judges follow the arguments and ensure that the Board does not miss issues when preparing the final written decision. Indeed, some judges have stated that demonstratives can be helpful for following the argument.101 Thus, it is generally recommended that patent owners provide the Board with demonstrative exhibits, though use of those demonstratives may vary depending on how the hearing progresses.

After service of demonstratives, each party may serve objections. Upon receipt of an opposing party’s demonstratives, counsel should immediately review the demonstratives to verify that opposing counsel has not included any new argument or materials outside the record in the case. Objections generally should be limited to egregious violations that would prejudice the party. Disagreement with an opposing party’s position is not a valid basis to object. If the content of a slide can be readily associated with an argument made or evidence referenced in a filing, it is proper. Again, it is a best practice to include record citations on each slide to associate the contents of the slide with the papers of record. The parties should meet and confer to seek resolution of any objections. If the parties are unable to resolve any objections, the parties should file objections with the Board and request a pre-hearing conference if appropriate.



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E. Recommendations

The importance of the oral hearing cannot be overstated. It is each party’s final opportunity to make its case to the Board. It is also one of the only chances for the parties to interact directly with the Board regarding the merits of the case. Counsel should be well-versed with the record and should have a robust outline with record cites for all issues that may be addressed at the hearing. The Board will expect a substantive, technical discussion of the merits of the anticipation or obviousness grounds asserted during the proceeding. Evidence is key, and that evidence should be the focus of the discussion with the Board.

Demonstrative exhibits are generally an effective way to call the Board’s attention to the arguments and supporting evidence. When used properly, demonstratives can help a party efficiently discuss the issues and address any concerns of the Board. But rigid use of slides without engaging in a fluid conversation with the Board is counterproductive. Counsel should be prepared to depart from the demonstrative to address the Board’s questions, including by pulling up the evidence and papers of record directly. In this regard, having a trial graphics professional available to assist with the display of papers, evidence, and demonstratives is helpful where possible within a party’s budgetary constraints. Demonstratives should be a tool to assist with presentation to the Board but should not detract from what should ultimately be a conversation between counsel and the panel that will decide the case.

VIII.Requests for Rehearing and Appeal

A. Rehearing Standard, Procedure, and Statistics

A party dissatisfied with any Board decision, including an institution decision or a final written decision, “may file a single request for rehearing without prior authorization from the Board.”102 Rehearing is the Board’s term for reconsideration of a decision and does not involve a formal rehearing or further oral argument.103 The burden of showing that a decision should be modified falls upon the party requesting rehearing.104 “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply.”105 This is a high burden to meet in most cases. A request for rehearing does not toll any other deadlines for action in the proceeding.106

The rules governing rehearing requests do not address whether new evidence is permitted with a request. However, the Board has issued a precedential decision explaining the procedure and standard for submitting new evidence on rehearing.107 In that decision, the Board explained that “[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause.”108 The Board encourages parties seeking to admit new evidence to “request a conference call with the Board prior to filing such a request . . . [to] argue ‘good cause’ exists for admitting the new evidence.”109 In the alternative, “a party may argue ‘good cause’ exists in the rehearing request itself.”110

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A request for rehearing is due within 14 days of entry of a decision to institute trial or any other non-final decision by the Board, or within 30 days of entry of a final written decision or decision not to institute.111 An opposing party should not file a response in opposition to a request for rehearing unless requested by the Board.112 The Board rarely asks for briefing from the opposing party and will not grant a rehearing request without providing an opposing party that opportunity. Typically, rehearing requests are decided within six weeks of the request.

The likelihood of success when requesting rehearing is very small. Based on statistics from Docket Navigator,113 over 90% of requests for rehearing are denied. Nevertheless, requests for rehearing may be a party’s best or only option for challenging an unfavorable decision made at institution or during the course of the proceeding.

B. Appeal to the Federal Circuit

A party dissatisfied with a final written decision by the Board may appeal to the United States Court of Appeals for the Federal Circuit.114 Other Board decisions, including decisions whether to institute an inter partes review or post-grant review generally are not reviewable, with certain exceptions. 115

Several categories of Board rulings may be addressed on appeal. Those issues include, without limitation, claim construction, anticipation and obviousness determinations, due process questions, and procedural issues. Other challenges have been made to the manner in which the Board analyzed the evidence and inconsistencies in the final written decision.

The Federal Circuit reviews factual determinations by the Board for substantial evidence and reviews legal determinations de novo.116 Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”117 Under substantial evidence review, the Federal Circuit has given substantial deference to the Board’s factual findings, such as determinations regarding disclosures of prior art. Accordingly, it is difficult to overturn Board decisions on grounds that the Board reached the wrong conclusion regarding issues of fact.

Parties should carefully select issues for appeal with appropriate consideration given to the relevant standards of review. While challenges to factual determinations certainly can be successful where a party can overcome the deferential standard of review, in many cases parties will find more success where the Federal Circuit affords Board decisions less deference.

According to statistics from the Federal Circuit118 and Law360119, the Federal Circuit hears more appeals from the Patent Trial and Appeal Board than any other jurisdiction or agency. The Federal Circuit affirms the Board in about 75 percent of cases, which has held steady over the last three years.120

Many important issues remain unresolved, so parties are well-served to closely monitor pending United States Federal Circuit and Supreme Court appeals for their impact on their cases.



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IX. Strategy Issues Arising from Co-Pending

Litigation or USPTO Proceeding

A. The One-Year Deadline under 35 USC § 315(b).

Under 35 USC § 315(b), a petition for IPR cannot be “filed more than 1 year after the date on which the petitioner … [was] served with a complaint alleging infringement of the patent.” While this rule seems clear on its face, a number of subsidiary issues have arisen, such as how dismissal affects the calculation of the bar and whether the question of standing to bring the infringement suit affects application of the bar.

Recently, the Federal Circuit issued a decision in Click-to-Call Technologies, LP v. Ingenio, Inc, Yellow Pages.com, LLC (Case No. 2015-1242), finding that a voluntary dismissal without prejudice of a lawsuit does not reset the clock for determining whether the Petition was “filed more than 1 year after the date on which the petitioner … [was] served with a complaint alleging infringement of the patent,” pursuant to section 315(b).121

In view of this decision, a defendant cannot file a petition for IPR challenging a patent if that defendant was served with a complaint alleging infringement of the challenged patent more than one year prior to filing the petition, even if the earlier complaint was dismissed without prejudice. The Federal Circuit noted, “[t]he statute does not contain any exceptions or exemptions for complaints served in civil actions that are subsequently dismissed, with or without prejudice.”122 The court stated that the fact that a complaint is later voluntarily dismissed without prejudice is “wholly irrelevant to the § 315(b) inquiry.”123 “Simply put, § 315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events.”124

As the law currently stands, defendants who have been sued in the past year and then had the suit voluntarily dismissed, should evaluate whether to move forward with an IPR before the one-year date passes. Similarly, patent owners that have dismissed a complaint without prejudice should consider whether to re-file that complaint after one year has passed. In the long-term, the outcome of this decision (should it stand) may be to encourage plaintiffs to seek voluntary dismissal before defendants invest resources in filing an IPR, and then re-file the complaint one year later.

Another question that has recently been decided, at least by the Board, is the question of whether the one-year bar depends on the standing of the plaintiff in district court to bring the suit in the first place. In a recent decision by a precedential opinion panel, the Board found that it does not.125 Specifically, a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b), regardless of whether the serving party lacked standing to sue in the first place.

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B. Estoppel Considerations

Under 35 USC § 315(e), a petitioner or a real party in interest of the petitioner in an IPR proceeding that results in a final written decision may not request or maintain a proceeding before the USPTO with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that IPR. Similarly, once a final written decision has issued, a petitioner or real party in interest may not assert in a civil action or an action before the International Trade Commission (ITC) that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that IPR. Similar provisions exist for PGR proceedings under 35 U.S.C. § 325(e). These provisions may significantly limit the invalidity arguments that may be raised in a co-pending litigation. The practical effect is that litigants will not be permitted multiple bites at the apple; if you lose on invalidity arguments before the PTAB, do not expect that you will be able to re-assert them before a co-pending district court litigation. This estoppel effect of bringing an IPR or PGR proceeding should be carefully considered before any petition is filed.

That said, there are limitations on the estoppel effects of bringing an IPR or PGR proceeding. Since IPRs are limited to challenges based on patents or printed publications, a litigant may be permitted to raise invalidity arguments in a related co-pending litigation based on other invalidity arguments, such as lack of written description support, non-enablement or invalidity based on an earlier invalidating sale, offer for sale, or public use. Of course, if a petitioner files a PGR and receives a final written decision finding for patent owner on one or more grounds, and then the patent owner later sues petitioner for patent infringement, the estoppel effects for the petitioner/defendant may be more profound since more invalidity arguments are available to the petitioner in PGR proceedings than in IPR proceedings.

Similarly, some courts have permitted litigants to raise invalidity arguments based on physical products or systems on the basis that the products or systems do not constitute “patents or printed publications” and hence could not have formed the basis for an IPR challenge. Since a petitioner could not have raised an invalidity argument based on a physical product or system in an IPR, according to these courts, there cannot be any estoppel effect for such invalidity arguments. Under this line of thinking, products that embody a patent claim may be fair game as prior art in a co-pending district court litigation notwithstanding that petitioner lost an earlier IPR challenge based in part on a patent that disclosed the product.126 Other courts have suggested that IPR estoppel may extend to a physical product if the product adds nothing more than what was disclosed in the prior art document that was earlier-considered in the IPR proceeding.127

Notably, the Federal Circuit held in Shaw Indus. Group. Inc. v. Automated Creel Sys., Inc. that the estoppel effects of bringing an IPR or PGR proceeding are not triggered until the Boardissues a final written decision.128 Thus, if the Board denies institution of an IPR or PGR or the proceeding otherwise terminates prior to the Board issuing a final written decision, no estoppel effects should be triggered.



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However, suppose a petitioner only learns about a prior art reference after it received a final written decision upholding the challenged patent. Would petitioner be estopped from raising the reference in a subsequent litigation? Courts have struggled with this issue, with different jurisdictions reaching different outcomes. Some courts, for example, have construed the Shaw decision narrowly, to apply only in instances where institution was declined on procedural grounds.129 A second group of courts have taken a middle ground, finding that the estoppel applies where a ground was raised in an IPR petition and denied institution for any reason—substantive or procedural.130 A third group of cases has construed Shaw broadly, such that the estoppel only applies to the actual references considered by the Board in the final written decision.131 Under the latter interpretation, a petitioner/defendant would not be estopped from raising a newly discovered prior art reference in a later litigation, since it was not actually considered by the Board during the earlier IPR. The USPTO, on the other hand, has held that the estoppel effects may be triggered based on whether the relevant reference could have been “readily identifiable in a diligent search.”132

As the state of the law on IPR estoppel continues to unfold, look to the Federal Circuit to provide clarification in the near future. In the meantime, forum selection in district court litigation may play a significant role in determining whether a petitioner/defendant is permitted to raise arguments not considered in an earlier IPR proceeding.

X. Strategic Considerations and Takeaways

Petitioners and patent owners must consider a number of strategic and tactical issues when filing and responding to a petition. From the petitioner’s perspective, the petitioner must consider the type of proceeding to file, the appropriate RPI to name, the optimal grounds to assert, and whether to set forth claim constructions. The petitioner may also have to consider how to proceed in a parallel district court litigation. For the patent owner, the primary issues at the outset are identifying technical grounds on which to challenge the petition, evaluating the RPI identified by the petitioner, and evaluating the substantive challenges.

First, the petitioner should evaluate whether to file an IPR or, if available, a PGR or CBM proceeding. While the PGR provides for a broader set of challenges to be lodged and a greater page count, a broad estoppel may be created for a PGR based on prior art that was

raised or reasonably could have been raised.133 Thus, in a case where a defendant has identified potentially strong non-patent/printed publication prior art, the petitioner may want to consider filing an IPR and saving the prior art that cannot be filed in an IPR for district court trial, if needed.

Petitioners must also take care in naming the appropriate RPI and identifying the optimal grounds to assert. The Board and Federal Circuit have broadened the definition of RPI, and failure to name all the parties that are RPI’s may be fatal for a petition. Petitioners are also best served by pursuing a limited number of grounds based on the best prior art they can find. This is due in large measure to the limited space petitioner has to make its arguments. Further, asserting a limited number of grounds may help to decrease the chances that the Board will exercise its discretion to deny an otherwise worthy petition.

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In SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), the United States Supreme Court held that an IPR final written decision must address every challenged claim. In the immediate aftermath of SAS, the Board responded by issuing amended Institution Decisions, adding all non-instituted grounds to pending proceedings.134 Before SAS, if the Board denied institution on one ground but proceeded on others, no estoppel attached to the denied ground. After SAS, estoppel may apply to all grounds if the petition is instituted and ultimately results in a final written decision. Since the Board now must make a binary decision of whether or not to institute the proceeding, petitioners should settle on a small number of grounds, and assert the strongest available prior art arguments.

Not only should petitioners focus on a limited number of grounds, but the petitioner should also file the petition as soon as is practicable. This is so for a number of reasons. One paramount consideration is stay of parallel district court litigation. The district courts have been consistently more willing to stay a case when an AIA proceeding has been filed or instituted at an early phase of litigation and much less so later, particularly on the eve of trial. Another consideration is the Board’s ability to deny a petition based on its discretion. The further along the district court proceeding, the less likely the AIA proceeding is to provide an alternative, less expensive, and more efficient mechanism for judging the validity of a patent. And the patent owner is well advised to take all of the issues into consideration as it formulates its response to a petition.

With more than 10,000 IPR and PGR petitions filed since the AIA was enacted, PTAB practice has now fully reached its stride. Additionally, the various changes to PTAB practice and procedure as well as developing precedent should provide increased consistency and fairness to PTAB trials. In view of its usage and recent developments in the law, IP savvy corporations would be wise to incorporate AIA trial practice as a part of their overall IP strategy.

XI. About the Authors

Justin L. Krieger serves as the Managing Partner of the Denver office of Kilpatrick Townsend & Stockton. He is a first chair IPR and PGR litigator with a tremendously successful track record for challenging third party patents as well as defending against patent challenges brought before the Patent Trial & Appeal Board. As a registered patent attorney, Mr. Krieger also focuses on client counseling, district court litigation, and patent prosecution. His technical focus includes chemistry, chemical engineering, biotechnology, medical devices, metallurgy, nanotechnology, mechanical engineering and consumer products. More information about Mr. Krieger may be found at https://www.kilpatricktownsend.com/en/People/K/KriegerJustinL



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John C. Alemanni focuses his practice on trials before the Patent Trial and Appeal Board and related appeals to the U.S. Court of Appeals for the Federal Circuit. His practice also includes client counseling, patent litigation and strategic patent prosecution. He provides creative, cost-effective solutions for his clients. He is the co-chair of Kilpatrick Townsend’s Patent Office Litigation team and has served as lead or back-up counsel on over 75 trials before the PTAB. He also helps manage the portfolios of both established and emerging companies, including a company consistently ranked at the top of its category in the IEEE Power Spectrum Patent Power scorecard and having generated licensing revenues of more than $250 million dollars. He focuses on hardware and software technologies, including mobile devices, gaming, bioinformatics and laboratory information management, as well as mechanical and electromechanical devices, including aerospace components, medical devices and medical device simulations. More information on Mr. Alemanni may be found at https://www.kilpatricktownsend.com/en/People/A/AlemanniJohnC

Mr. Morlock represents technology companies that focus on many different areas, including mobile technology, sports equipment, and aerospace. Mr. Morlock represents both patent owners and petitioners at the PTAB, and represents both plaintiffs and defendants in patent litigations throughout the country. More information about Mr. Morlock may be found at https://www.kilpatricktownsend.com/en/People/M/MorlockMichaelT

David Reed concentrates his practice on patent litigation with a particular emphasis on post-grant proceedings before the Patent Trial and Appeal Board and appellate practice before the U.S. Court of Appeals for the Federal Circuit. Mr. Reed also has extensive experience managing district court cases through trial and appeal involving a wide variety of technologies. Mr. Reed has successfully litigated over 20 IPR and PGR cases before the PTAB and Federal Circuit, including as lead counsel. David’s clients include some of the world’s leading companies and brands in the technology, aerospace, pharmaceutical, consumer products, and manufacturing sectors. Mr. Reed has a degree in chemical engineering from the Georgia Institute of Technology and attended law school at the University of Virginia. More information about Mr. Reed may be found at https://www.kilpatricktownsend.com/en/People/R/ReedDavidA.ashx.

The authors wish to thank Donald A. Gammon and Casey Mangan, members of the Intellectual Property Network, for their outstanding editorial assistance and guidance.

https://www.kilpatricktownsend.com/en/People/K/KriegerJustinL

https://www.kilpatricktownsend.com/en/People/A/AlemanniJohnC

https://www.kilpatricktownsend.com/en/People/M/MorlockMichaelT

https://www.kilpatricktownsend.com/en/People/R/ReedDavidA.ashx

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XII. GlossaryAIA: The Leahy-Smith America Invents Act. A federal statute signed into law on September 16, 2011. The AIA provided many significant changes to US patent law, including changing the US patent system from a “first to invent” to a “first inventor to file” system and establishing the statutory framework for IPR, PGR and CBM proceedings.

BRI: Broadest Reasonable Interpretation standard. A claim construction standard used by the USPTO to interpret claims during examination. Broader than the litigation Phillips standard, the BRI standard was initially used to interpret claim terms during AIA trials. In October 2018, the USPTO issued a final rule changing the claim construction standard in AIA trails from the BRI standard to the Phillips standard.

CBM: Covered Business Method review. A proceeding in which a third party may challenge the validity of a business method patent related to financial products or services after receiving a litigation threat from the patent owner. CBM review is being phased out and will be unavailable in 2021.

Federal Circuit: The Court of Appeals for the Federal Circuit. A federal court of appeals located in Washington, DC, which hears all appeals in patent matters, including district court litigation and appeals from the PTAB in IPR, PGR and CBM proceedings.

FWD: Final Written Decision. A written opinion issued at the end of a post grant proceeding in with the PTAB provides its decision on whether the challenged claims are patentable or unpatentable based on the arguments of record.

Institution Decision or ID: A decision issued by the PTAB about 6 months after the filing of a petition, in which the PTAB determines whether to institute an IPR, PGR or CBM trial.

IPR: Inter Partes Review. A proceeding in which a third party may challenge the validity of a patent based on patents and printed publications. An IPR may be filed 9 months after the issuance of a US patent.

ITC: The US International Trade Commission. An independent, bipartisan, quasi-judicial federal agency of the United States, which hears (among other things) administrative cases relating to unfair trade practices, including the importation of goods that infringe US intellectual property rights.

MTA: Motion to Amend. An optional pleading that may be filed by the patent owner with its substantive response after institution of an IPR, PGR or CBM trial. An MTA proposes amendments to one or more of the challenged claims.

Petition: The initial brief filed by a petitioner challenging the validity of one or more claims of an issued US patent.

Petitioner: An individual or company who files a petition challenging the validity of a patent in an AIA trial (IPR, PGR or CBM proceeding).

PGR: Post Grant Review. A proceeding in which a third party may challenge the validity of a patent for virtually any reason related to patentability. A PGR may only be filed within the first 9 months after a US patent issues.



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Phillips Standard: The claim construction standard described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny. Somewhat narrower than the BRI standard used by the USPTO during examination, the Phillips standard is utilized tointerpret patent claim terms in district court litigation and before the PTAB in AIA trials.In October 2018, the USPTO issued a final rule changing the claim construction standard in AIA trails from the BRI standard to the Phillips standard.

PO: Patent Owner. The owner of a patent that is challenged in an AIA trial (IPR, PGR or CBM proceeding).

POPR: Patent Owner Preliminary Response. An optional response that may be filed by the patent owner about three months after filing of an IPR, PGR or CBM petition. The purpose of the POPR is to explain to the PTAB why institution of the proceeding should be denied.

PTAB or “the Board”: Patent Trial and Appeal Board. An administrative body of the USPTO which decides issues of patentability in post-grant proceedings, such as IPR, PGR and CBM proceedings.

RPI: Real Party in Interest. A party in a post grant proceeding who directs or controls the proceeding, strategically or financially. Certain estoppel provisions of the AIA and deadlines for filing a post grant proceedings are tied to the relevant RPI.

TPG: Trial Practice Guide. A notice provided and periodically updated by the USPTO providing guidelines and recommendations for the handling of AIA trials.

USPTO: US Patent & Trademark Office. An agency of the US Department of Commerce that examines and issues US patents and trademarks and oversees post-grant proceedings through the PTAB.

1 The AIA also created covered business method review (CBM) proceedings, which are scheduled to be phased out in 2020 and are therefore are not substantively discussed herein. In addition, the AIA created Derivation Proceedings, in which a petitioner applicant alleges that another patent applicant/patentee “derived” the claimed invention from petitioner. In these proceedings, the petitioner is required to demonstrate that he/she was first to conceive of the invention and had communicated it to the alleged deriver. Unlike the other types of post-grant proceedings, derivation proceedings remain exceedingly rare.

2 The prior art provisions of the AIA apply to any patent/application having one or more claims with an earliest effective priority date on or after March 16, 2013. Pre-AIA prior art law applies to any patent/application in which all claims have an effective priority date on or before March 15, 2013.

3 37 C.F.R. § 42.24(a).

4 35 U.S.C. § 323; 37 C.F.R. § 42.107.

5 37 C.F.R. § 42.107(b).

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6 Id. at § 42.108(c).

7 Id. at § 42.108.

8 35 U.S.C. § 314(a).

9 35 U.S.C. § 324(a).

10 138 S. Ct. 1348 (2018).

11 35 U.S.C. § 314(a).

12 See, e.g., Deeper, UAB, v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (Informative).

13 Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2136 (2016) (“We conclude that the first provision, though it may not bar consideration of a constitutional question, for example, does bar judicial review of the kind of mine-run claim at issue here, involving the Patent Office's decision to institute inter partes review.”).

14 If institution is denied, the petitioner may request rehearing under 37 CFR § 42.71(d). Under this provision, the petitioner must identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in the Petition. The request for rehearing will be decided by the same panel of administrative law judges that denied institution and are infrequently granted. Requesting rehearing is petitioner's sole option for redressing a denial of institution.

15 37 C.F.R. § 42.51(b).

16 37 C.F.R. § 42.51(b)(2).

17 Id.

18 37 C.F.R. § 42.121.

19 84 Fed. Reg. 9497-9507 (March 15, 2019).

20 37 C.F.R. § 42.70.

21 37 C.F.R. § 42.80.

22 37 C.F.R. § 90.2.

23 http://lexmachina.com

24 157 Cong. Rec. S1376 (Mar. 8, 2011).

25 Case No. 2017-1698 (July 9, 2018), slip at 2.

26 Id. at 2-4, 17, 40.

http://lexmachina.com/



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27 Power Integrations Inc. v. Semiconductor Components Industries, LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019).

28 Pre-AIA 35 U.S.C. §112, paragraph 6, and AIA 35 U.S.C. §112(f) relate to “means-plus-function” and “step-plus-function” claim limitations.

29 See, e.g., IPR2015-00662, IPR2013-00036.

30 Iancu, Andrei et al., “Indefiniteness in Inter Partes Review Proceedings,” 98 J. Pat. & Trademark Off. Soc'y 4 (2016).

31 SAS, Slip at 2.

32 See 35 USC 311(b).

33 SAS, Slip Op. at 13.

34 Id. at 2.

35 IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017)

36 NHK Spring Co., LTD. v. Intri-Plex, Inc., IPR2018-00752, Paper 8 (Sept. 12, 2018).

37 Id.

38 Id. at 14, 16-17, 20.

39 Valve Corp. v. Elec. Scripting Prods, Inc., IPR2019-00062, -63, -84, Paper 11 (April 2, 2019) at 1.

40 Id. at 2, 10.

41 See Comcast v. Rovi, Case No. IPR2019-00279, Paper 7 (April 22, 2019).

42 See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, -01130, Paper 15, p. 4 (PTAB Feb. 24, 2019) (precedential) (indicating burden “ordinarily” lies with petitioner but that “the Board itself also may justify any finding of unpatentability by reference to the evidence of record….”).

43 Motion to Amend Study, Installment 5 through FY2018 (USPTO).

44 Krieger, Justin et al., “An Uptick In PTAB’s Motion to Amend Grant Rate,” Law 360, June 8, 2018. https://www.law360.com/articles/1052150/an-uptick-in-ptab-s-motion-to-amend-grant-rate

45 Id. See also Weinger, Daniel et al., “Favorable Trends for Patent Owners Post-Aqua Products,” Law 360, Nov. 20, 2019. https://www.law360.com/articles/1221060/favorable-trends-for-patent-owners-post-aqua-products

https://www.law360.com/articles/1052150/an-uptick-in-ptab-s-motion-to-amend-grant-rate

https://www.law360.com/articles/1052150/an-uptick-in-ptab-s-motion-to-amend-grant-rate

https://www.law360.com/articles/1221060/favorable-trends-for-patent-owners-post-aqua-products

https://www.law360.com/articles/1221060/favorable-trends-for-patent-owners-post-aqua-products

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46 37 C.F.R. §42.51(b).

47 37 C.F.R. §42.51(b)(2).

48 Id.

49 Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 20, at 2-3 (P.T.A.B. Feb. 14, 2013).

50 37 C.F.R. §42.51(b)(2).

51 Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 20, at 2-3 (P.T.A.B. Feb. 14, 2013).

52 35 U.S.C. § 315(b).

53 37 C.F.R. § 42.8(b)(1).

54 Trial Practice Guide Update (July 2019) at 11.

55 Office Patent Trial Practice Guide, 77 Fed.Reg. 48756, 48760.

56 See, e.g., Arris Group, Inc. v. C-Cation Technologies, LLC, IPR2014-00746, Paper 15, at 2-5 (P.T.A.B. July 24, 2014).

57 See, e.g., Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00488, Paper 25, at 2-8 (P.T.A.B. Nov. 5, 2014).

58 Trial Practice Guide Update (August 2018) at 4.

59 Skechers USA, Inc. v. adidas AG, IPR2017-00127, Paper 28, at 21 (April 25, 2018).

60 Id. at 21-22.

61 Id. at 22.

62 Id. at 21.

63 Id. at 22-24.

64 Pevarello v. Lan, Patent Interference 105,394 MPT, Paper 85 at 21 (B.P.A.I Jan. 12, 2007)

65 Square, Inc. v. Think Computer Corp., Case CBM2014-00159, slip op. at 26–27 (PTAB Nov. 27, 2015) (Paper 47)

66 Adidas AG v. Nike, Inc., IPR2016-00921, Paper 21 at 31 (PTAB Oct. 19, 2017)

67 Trial Practice Guide Update (August 2018) at 16.

68 37 C.F.R. § 42.64(b)(2).



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69 Gnosis SPA, et al. v. S. Ala. Med. Sci. Found., IPR2013-00116, Paper 29 at 3 (PTAB Oct. 9, 2013).

70 Id.

71 Trial Practice Guide Update (August 2018) at 16

72 Id.

73 Id. at 17.

74 Acceleration Bay v. Activision, 908 F.3d 765, 773 (Fed. Cir. 2018) (“Substantial evidence supports its findings that Lin was not publicly accessible, including that Lin was not indexed in a meaningful way and that the website’s advanced search form was deficient.”)

75 Id. at 774.

76 Standard Operating Procedure 1 (Revision 15): Assignment of judges to panels (Sept. 20, 2018), available at https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20FINAL.pdf.

77 Id. Other concerns, such as establishing binding agency authority concerning major policy or procedural issues or issues of exceptional importance, are instead addressed by the designation of a Precedential Opinion Panel according to the mechanisms described in Standard Operating Procedure 2 (Revision 10): Precedential Opinion Panel to Decide Issues of Exceptional Importance Involving Policy or Procedure (Sept. 20, 2018), available at https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FINAL.pdf.

78 Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1380-81 (2018) (Gorsuch, J., dissenting).

79 SOP 1, at 15-16.

80 In most cases, an additional oral hearing will not be authorized on remand from an appeal to the Federal Circuit. As described in the most recent Trial Practice Guide Update, “the existing record and previous oral argument normally will be sufficient” though in some cases “where new evidence is permitted, the Board may authorize additional oral argument.” Trial Practice Guide Update (July 2019), at 47, available at https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-update3.pdf.

81 37 C.F.R. § 42.70.

82 Trial Practice Guide Update (August 2018), at 19, available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_Guide.pdf.

83 Id.

84 Id. at 21.

https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20FINAL.pdf

https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FINAL.pdf

https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-update3.pdf

https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_Guide.pdf


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85 Id.

86 Hearing Room B in Alexandria, Virginia, United States has only about 8 seats in addition to those at the counsel tables.

87 Hearing Schedules (PTAB), available at https://www.uspto.gov/patents-application-process/appealing-patent-decisions/hearings/hearing-schedules-ptab.

88 35 U.S.C. §§ 316(a)(11), 326(a)(11).

89 Hearing Locations, available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/hearings.

90 35 U.S.C. §§ 316(e), 326(e).

91 Trial Practice Guide Update (August 2018), at 20, available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_Guide.pdf.

92 K-40 Electronics, LLC v. Escort, Inc., Case IPR2013-00203, Paper 34, at 3 (PTAB May 21, 2014) (precedential).

93 Id.

94 Depuy Synthes Products, Inc. v. Medidea, L.L.C., Case IPR2018-00315, Paper 29 (PTAB Jan. 23, 2019) (precedential).

95 Trial Practice Guide Update (July 2019), at 12-13; Andreu v. Sec’y of HHS, 569 F.3d 1367, 1379 (Fed. Cir. 2009).

96 SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1357 (2018) (“[T]he petitioner’s contentions, not the Director’s discretion, define the scope of the litigation all the way from institution through to conclusion.”).

97 Trial Practice Guide Update (August 2018), at 21.

98 37 C.F.R. § 42.70(b).

99 Trial Practice Guide Update (August 2018), at 21.

100 Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (finding that the “Board was obligated to dismiss [a party’s] untimely argument . . . raised for the first time during oral argument”).

101 See, e.g., LG Electronics, Inc. v. Koninklijke KPN N.V., IPR2018-00558, Paper 30, at 5:4-17 (PTAB Apr. 11, 2019).

102 37 C.F.R. § 42.71(d).

https://www.uspto.gov/patents-application-process/appealing-patent-decisions/hearings/hearing-schedules-ptab

https://www.uspto.gov/patents-application-process/appealing-patent-decisions/hearings/hearing-schedules-ptab

https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/hearings

https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/hearings





46

103 37 C.F.R. § 42.2 (“Rehearing means reconsideration.”). Rehearing applies to reconsideration of any Board decision and does not involve any further oral argument to the Board.

104 Trial Practice Guide Update (July 2019), at 48.

105 Id. at 48-49; 37 C.F.R. § 42.71(d).

106 37 C.F.R. § 42.71(d).

107 Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC, Case IPR2018-00816, Paper 19 (Jan. 8, 2019) (precedential).

108 Id. at 3-4 (quoting Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)).

109 Id. at 4.

110 Id.

111 37 C.F.R. §§ 42.71(d)(1) and (d)(2).

112 Trial Practice Guide Update (July 2019), at 49.

113 https://compass.docketnavigator.com.

114 35 U.S.C. §§ 319, 329; see also 35 U.S.C. §§ 141(c).

115 35 U.S.C. §§ 314(d), 324(d) (“The determination by the Director whether to institute . . . review under this section shall be final and nonappealable”); but see Cuozzo Speed Tech. v. Lee, 136 S. Ct. 2131 (2016) (explaining that certain agency decisions may be appealable in the context of 35 U.S.C. § 319 and the Administrative Procedure Act, including actions that are “contrary to constitutional right,” “in excess of statutory jurisdiction,” or “arbitrary [and] capricious.”).

116 Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016).

117 In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000); In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016).

118 http://www.cafc.uscourts.gov/the-court/statistics.

119 https://www.law360.com/articles/1142702/fed-circ-judges-you-wanted-on-your-ptab-appeal-in-2018.

120 Id.

121 Click-to-Call Techs., LP, v. Ingenio, Inc., 899 F.3d 1321, 1338 (Fed. Cir. 2018).

https://compass.docketnavigator.com/

http://www.cafc.uscourts.gov/the-court/statistics

https://www.law360.com/articles/1142702/fed-circ-judges-you-wanted-on-your-ptab-appeal-in-2018

https://www.law360.com/articles/1142702/fed-circ-judges-you-wanted-on-your-ptab-appeal-in-2018

47

122 Id. at 1329.

123 Id.

124 Id. At the time this ACC Guide went to press, the Click-to-Call decision was on appeal to the U.S. Supreme Court.

125 GoPro, Inc. v. 360Heros, Inc., Case IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019).

126 See, e.g., Polaris Indus., Inc. v. Arctic Cat Inc., Case No. 15-4475, 2019 WL 3824255, at *3 (D. Minn. Aug. 15, 2019).

127 See Oil-Dri Corp. of Am. v. Nestlé Purina Petcare Co., Case No. 15-c-1067, 2019 U.S. Dist. LEXIS 28279, at *31 (N.D. Ill. Feb. 22, 2019) (“Where there is evidence that a petitioner had reasonable access to printed publications corresponding to or describing a product that it could have proffered during the IPR process, it cannot avoid estoppel simply by pointing to its finished product (rather than the printed materials) during litigation.” (citations omitted)).

128 Shaw Indus. Group. Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2019) (holding that an “IPR does not begin until it is instituted” and any ground not instituted could not reasonably have been raised during the IPR). Notably, although the PTAB’s early practice of partially instituting IPRs, which was at issue in Shaw, was deemed improper by the United States Supreme Court in SAS Inst. Inv. v. Iancu, 138 S. Ct. 1348 (2018), the reasoning behind the Federal Circuit’s Shaw decision remains valid even after the SAS Industries decision.

129 See, e.g., Biscotti Inc. v. Microsoft Corp., 2017 WL 2526231 (2017); Infernal Tech. LLC v. Electronic Arts Inc., 2016 WL 9000458 (2016).

130 See, e.g., Cobalt Boats, LLC v. Sea Ray Boats, Inc., 2017 WL 2605977 (E.D. Va. 2017); Depomed Inc. v. Purdue Pharma LP, 2016 WL 8677317 (D.N.J. 2016).

131 See, e.g., Verinata Health Inc. v. Ariosa Diagnostics, Inc., 2017 WL 235048 (N.D. Cal. 2017); Intellectual Ventures I LLC v. Toshiba Corp., 221 F. Supp. 3d 534, 554 (D. Del. 2016).

132 See, e.g., Great West Casualty Co. v. Intellectual Ventures II LLC, IPR2016-01534, Paper 13, 15-16 (PTAB Feb. 15, 2017) (non-precedential).

133 See 37 CFR § 42.24 and 35 U.S.C. § 315(e).

134 See, e.g., Unified Patents, Inc. v. Collision Avoidance Technologies, Inc., Case IPR2017-01355 (Board) (Paper 18).

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