inter partes review of patents
TRANSCRIPT
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Inter Partes Review of Patents
Richard P. Beem
Beem Patent Law Firm
www.BeemLaw.com
Chicago, IL US
© Beem Patent Law 2015Permission is granted to reproduce with attribution
Chicago Bar AssociationIntellectual Property Law Committee
March 24, 2015
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What is PTAB?
• Patent Trial and Appeal Board• Instituted as a result of AIA• Formerly, BPAI – Board of Patent Appeals and
Interferences• Appeals from patent prosecution• Post Grant Procedures• Chief judge, lead judges• PTAB webpage:
www.uspto.gov/patents-application-process/patent-trial-and-appeal-board-0
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Post-Grant Procedures
• Post-Grant Procedures• Post Grant Review (PGR)• Inter Partes Review (IPR)• Covered Business Method (CBM)
• IPR is most popular of post-grant procedures
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Major Differences between IPR, PGR, and CBMPost Grant Procedure
Petitioner Estoppel Standard Basis
Post Grant Review (PGR)
• Person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent
• Must identify all real parties in interest
• Raised or reasonably could have raised
• Applied to subsequent USPTO/district court/ITC action
More likely than notORNovel or unsettled legal question important to other patents/applications
101, 102, 103, 112, double patenting but not best mode
Inter Partes Review (IPR)
• Person who is not the patent owner, has not previously filed a civil action challenging the validity of a claim of the patent, and has not been served with a complaint alleging infringement of the patent more than 1 year prior (exception for joinder)
• Must identify all real parties in interest
• Raised or reasonably could have raised
• Applied to subsequent USPTO/district court/ITC action
Reasonable likelihood 102 and 103 based on patents and printed publications
Covered Business Method (CBM)
• Must be sued or charged with infringement
• Financial product or service• Excludes technological
inventions• Must identify all real parties in
interest
• Office—raised or reasonably could have raised
• Court-raised
Same as PGR Same as PGR (some 102 differences)
4Source: USPTO
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Major Differences between IPR, PGR, and CBMPost Grant Procedure Petitioner
Post Grant Review (PGR) • Person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent
• Must identify all real parties in interest• Must be filed within 9 months of issue date
Inter Partes Review (IPR) • Person who is not the patent owner, has not previously filed a civil action challenging the validity of a claim of the patent, and has not been served with a complaint alleging infringement of the patent more than 1 year prior (exception for joinder)
• Must identify all real parties in interest• Cannot be filed until 9 months after issue date• Must await decision on any pending PGR petition
Covered Business Method (CBM)
• Must be sued or charged with infringement• Financial product or service• Excludes technological inventions• Must identify all real parties in interest
5Source: USPTO
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Major Differences between IPR, PGR, and CBMPost Grant Procedure
Estoppel Standard Basis
Post Grant Review (PGR)
• Raised or reasonably could have raised
• Applied to subsequent USPTO/district court/ITC action
More likely than notORNovel or unsettled legal question important to other patents/applications
101, 102, 103, 112, double patenting but not best mode
Inter Partes Review (IPR)
• Raised or reasonably could have raised
• Applied to subsequent USPTO/district court/ITC action
Reasonable likelihood 102 and 103 based on patents and printed publications
Covered Business Method (CBM)
• Office—raised or reasonably could have raised
• Court—raised
Same as PGR Same as PGR (some 102 differences)
6Source: USPTO
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Why Inter Partes Review?
• Because district court litigation is expensive
• Similar to European invalidation procedures
• Faster, cheaper decision
• District courts aren’t technical
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When to Use Inter Partes Review?• File promptly if sued for patent infringement• Requirements: timing
• Petition for IPR will be barred if it is “filed more than 1 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.” 35 U.S.C. §315(b)
• Cannot be filed until 9 months after issue date• Must await decision on any pending PGR petition
• Can’t file civil action for D.J. of invalidity in D.Ct. 35 U.S.C. §315(a)
• Limited to §§102, 103 based on patents and printed publications 35 U.S.C. §311(b)
• Decision: roughly 18 months
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IPR Procedure
• Petition• Preliminary response optional• Institution (90% of petitions result in trial being
instituted)• Discovery• Motion practice: must arrange telecon to get permission
to file motion; often decided on the spot without a motion
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Inter Partes Review Timeline
Source: USPTO
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• 3 monthsPetition Filed
• No More than 3 months
PO Preliminar
y Response (optional)
• 3 monthsDecision
on Petition
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• 3 monthsDecisio
n on Petition
• 3 months
PO Response & Motion to Amend
Claims
Petitioner Reply to PO Response & Opposition
to Amendment
PO Discovery Period
Petitioner Discovery Period
PO Discovery Period
No more than 12 months for discovery
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• 1 month
Petitioner Reply to PO Response & Opposition
to Amendment
• Hearing Set on Request
PO Reply
to Opposition
to Amendment
Oral Hearing
Final Written
Decision
Period for Observations &
Motions to Exclude Evidence
PO Discovery Period
No more than 12 months for discovery
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IPR Petitions• The petition is your
entire case-in-chief• Support it with expert
testimony (evidence) in the form of a declaration
• Page limit and formatting requirements (37 C.F.R. 42)
• Review Request fee and Post-Institution fee upfront ($23,000+)
Fee Code Fee Description Amount
1406 IPR review request fee–up to 20 claims
$9,000
1414 IPR review post-institution fee–up to 15 claims
$14,000
1407 IPR review request in excess of 20
$200/claim
1415 IPR post-institution request in excess of 15
$400/claim
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IPR Petitioners:
Your petition is your day in court.
• This is not notice pleading
• Make your petition tight
• Present best arguments only
• Make it complete
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IPR Petition Length and Format
• 60 page limit
• 14 pt. font, double spaced
• No arguments in claim chart• Intended to prevent circumvention of page/font/spacing
requirements• Assertions on knowledge of one of ordinary skill may be
objectionable as argument
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IPR Petitions
• How do you know what claims to challenge?
• What if there are 162 claims?
• Most cases do not dispose of all claims
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IPR Petitions Terminated by January 15, 2015
• 20,206 Claims in 617 Patents Petitioned• 9,048 Claims Challenged• 6,114 Claims Instituted• 68% of Claims Challenged• 425 of 617 Petitions
• 2,176 Claims Found Unpatentable• 36% of Claims Instituted• 24% of Claims Challenged• 173 of 617 Petitions
Source: USPTO
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Grounds Must Not be Redundant (I)
• Take your best shot with one §102 or two §103 prior art references—patents or publications• A “publication” is theoretically available but often it
won’t be sufficiently complete• Not public use—that will have to wait for D.Ct.
• Must not be redundant (hundreds of grounds were advanced, PTAB said cut it down, or when we get to first redundant ground, we’re stopping)• Claim construction
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Grounds Must Not be Redundant (II)
• Note: decisions often include little analysis to support the redundancy conclusion.• Permobil v. Pride Mobility Products, IPR2013-00407• Instituted review based on 2 of 13 combinations of prior art.• Denied petitioner's proposed alternate grounds as redundant
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Decision Points for Patent Owner
• Think twice before filing infringement suit – expect IPR
• Get started immediately, including getting experts onboard
• Preliminary response is optional and cannot include expert evidence• Pros and cons of filing prelim response
• If instituted, PO may take discovery and file response• Support with expert testimony
• Motion to amend claims permitted • First must confer with Board• Likelihood: fuhgeddaboutit
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Experts• Why an expert? Because that’s evidence.
• Monsanto Company v. Pioneer Hi-Bred International, Inc., IPR2013-00022• Monsanto’s expert testimony not considered because conclusory. Left only attorney
argument and prior art. Denied Monsanto’s petition.
• Not submitting expert testimony makes Board more likely to find in favor of opposing expert.
• But see• Biodelivery Sciences Int'l, Inc., Petitioner, IPR2014-00325.
• PTAB expects affidavits/declarations of experts (in complex cases).
• However, “expert testimony is not a per se requirement.”
• Primera Tech., Inc., Petitioner, IPR2013-00196• PTAB “reject[s] the notion that the failure to present expert testimony on a position presented in
a petition necessarily compels us to ignore or excuse that position.”
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Motions to Stay—District Court
• Accused infringer: File motion to stay?• When to file motion to stay (timing of IPR)? • What if District Court refuses to stay?
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Treatment of AIA’s four-factor test for stay:
• File motion early, perhaps before PTAB issues decision on whether to institute IPR
• Including all asserted patent claims in instituted IPR proceeding weighs heavily in favor of stay
• Can no longer successfully argue that stay should be denied because IPR will likely not result in finding of invalidity. Improper collateral attack.
• Motion to amend patent claims in IPR weighs in favor of stay because potentially changing claim language may complicate claim construction if stay is not granted.
• Failure of patentee to seek preliminary injunction weighs in favor of stay because its goes against argument that patentee will be prejudiced without stay
• delay by patentee in filing suit weighs in favor of stay because it also weighs against prejudice absent stay
• Alleged loss of evidence due to witnesses’ ages will not be given much weight—VirtualAgility Inc. v. Salesforce.com, Inc., No. 2014-1232
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Settlement and Termination of IPR (I)
• Settlement• Mediation – private• Requires board approval• Termination not automatic• How: request phone conference, get permission to file
motion, state why PTAB should dismiss after finding good grounds to institute• What must be filed on the record
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Settlement and Termination of IPR (II)• Settlement does not guarantee termination of proceeding. Section 317 provides that “Office
may terminate the review or proceed to a final written decision under section 318(a).”
• Less inclined to terminate when settlement occurs at an advanced stage. Settle early and before final briefings are filed• Blackberry Corp. v. Mobilemedia Ideas, IPR2013-00016
• Declined to terminate when parties filed joint motion to terminate seven months after institution and one day before oral hearing
• Blackberry v. MobileMedia, IPR2013-00036• Declined to terminate when the parties fully briefed issues and oral hearing had already taken place
• But see• IBM Corp. v. Financial Systems Technology, IPR2013-00078
• Agreed to terminate proceedings settled during petition stage.
• Hitachi Cable America Inc. v. Belden Inc., IPR2013-00408
• Agreed to terminate proceedings settled within first few months of trial.
• Sony Corp. v. Tessera, Inc., IPR2012-00033
• Agreed to terminate proceedings ten days before oral argument.
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Terms of Art in IPRs
• Petition (want to have all ducks in a row – this is your whole case!) • Institute Trial (paper record! Not what we normally think
of).• Oral Hearing (judges are well prepared; come into it
with a tentative decision).
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Key Learnings and Take-Aways• On timeline, at minus 2-3-5 years, file better, more thorough patent
applications after good prior art search; make sure claims distinguish over prior art• Aim for IPR-proof patents• IPR may not dispose of all issues• IPR petitioner: your petition is your trial present your entire best case-
in-chief including written expert testimony in form of declaration and claim charts with one or two best prior art references• For both parties: thorough preparation with expert support is key; start
early and allow plenty of time• District Court infringement litigation has cooled• An IPR-proved patent is golden (estoppel – yet TBD)
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© Beem Patent Law 2015 29
Questions?
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© Beem Patent Law 2015 30
Thank you!
Richard P. Beem Beem Patent Law Firm
www.BeemLaw.com
Presentation (subject to revisions) is intended to be posted on SlideShare: www.slideshare.net/RichardBeem Visit our blog, Beem on Patents, for additional updates and information on patent law and IPRs: www.beemonpatents.com