ptab review proceedings: lessons learned and … review proceedings: lessons learned and other ......

PTAB Review Proceedings: Lessons Learned and Other

Observations 2013 AIPLA Spring Meeting,

USPTO Inter Partes Proceedings Committee

May 2, 2013, Seattle, Washington

Bruce H. Stoner, Jr. Of Counsel

Greenblum & Bernstein, P.L.C.

1

What We Know As Of 4/26/13 • PTAB has instituted or “terminated” 68 of 234 proceedings

requested • No termination has as yet come as a result of a final written

decision pursuant to 35 U.S.C. § 318 or § 328. • 56 proceedings have been instituted, 11 CBM and 45 IPR. • 12 other proceedings have been “terminated” in one way or

another: – 1 proceeding was dismissed (IPR2013-00105) – 3 proceedings settled (IPR2013-00078 and -00079, and IPR2013-00108) – 8 proceedings were denied institution (CBM2012-00011, CBM 2013-00001,

CBM2013-00003, IPR2012-00041, IPR 2013-00022, IPR 2013-00023, IPR 2013-00027, and IPR 2013-00054).

Bruce H. Stoner, Jr. Greenblum & Bernstein, PLC

2

Post-Grant Filings By Month


3

September 2012

October 2012

November 2012

December 2012

January 2013

February 2013

March 2013

April 2013 (thru

4/26/13)

TOTALS

IPR 17 24 24 31 26 30 38 23 213

CBM 8 5 2 0 0 0 2 4 21

TOTALS 25 29 26 31 26 30 40 27 234

Post-Grant Institutions By Month


4

September 2012

October 2012

November 2012

December 2012

January 2013

February 2013

March 2013

April 2013 (thru

4/26/13)

TOTALS

IPR 0 0 0 1 3 8 23 10 45

CBM 0 0 0 0 5 3 3 0 11

TOTALS 0 0 0 1 8 11 26 10 56

Post-Grant Denials By Month


5

September 2012

October 2012

November 2012

December 2012

January 2013

February 2013

March 2013

April 2013 (thru

4/26/13)

TOTALS

IPR 0 0 0 0 0 1 0 4 5

CBM 0 0 0 0 0 2 1 0 3

TOTALS 0 0 0 0 0 3 1 4 8

Post-Grant Filings By Tech Center Subject Matter

Type General

Chemical (1700)

Biotech & Pharma (1600)

Computer Architecture, Software & Electronic Commerce (2100, 2400, 2600, part

3600)

General Electrical

(2800)

Design, General

Mechanical (2900, part 3600, 3700)

TOTALS

CHEM 19 24 43

ELEC 82 41 123

MECH & DESIGNS 45 23 68

TOTALS 19 24 127 41 23 234

Bruce H. Stoner, Jr. Greenblum & Bernstein, PLC 6

Over 170 APJs – Which Are Managing Post-Grant Proceedings?

Through 4/26/28, 10 APJS assigned to manage proceedings APJ Docket Size Docket Composition Jameson Lee 50 electrical and mechanical Sally C. Medley 32 electrical and mechanical Michael P. Tierney 25 chemical, electrical, mech. Thomas L. Giannetti 24 electrical and mechanical Brian J. McNamara 22 electrical Joni Y. Chang 20 electrical and mechanical Justin T. Arbes 15 electrical Sally G. Lane 14 chemical and electrical Jennifer S. Bisk 12 chemical, electrical, and design Lora M. Green 6 chemical, electrical, mech.


7

Through April 26, 2013, 26 APJS Have Been Empaneled On Institutions/Denials/Terminations

(listed in no particular order)

APJ APJ APJ Jameson Lee Rama G. Elluru Jeffrey B. Robertson Sally C. Medley Josiah Cocks Rae Lynn P. Guest Michael P. Tierney Howard B. Blankenship Bryan F. Moore Thomas L. Giannetti Scott R. Boalick Michael W. Kim Brian J. McNamara Michael J. Fitzpatrick Glenn J. Perry Joni Y. Chang Michael R. Zecher Stephen C. Siu Justin T. Arbes Richard M. Lebovitz Sally G. Lane Deborah Katz Jennifer S. Bisk Kevin F. Turner Lora M. Green Karl D. Easthom


8

“Analysis” of Data So Far

• 192 of 234 petitions for proceedings have identified pending or concluded litigation involving target patent (81%)

• 10 of 21 CBM petitions filed by one party; no other has filed more than 2

• For all proceedings, 118 total filers, most with only 1 petition

• 3 double digit filers (Oracle Corp. 12, Corning 10, Liberty Mutual 10)


9

Review Proceedings under the AIA* Review Petition Statistics – Most Filings by

Petitioners

0

2

4

6

8

10

12

Oracle (L) Liberty Mutual (L)

Corning (L)

Veeam Software

(M)

Chi Mei Innolux

(L)

Atrium Medical

(M)

EMC (L) Research In Motion

(L)

ZTE (L) Dominion Dealer

Solutions (M)

* Slide source: Brad D. Pedersen (Thanks, Brad!)

11

Review Proceedings under the AIA* Review Petition Statistics – Most Filings on Owners

0

5

10

15

20

25


12

Review Proceedings under the AIA* IPR Petition Statistics – Makeup of Petitioners &

Owners

0

10

20

30

40

50

60

70

80

0

20

40

60

80

100

120

140

Patent Owners by Type Pe11oners by Type


PTAB is Carefully Reviewing Petitions

• Some counts indicate about 50% of the proposed rejections are being “adopted” by the Board in the course of evaluating the petitions.

• Some entities are filing multiple petitions attacking the same patent, possibly in an effort to gain additional pages to make the case for unpatentability.

• Per the public record, Liberty Mutual has used multiple petitions (2 each) to challenge 5 patents belonging to Progressive Casualty.


13

Example: Proposed Rejections Presented in Multiple Petitions


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Example: Proposed Rejections Presented in Multiple Petitions

• Liberty Mutual has been successful in getting 7 of 10 petitions granted.

• Not every ground requested has been granted, however. – In CBM2012-00010, petitioner proposed 6 grounds of

rejection over prior art and in -00011, petitioner proposed an additional 5 grounds of rejection over prior art.

– In -00010, review was instituted, based on 2 of the 6 grounds; in -00011, review was denied on all 5 grounds.


15

Common Errors: Failure to Follow Rules • Failure to identify related matters or include a

statement that there are none. 37 CFR §42.8(b)(2).

• Exhibits not sequentially numbered in the 1001-1999 range. 37 CFR §42.63(c)

• Failure to identify lead counsel in the petition or a separate paper. 37 CFR §§42.8(b)(3), 42.10.

• Failure to identify back-up counsel in the petition or a separate paper. 37 CFR §§42.8(b)(3), 42.10


16

Common Errors: Failure to Follow Rules • Non-agreement of the Exhibit List with the

Exhibits filed, including duplicate documents • Failure to provide Petitioner’s addresses (e-mail,

postal and hand-delivery) and phone numbers in the Petition

• Failure to clearly designate lead and back-up counsel in the Petition, in accordance with 37 CFR §42.8(b)(4) and §42.8(b)(3).


17

Potential Consequences of Violating Rules: Expungement From the Record

Petitions exceeding the page limit, where the limit is not waived pursuant to granted motion, will be expunged from the record

Same result for any oppositions filed without authorization by the Board

See: IPR2012-00006, Paper Nos. 11 and 12, both entered November

9, 2012; IPR2012-00007, Paper Nos. 18, 19 and 20, all entered November

9, 2012; IPR2013-00011, Paper Nos. 10 and 11, both entered November

9, 2012. Bruce H. Stoner, Jr.

Greenblum & Bernstein, PLC 18

Potential Consequences of Violating Rules: Petition Ruled Defective

Using a single spaced claim chart to present both one’s claim construction (which may be single spaced) and one’s argument (required by rule to be double spaced) will result in the petition being ruled defective

See: IPR2013-00034, and -00036, Paper Nos. 4 and 6, entered

November 5 and 6, respectively; IPR2013-00038, unnumbered paper entered November 9, 2012


19

Potential Consequences of Violating Rules: Petition Ruled Defective

Although otherwise complete, petitions were defective for lack of: – A certification that the challenged patent is available

for the chosen proceeding, – A statement that the petitioner is not barred or

estopped from requesting the chosen proceeding, – A statement of how the challenged claims are to be

construed.

See: IPR2103-00057, -00058, and -00059 (11/26/12)


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Other Matters

• In CBM2012-00001, Paper No.27, entered November 19, 2012, the panel requested that “parties generally identify how a proposed protective order differs from the Board’s default protective order.”

• A hand delivery address in addition to a post office box is required as part of the mandatory notices; see IPR2013-00034, Paper Nos. 4 and 6, entered November 5 and 6, respectively


21

Pro hac vice Will you be able to use your litigation counsel who is not registered to practice before the PTO? Probably, but not certainly.

Pro Hac Vice Admission Requirements: An expanded panel of the PTAB issued an order authorizing a motion for pro hac vice admission pursuant to 37 CFR § 42.10 in Motorola Mobility LLC, v. Michael Arnouse, IPR2013-00010 (PTAB Oct. 15, 2012), setting forth the content that a pro hac motion is expected to contain.


22

Pro Hac Vice Admission The PTAB has had opportunity to consider several such motions. Two examples:

– In CBM 2012-00001, Paper No. 21, entered November 6, 2012, the panel took the position that based on the facts presented, the party moving the pro hac vice admission failed to meet its burden of establishing good cause.

– In CBM2013-00005, Paper No. 13, entered November 2, 2012, the panel took the position that the party moving the pro hac vice admission met its burden of establishing good cause.


23

Settlement Guidance (I)

Will the outcome of requests for settlement depend on the timing of that request? The following opinions suggest that the timing might be important. – Macauto U.S.A. v. BOS GMBH & KG, IPR2012-00004, on 2/4/13,

discusses a proceeding not yet instituted – IBM Corp. v. Financial Systems Technology (Intellectual Property)

Pty. LTD., IPR2013-00078, on 2/8/13, discusses a proceeding already instituted

In each instance, the parties were authorized to file a joint motion to terminate within a limited period of time. (In other words, don’t expect to gain delay while settlement is being worked out.)


24

Settlement Guidance (II)

In terminating the IBM case, the panel explicitly noted that, “This case is in the preliminary proceeding stage; no institution of a trial has been made. Based on the facts of this case, it is appropriate to enter judgment. Therefore, the joint motion to terminate the proceeding is GRANTED.” IPR2013-00078, Paper No. 11, entered 2/12/13, at p.2; footnotes omitted.


25

Settlement Guidance (III)

In terminating the Macauto U.S.A. case, which was instituted 1/24/13) the Board characterized the proceeding as being “in the preliminary stages” and noted that the initial conference call had not been held, that the co-pending district court litigation was being dismissed and that no other actions were pending, under which circumstances, the Board determined it was appropriate to terminate without rendering a final written decision. IPR2012-00004, Paper No.23, entered 2/20/13, at p. 2.


26

PTAB Denies Bid to Submit Additional Grounds of Unpatentability Following Institution of IPR

On April 2, 2013, a three judge panel (Medley, Turner and Chang) denied the Petitioner’s attempt to present additional asserted grounds of unpatentability of the Patent Owner’s patent. Research in Motion Corp. v. Mobilemedia Ideas LLC, IPR2013-00016, Paper No. 19.


27

Premature effort to exclude

In LKQ Corp. v. Clearlamp, LLC, IPR2013-00020 (Paper No. 17, entered 3/5/13), the PTAB panel (Medley, Turner, and Cocks) dismissed the patent owner’s request (which it treated as a “motion”) to exclude evidence submitted with the petition by petitioner. The request was part of the patent owner’s preliminary response. The PTAB dismissed the untimely challenge without prejudice for renewing under the proper procedures and circumstances.


28

A motion for additional discovery relating to commercial success must

address nexus In Microsoft Corp. v. Proxyconn, Inc,

IPR2012-00026, -00019 (Paper No. 32, entered 3/8/13), a PTAB panel (Medley, Boalick and Giannetti) denied the patent owner’s motion for additional discovery of the petitioner’s sales of an allegedly infringing product for lack of a persuasive showing of nexus between the petitioner’s sales and the patent owner’s claimed invention.


29

First CBM Hearing Held April 17, 2013

• Each side given one hour to argue – Time seemed to be more than ample – Question whether as much time will be allotted

in the future for a single issue case • Few surprises in how hearing conducted

– Questioning was perhaps not aggressive as in some past interference hearings

– Panel was more tolerant of prepared, slide-supported argument than other panels have been in past Bruce H. Stoner, Jr.

Greenblum & Bernstein, PLC 30

Issues of Interest

Use of references relied upon in ex parte reexam not necessarily an impediment to IPR; Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041 (3/22/13)(Medley, Blankenship and Bisk) – On 4/29/13, Mentor has sued Director under APA,

challenging PTAB’s determination that IPR not barred here by 35 USC §315(b)


31

Issues of Interest

Meaning of “technological invention” was explored in Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2013-00001 (2/27/13) (Lee, Chang and Zecher)

Challenge to standing to file petition based on petitioner’s earlier DJ action for noninfringement was denied in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022 (2/2/13) (Tierney, Green, and Robertson)


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