Presenting a live 90-minute webinar with interactive Q&A Defending Patents in IPR Proceedings Leveraging Motions to Amend and Preliminary Responses, Weighing Secondary Considerations THURSDAY, AUGUST 13, 2015 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Michael J. Flibbert, Partner, Finnegan Henderson Farabow Garrett & Dunner , Washington, D.C. John C. Jarosz, Managing Principal, Analysis Group , Washington, D.C. Maureen D. Queler, Finnegan Henderson Farabow Garrett & Dunner , Washington, D.C. The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Strafford Webinar August 13, 2015 Defending Patents in IPR Proceedings Michael J. Flibbert michael.flibbert@finnegan.com
IPR Overview Petitioner Reply to PO PO Response Response PO Reply to & Motion PO Decision & Opposition Opposition Final to Amend Petition Preliminary on to to Written Oral Claims Filed Response Petition Amendment Amendment Decision Hearing no more than 3 months 3 months 3 months 1 month Hearing Set 3 months Observations Petitioner PO PO & Discovery Discovery Discovery Motions to Period Period Period Exclude No more than 12 months 5 5
IPR Statistics- Technology Breakdown FY 2015 4 0% 68 5% 113 8% 343 23% 928 64% Electrical/Computer Mechanical/Business Method Chemical Bio/Pharma Design 6 6
IPR Statistics- Institution Rate Joined 7% Denied 25% Instituted 68% *http://www.uspto.gov/sites/default/files/documents/aia_statistics_04-30-2015.pdf 7 7
IPR Statistics- Outcome *http://www.aiablog.com/claim-and-case-disposition/ 8 8
IPR Statistics- Substitute Claim Outcome *http://www.aiablog.com/claim-and-case-disposition/ 9 9
Patent Owner Preliminary Response PO • 37 C.F.R. § 42.107 Petition Preliminary Filed Response • Respond to proposed grounds of unpatentability in Petition 3 months • No new testimony beyond that of record except as authorized by Board • No deposition of Petitioner’s expert at this stage • Can file other non-testimonial evidence (e.g., prosecution declarations, declarations from EP opposition, literature) • Can request motion for additional discovery relating to real party-in-interest 10 10
Patent Owner Preliminary Response • Response optional: “patent owner may file a preliminary response” * http://www.uspto.gov/sites/default/files/documents/2015-06-30%20PTAB.pdf 11 11
Patent Owner Preliminary Response • Reasons to file: – Statutory time bar: 35 U.S.C. § 315(b) • Time bar applies even if complaint was before enactment of AIA (IPR2014- 00008) • Time applies even if there is a subsequent amendment in reexamination – statute refers to the patent , not the claims (IPR2013-00315) • Time bar includes counterclaims for infringement (IPR2013-00258) � • Time bar does not apply if the complaint is dismissed without prejudice (IPR2013-00312; also IPR2012-00004) • Time bar does apply if complaint is dismissed WITH prejudice (IPR2013-00168) – Narrow grounds instituted • Redundancy • Improper anticipation grounds 12 12
Patent Owner Preliminary Response • Reasons to file: – Incorrect or omitted claim construction • Symantec Corp. v. RPost Communications Ltd. , IPR2014-00357, Paper 14 at 10, 14 (PTAB July 15, 2014) (claims not anticipated because proposed construction was overly broad) – Missing claim elements in proposed obviousness or � anticipation grounds • 35 U.S.C. § 312(a)(3)- requires an IPR petition to identify with particularity the grounds on which the challenge is based, and the evidence supporting those grounds 13 13
Patent Owner Preliminary Response • Reasons to file: – Failure to address reasonable expectation of success • BioGatekeeper, Inc. v. Kyoto Univ. , IPR2014-01286, Paper 12 at 6-8 (PTAB Feb. 11, 2015) (denying institution because the petition failed to establish that one of ordinary skill would have had a reasonable expectation of success in achieving the � claimed combination) – Failure to name all real parties-in-interest – Failure to address prosecution history evidence of unexpected results or other secondary considerations of nonobviousness 14 14
Patent Owner Preliminary Response • Reasons to file: – Conclusory / unsupported expert declaration • Kinetic Techs., Inc. v. Skywork Solutions, Inc. , IPR 2014-00529, Paper 8 at 15 (PTAB Sept. 23, 2014) (“Merely repeating an argument from the Petition in the declaration . . . does not give that argument enhanced probative value.”). � • TRW Automotive US LLC v. Magna Elecs., Inc. , IPR2014-00258, Paper 18 at 10-11 (PTAB Aug. 27, 2014) (finding Petitioner’s obvious-to-try rationale unsupported and giving little weight to the expert declaration because it simply repeated TRW’s conclusory statements verbatim) – Reliance on non-prior art 15 15
Patent Owner Preliminary Response • Reasons to file: – Reliance on non-prior art • The petitioner has the burden to establish that a reference is a printed publication under 35 U.S.C. § 311(b). Cisco Sys., Inc. v. Constellation Techs. L.L.C. , IPR2014-01085, Paper 11 at 9 (PTAB Jan. 9, 2015) • LG Elecs., Inc. v. Advanced Micro Devices, Inc. , IPR2015-00329, � Paper 13 at 13 (PTAB July 10, 2015) (holding that date printed on face of reference did not establish that it was published on that date) • Because institution decisions must be based on information in the petition, deficiencies cannot be remedied later. Actavis, Inc. v. Research Corp. Techs., Inc. , IPR2014-01126, Paper 22 at 13 (PTAB Jan. 9, 2015) (citing 35 U.S.C. § 314(a)) 16 16
Patent Owner Preliminary Response • Reasons to file: – The Board’s discretion to deny “follow - on” petitions • Conopco, Inc. dba Unilever v. The Proctor & Gamble Co. , IPR2014-00628, Paper 23 at 4-6 (March 20, 2013) • Allowing petitioners to strategically unveil the best prior art and arguments in serial petitions would tax Board resources and force � patent owners to defend multiple attacks – No right of appeal of institution decisions • 35 U.S.C. § 319 - A party dissatisfied with a final written decision may appeal • St. Jude Medical, Cardiology Division, Inc. v. Volcano Corporation , 749 F.3d 1373 (Fed. Cir. 2014) 17 17
Patent Owner Preliminary Response • Reasons to consider not filing: – High institution rate (~68%) – No expert support allowed in Patent Owner preliminary response – Claim construction not final in institution decision – Gives petitioner 5+month lead on your arguments � – Depose Petitioner’s expert without revealing theory of case 18 18
Experts • Consider testifying and consulting experts • Deposition testimony is key – Good witness is key due to role of depositions • Retain experts early (even if not filing patent owner preliminary response) � – Technical experts and commercial success experts – Identify and engage technical expert early to vet arguments for preliminary response – Confer with in-house scientists to identify expert candidates 19 19
Institution Decision PO Decision • 37 C.F.R. § 42.108 and 35 U.S.C. § 314 Preliminary on Response Petition • Institution is discretionary no more than 3 months • Standard: “reasonable likelihood” • Timing of institution is panel-dependent • Scheduling order will issue with Institution Decision • 10 days from Institution - file objections to evidence in Petition (e.g., hearsay, authentication) 20 20
Patent Owner Response • Respond to grounds of unpatentability in institution decision with arguments, technical literature, and expert declarations • Provide claim construction positions if disagree with PTAB • Strengthen evidence of unexpected results with expert declarations • Establish commercial success and long-felt need with expert declarations • Antedate prior art if possible 21 21
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