Patent Reexamination: Effective Strategy gy for Litigating - PowerPoint PPT Presentation

Presenting a live 90 ‐ minute webinar with interactive Q&A Patent Reexamination: Effective Strategy gy for Litigating Infringement Claims Best Practices for Pursuing and Defending Parallel Proceedings TUES DAY, MAY 3, 2011 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific T d Today’s faculty features: ’ f l f Jessica J. Harrison, S upervisory Patent Examiner, U.S. Patent and Trademark Office , Alexandria, Va. Frank J. Nuzzi, S enior IP Counsel - IP Litigation, Siemens Corporation , Iselin, N.J. Roderick McConnell, Licensing Manager, Infineon Technologies AG , Munich, Germany Greg H. Gardella, Partner, Moderator, Irell & Manella , Los Angeles 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 .

Conference Materials If you have not printed the conference materials for this program, please complete the following steps: • Click on the + sign next to “ Conference Materials” in the middle of the left- hand column on your screen hand column on your screen. • Click on the tab labeled “ Handouts” that appears, and there you will see a PDF of the slides for today's program. • Double click on the PDF and a separate page will open. Double click on the PDF and a separate page will open. • Print the slides by clicking on the printer icon.

Continuing Education Credits FOR LIVE EVENT ONLY For CLE purposes, please let us know how many people are listening at your location by completing each of the following steps: • Close the notification box • In the chat box, type (1) your company name and (2) the number of attendees at your location • Click the blue icon beside the box to send

Tips for Optimal Quality S S ound Quality d Q lit If you are listening via your computer speakers, please note that the quality of your sound will vary depending on the speed and quality of your internet connection. If the sound quality is not satisfactory and you are listening via your computer speakers, you may listen via the phone: dial 1-866-869-6667 and enter your PIN when prompted Otherwise please send us a chat or e mail when prompted. Otherwise, please send us a chat or e-mail sound@ straffordpub.com immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Qualit y To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again press the F11 key again.

Reexamination at the USPTO Reexamination at the USPTO Jessica Harrison Jessica Harrison SPE AU 3992 SPE AU 3992 Central Reexamination Unit Central Reexamination Unit USPTO USPTO

Filing Trends - Overall Filing Trends - Overall FY Q1 Q2 Q3 Q4 TOTAL % Change 2008 210 202 203 233 848 2009 222 219 235 240 916 + 8.0 % 2010 2010 242 242 228 228 258 258 333 333 1061 1061 +15 8 % +15.8 % 2011 288 +19.0%* *based on Q1 data only 4/26/2011 6

Filing Trends – Ex parte and IP percentages Filing Trends – Ex parte and IP percentages FY % EP % IP 2007 83.6 16.4 2008 80.2 19.8 2009 71.8 28.2 2010 73.5 26.5 2011 65.3* 34.7* *based on Q1 data only 4/26/2011 7

Filing Trends – IP filings Filing Trends – IP filings FY Q1 Q2 Q3 Q4 TOTAL % Change 2007 126 2008 2008 45 45 37 37 46 46 40 40 168 168 +33 3% +33.3% 2009 68 65 62 63 258 +53.6% 2010 74 52 63 92 281 +11.9% 2011 100 +35% *based on Q1 data only based on Q1 data only 4/26/2011 8

Agency Goals Agency Goals  Improve time from filing to Notice of Intent to Issue Reexamination Certificate (NIRC) Reexamination Certificate (NIRC)  Shorten time in USPTO examination queue: less than 2 months 2 months  Improve time from mailing of Office actions to availability in Patent Application Image and Retrieval availability in Patent Application Image and Retrieval (PAIR) system  Reduce burden of unnecessary petitions Reduce burden of unnecessary petitions  Adopt e-certificate 4/26/2011 9

Three phases to improve performance Three phases to improve performance  As announced in the notice titled, “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination of Patent Owner s Statement in Ex Parte Reexamination Proceedings” 75 Fed. Reg. 47269 (August 5, 2010), the USPTO is proceeding with a phased approach to improve reexamination processing: i ti i  In phase I, the USPTO will implement streamlined procedures and optional programs in which patent owners and third party requesters may elect to participate in order to gain the benefit of shorter pendency. i i i d i h b fi f h d  In phases II and III, the USPTO will consider the data gathered from phase I and the feedback from the patent owners and other stakeholders, and implement process changes through internal procedural changes, rule i l h h h i l d l h l making that includes opportunities for the public to comment, and/or administrative proposals for statutory changes to enhance reexamination proceedings proceedings. 4/26/2011 10

Phase I Phase I 1. Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination Proceedings - Statement in Ex Parte Reexamination Proceedings - 75 FR 47269 (Aug. 5, 2010)   This pilot allows the Central Reexamination Unit (CRU) This pilot allows the Central Reexamination Unit (CRU) to mail a decision on the merits, together with the Order Granting Reexamination, rather than having to wait 2 months for the Patent Owner to file an optional statement th f th P t t O t fil ti l t t t responding to the Order (when most Patent Owners never file this statement). 4/26/2011 11

Phase I Phase I 2. Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings 75 FR 29321 Ex Parte Reexamination Proceedings, 75 FR 29321 (May 25, 2010), and Streamlined Procedure for Appeal Brief Review in Inter Partes Reexamination Appeal Brief Review in Inter Partes Reexamination Proceedings , 75 FR 50750 (Aug. 17, 2010).  These changes eliminate the triple review of appeal briefs in reexaminations. Now, only the Board may reject an appeal brief as non-compliant. 4/26/2011 12

Phase I Phase I 3. Memo to CRU: Streamlined Procedure for Appeal Brief Review and Examiner’s Answers in Inter Brief Review and Examiner’s Answers in Inter Partes Reexamination Proceedings (Aug. 17, 2010)   If all the issues are fully briefed on both sides by the If all the issues are fully briefed on both sides by the Patent Owner and Third Party Requester in an IP reexamination proceeding, then the Examiner does not need to prepare and mail an Examiner’s Answer other d t d il E i ’ A th than to adopt the position taken in the RAN. 4 4. Hire more CRU examiners. Hire more CRU examiners  18 Examiners added to the CRU. An additional round of hiring is contemplated. 4/26/2011 13

Phase I’s Promising Results Phase I’s Promising Results  Goal: Reduce average internal queue time to an outgoing action being mailed to 2 months measured from when the action being mailed to 2 months measured from when the proceeding is before the USPTO.  Average time to first Office action reduced to 6 months in EP and slightly more than 3 months in IP .  Average time from reply to first Office action to second Office action reduced to 2 5 months in EP and 3 months in IP (typically action reduced to 2.5 months in EP and 3 months in IP (typically measured from Patent Owner’s response, so built in 30-day Third Party Requester comment period).  Average time from reply to second Office action to third Office action reduced slightly less than 2 months in EP , but 6 months in IP . IP . 4/26/2011 14

Phase I’s Promising Results Phase I’s Promising Results  Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination Proceeding Parte Reexamination Proceeding  We are holding steady at 19-20% waiver rate.  Of those where a waiver has been received as a result of a call seeking waiver and a First Office Action on the Merits (FAOM) has been waiver and a First Office Action on the Merits (FAOM) has been mailed (includes NIRCs); the average time from filing date to action has been about 2.1 months as compared to the 5.5 months reported for the 1st quarter of this FY the 1st quarter of this FY.  6 proceedings have already received a NIRC, and in three of them the certificates have issued. In addition, two have already received final rejections rejections. 4/26/2011 15

Additional Phase I actions under consideration Additional Phase I actions under consideration  Provide for expedited same-day scanning into PAIR for outgoing Office communication in reexamination outgoing Office communication in reexamination  Publish reexamination certificates without reference citation information on their face  Use reexamination proceedings as the test bed for the end-to- end reengineering process. This would result in a smart-text- based file wrapper for examination use which would permit: based file wrapper for examination use which would permit:  Examination efficiencies, particularly when large numbers of claims and IDS citations are filed  For rapid (next day) certificate publication  F id ( t d ) tifi t bli ti 4/26/2011 16