Presenting a live 90-minute webinar with interactive Q&A Lessons From PTAB Full or Partial Denials to Obtain a Denial and Avoid an IPR THURSDAY, JULY 6, 2017 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner , Washington, D.C. Joshua L. Goldberg, Partner, Finnegan Henderson Farabow Garrett & Dunner , Washington, D.C. Cory C. Bell, Esq., Finnegan Henderson Farabow Garrett & Dunner , Boston 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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DISCLAIMER • These materials have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law. These materials reflect only the personal views of the authors and are not individualized legal advice. It is understood that each case is fact specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the authors and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han Foreign Legal Affairs Law Firm), cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with these authors. While every attempt was made to ensure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. 4
Outline I. Analysis of IPR/PGR petitions denied: patent owner arguments that worked. II. Analysis of IPR/PGR petitions granted but number of claims to trial reduced. III. Analysis of IPR/PGR petitions granted but grounds narrowed. • How can practitioners use the lessons of the PTAB denials to learn what patent owners are doing to achieve their ultimate success: An IPR petition denial? • What can petitioners learn from the partially denied IPR institution decisions? • How can practitioners prosecute applications and claims to enhance likelihood of denial of IPRs and PGR petitions? 5
District Litigation Filings Dropping as IPR Petition Filings Rising 6
IPR Institution Rate 69%, 7020/10176 (FY13-FY17 to date) Petition Filings FY 2017 to date (10/1/16-5/31/17) Source: https://www.uspto.gov/sites/default/files/documents/Trial_Statistics_2017-05-31.pdf 7
And if the Petition is Granted, Cancellation Rate in IPRs is High! 74% of claims not surviving! “mixed outcome” means some instituted claims survived, some did not. Source: Finnegan (http://www.aiablog.com/claim-and-case-disposition/). 8
More “Survival” Stats Source: Finnegan (http://www.aiablog.com/technology-breakdown/) 9
Can’t Rely on Being Able to Amend Claims Source: Finnegan (http://www.aiablog.com/technology-breakdown/) 10
Reminder of Burdens Unfavorable to Patent Owner PGR/CBM PGR/IPR DISTRICT COURT ISSUE Preponderance of the Clear and convincing Burden of proof evidence evidence Presumption of No Yes Validity? Phillips/Markman framework: analyze claims, specification, Broadest reasonable and prosecution history to Claim construction Interpretation (BRI) determine how claims would be understood by one of ordinary skill in the art Patent Trial and Decision maker District court judge or jury Appeal Board (APJs) 11
Tactical Advantages Favoring the Challenger • Challenger generally has time to plan attack, secure experts, and prepare detailed and compelling expert written reports. – IPRs can generally be filed at any time up until the patent expires. • Unlimited time if patent not in litigation; • 12 months from service of infringement complaint if patent in litigation. – PGR petitioners have from publication of patent application until 9 months post- issuance. – Patent Owner has only three months to file POPR • Strict limits on discovery. • Petitioner estoppel not discouraging filings; Patent Owner estoppel is harsh. 12
Nearly 1/3 of the Institution Decisions Have Been Denials Patent Owner’s best outcome is a denial 13
WHAT MAKES DENIALS SO GREAT? • Aside from saving the money and time of going through an administrative trial, the institution decision is non-appealable. • 35 U.S.C. § 314(d): NO APPEAL. — The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable. 14
No Appellate Review Of Any Part Of Institution Decision • Harmonic Inc. v. Avid Technology, Inc. , 815 F.3d 1356 (Fed. Cir. 2016) – PTAB instituted IPR on fewer than all asserted grounds, and then held claims not unpatentable. – FC: Affirmed patentability decision and refusal to revisit grounds characterized as “redundant.” • No jurisdiction to review any part of institution decision. • “The Board's decision to institute on one prior art ground or another does not raise fundamental questions about the scope of its statutory authority to deem patents unpatentable; it is simply the Board's exercise of its institution authority in a given case. Section 314(d) prohibits our review of such a decision .” 15
No Appellate Review Of Any Part Of Institution Decision • Achates Ref. Pub., Inc. v. Apple, Inc. , 803 F.3d 652 (Fed. Cir. 2015), cert. dismissed , 136 S.Ct. 998 (U.S. Feb. 9, 2016) – PTAB: Claims unpatentable. – Achates: IPR improperly instituted because the underlying petitions were time-barred under § 315(b). – FC: Appeal dismissed. • No jurisdiction to review institution decision. • This included the assessment of the time- bar “even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.” 16
No Appellate Review Of Any Part Of Institution Decision • Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc. , 817 F.3d 1293 (Fed. Cir. 2016), cert. denied (U.S. Oct. 31, 2016) – Shaw petitioned for IPR of all patent claims (21) on 15 grounds. – PTAB: Instituted on all claims but one on 2 grounds. • “Payne - based ground was ‘denied as redundant’” without substantive analysis. • Also granted second petition on less than all asserted grounds, denying the remaining as “redundant.” – PTAB: FWD some instituted claims unpatentable. – FC: Affirm-in-part, vacate-in-part, remand. • “We have no authority, however, to review the Board’s decision to institute IPR on some but not all grounds….We thus lack jurisdiction to review the Board’s decision not to institute IPR on the Payne-based ground, which includes its decision not to consider the Payne-based ground in its final written decision.” • “315(e) would not estop Shaw from bringing its Payne -based arguments in either the PTO or the district courts….The IPR does not begin until it is instituted….Thus, Shaw did not raise – nor could it have reasonably raised – the Payne-based ground during the IPR.” (emphasis in original) 17
But Certain Aspects Of CBM Status Are Reviewable Even Though They Are An Institution Issue • Versata Development Group, Inc. v. SAP America, Inc. , 793 F. 3d 1306 (Fed. Cir. July 9, 2015), cert. denied , 136 S.Ct. 2510 (U.S., June 27, 2016) – FC: No authority to review institution decision, but did have authority to review whether the patent at issue was within the PTAB’s authority for CBM review after a PTAB FWD. • “ we need not and do not consider all of the various determinations the PTAB may make to initiate proceedings and which may constitute limits on ultimate invalidation authority, reviewable on appeal from a final written decision invalidating a patent. It is enough for us to determine here that the defining characteristic of a patent as a CBM patent, subjecting it to a special PTAB power to invalidate, is such a limit. 18
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