Understanding the Final Post- Understanding the Final Post Grant Rules and Regulations September 2012 Presenters Presenters: Joseph Mahoney jmahoney@mayerbrown.com Sharon Israel sisrael@mayerbrown.com K l F i Kyle Friesen kfriesen@mayerbrown.com Mayer Brown is a global legal services provider comprising legal practices that are separate entities (the "Mayer Brown Practices"). The Mayer Brown Practices are: Mayer Brown LLP and Mayer Brown Europe ‐ Brussels LLP both limited liability partnerships established in Illinois USA; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales (authorized and regulated by the Solicitors Regulation Authority and registered in England and Wales number OC 303359); Mayer Brown, a SELAS established in France; Mayer Brown JSM, a Hong Kong partnership and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.
Speakers Sharon Israel Sharon Israel Kyle Friesen Kyle Friesen Joseph Mahoney Joseph Mahoney Houston, TX Houston, TX Chicago, IL +1 713 238 2630 +1 713 238 2691 +1 312 701 8979 sisrael@mayerbrown.com kfriesen@mayerbrown.com jmahoney@mayerbrown.com
Introduction to Post-grant Proceedings Relevant Statutes & Rules • Title 35 ‐ America Invents Act – Replaces §§ 311 ‐ 319 ( Inter partes ) – Adds §§ 321 ‐ 329 (Post ‐ grant) – America Invents Act § 18 (Covered Business Method) • 37 CFR – PTO rules – Part 42 – trial rules (1 et seq ), inter partes rules (100 et seq ), post ‐ grant rules (200 et seq ), covered business method rules (300 et seq ) l (200 t ) d b i th d l (300 t ) – Web resources: http://www.uspto.gov/ip/boards/bpai/index.jsp; https://ptabtrials.uspto.gov/ p //p p g / Post ‐ Grant Intellect 3
Introduction to Post-grant Proceedings – Overview of Inter Partes & Post-Grant Reviews Who? Anyone (except the patent owner) When? Inter Partes Review Inter Partes Review P Post ‐ Grant Review t G t R i 9 months after issue or reissue Before 9 months after issue or reissue issue or reissue For reissue: new and amended claims only and amended claims only Post ‐ Grant Intellect 4
Introduction to Post-grant Proceedings – Overview of Inter Partes & Post-Grant Reviews What? Inter Partes Review Post ‐ Grant Review Any patents y p Patents with eff. filing date Patents with eff. filing date after March 16, 2013 Patents and printed publications Any grounds of invalidity (§§ 101, 102, 103, 112, etc.) Amendments and substitute claims permitted Amendments and substitute claims permitted Burden of Proof: Preponderance of the evidence S ttl Settlement allowed t ll d Post ‐ Grant Intellect 5
Introduction to Post-grant Proceedings – Overview of Covered Business Method Review Covered patent claims: “a method or corresponding apparatus for performing data “ th d di t f f i d t processing or other operations used in the practice, administration, or management of a financial product or service,” but not “technological inventions” Technological Inventions: • case ‐ by ‐ case determination • “claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art” and • “solves a technical problem using a technical solution” Post ‐ Grant Intellect 6
Introduction to Post-grant Proceedings – Overview of Covered Business Method Review Standing: Sued for infringement or “charged” with infringement (DJ jurisdiction standard applied per 37 CFR § 42.302(a)) (DJ jurisdiction standard applied per 37 CFR § 42.302(a)) Different from PGR: • No nine month filing period • No nine month filing period • Any ground of unpatentability, BUT limited prior art for 102/103 challenges allowed g • No “reasonably could have raised” estoppel • stay provision (includes interlocutory appeal by right) stay provision (includes interlocutory appeal by right) Sunset: Sept. 16, 2012 – Sept. 16, 2020 Post ‐ Grant Intellect 7
Introduction to Post-grant Proceedings – Fees Num ber of Claim s IPR Filing Fee PGR Filing Fee ≤ 20 $27,200 $35,800 Each add’l $600 $800 $180,000 , $160,000 $140,000 $120 000 $120,000 PGR ‐ Proposed $100,000 PGR ‐ Final $80,000 IPR ‐ Proposed IPR ‐ Final a $60 000 $60,000 $40,000 $20,000 $0 20 25 30 35 40 45 50 55 60 65 70 75 80 Post ‐ Grant Intellect 8
Introduction to Post-grant Proceedings – Proposed Changes to Fees g 77 FR 55028, 55069 • Staged fees – On petition & on decision to institute S d f O i i & d i i i i • Overall decrease in total – subsidized proceeding Event IPR Filing Fee PGR Filing Fee Request Request $9,000 $9 000 $12 000 $12,000 Each claim > 20 in Request $200 $250 Trial Instituted $14,000 $18,000 Each claim > 15 in Trial Each claim > 15 in Trial $400 $400 $550 $550 Post ‐ Grant Intellect 9
Introduction to Post-grant Proceedings – Life cycle “Source: Office Patent Trial Practice Guide , 77 FR 48756, 48757 (Aug. 14, Source: Office Patent Trial Practice Guide , 77 FR 48756, 48757 (Aug. 14, 2012)” Post ‐ Grant Intellect 10
Beginning a PTO Trial – Petition, Response & Decision to Institute Petition • Prior Art & Other Documents P i A t & Oth D t • Real Party in Interest R l P t i I t t • Declarations • Motion to Seal (if necessary) • Page Limit: 80 pages (Post ‐ Grant) or 60 pages ( Inter Partes ) • Claim construction Preliminary Response “Reasons why … review should not be instituted” Reasons why … review should not be instituted Evidence allowed, but testimony needs authorization Page Limit: Same as Petition Page Limit: Same as Petition Post ‐ Grant Intellect 11
Beginning a PTO Trial – Petition, Response & Decision to Institute Decision Decision Inter Partes Review I t P t R i P Post ‐ Grant Review G R i Reasonable likelihood More likely than not to prevail on one claim to prevail on one claim to prevail on one claim to prevail on one claim Not appealable but decision declining to institute Not appealable, but decision declining to institute may be subject to motion for rehearing Post ‐ Grant Intellect 12
Conduct of a PTAB Proceeding P Preliminary li i Issues • Case schedule determined by order after decision to institute • Case schedule determined by order after decision to institute • Protective order – separate for each Motion to Seal • Objections to Petition evidence due within 10 days of decision to institute • Initial Disclosures – • Agreed disclosures filed with Preliminary Response, or g y p • Disclosures sought by motion Post ‐ Grant Intellect 13
Conduct of a PTAB Proceeding P Patent Owner O Discovery Discovery Allowed • “Mandatory” Initial Disclosures • Exhibits & Depositions of Declarants • Relevant Information “inconsistent with a position advanced” by a party • “Inventors, corporate officers, and persons involved in preparation or filing” • Served with the paper in which the position is advanced • On motion – “good cause” & “directly related to factual assertions” (PGR) v. “interests of justice” (IPR) interests of justice (IPR) • Evidence uniquely in the possession of party raising issue Post ‐ Grant Intellect 14
Conduct of a PTAB Proceeding Patent Owner P O Response & Amendments Response to Petition R t P titi M Motion to Amend i A d • Affirmative evidence of patentability • Amend, cancel, or substitute (“reasonable number”) • Rebuttal relying on cross ‐ examination examination • Identify support in spec • Identify support in spec • Should “clearly state the patentably distinct features” • No broadening or new matter No broadening or new matter Post ‐ Grant Intellect 15
Conduct of a PTAB Proceeding Petitioner P i i Discovery O P t On Patentee’s Response t ’ R O M On Motion to Amend i A d • Same discovery allowed • Same discovery allowed • Secondary Considerations • Challenge support • Challenge “patentably distinct” Post ‐ Grant Intellect 16
Conduct of a PTAB Proceeding Petitioner P i i Reply & Opp. R Reply ISO Petition l ISO P titi O Opp. to Amendments A d • Affirmative evidence, e.g. , rebutting • Expert testimony on new or secondary considerations amended claims • Rebuttal relying on cross • Rebuttal relying on cross ‐ • Rebuttal relying on cross • Rebuttal relying on cross ‐ examination examination Post ‐ Grant Intellect 17
Conduct of a PTAB Proceeding Patent Owner P O Discovery & Reply O P titi On Petitioner’s Reply ’ R l On Petitioner’s Opposition O P titi ’ O iti • Same scope of discovery • Same scope of discovery • “Motion for observation” • Opportunity to file a Reply ISO A ISO Amendments d Post ‐ Grant Intellect 18
Conduct of a PTAB Proceeding Pre ‐ Hearing P H i Motions Evidentiary Motions – Federal Rules Evidentiary Motions – Federal Rules Request for Oral Argument Request for Oral Argument of Evidence Apply Motions for Rehearing • Daubert motions – APJ’s expect data, tests, methods, etc. , , No Final Briefing • Other motions to exclude evidence as inadmissible • Taking official notice Post ‐ Grant Intellect 19
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