a deep dive into preparing winning ipr/prg/cbm petitions€¦ · 26/02/2015 · protracted legal...

A DEEP DIVE INTO PREPARING WINNING

IPR/PRG/CBM PETITIONS

Thursday, June 2, 2016

~ TABLE OF CONTENTS ~

I. PowerPoint Presentations

II. Supporting Documentation

III. Biographies

IV. Questions & Survey Link

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Serving the

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A Deep Dive into Preparing Winning

IPR/PRG/CBM Petitions

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Serving the

Creative and Legal Communities


A Deep Dive into Preparing Winning

IPR/PRG/CBM Petitions

7

12:30 pm – 2:00 pm Eastern 10:30 am – 12:00 pm Mountain

11:30 am – 1:00 pm Central 9:30 am – 11:00 am Pacific

Online Programs Committee

Committee Leadership

8

Jennifer M. K. Rogers

Chair, Online Programs

Shumaker & Sieffert, PA

[email protected]

Jameson Ma

Vice Chair, Online Programs

Webinar Coordinator

Bookoff McAndrews

[email protected]



Jonathan Stroud 202.805.8931 [email protected]

1875 Connecticut Ave. NW, Floor 10

Washington, D.C., 20003

John Baird 202.776.7819 [email protected] 505 9th Street, N.W., Suite 1000 Washington, DC 20004-2166

THE ANTI-TROLL

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1. Decide 2. Select counsel 3. Address billing guidelines/retainer issues/style guidance 4. Assess timing 5. Select expert 6. Order/conduct search 7. Follow efficient preparation schedule 8. Select grounds 9. Chart/assess 10.Prepare petition 11.Prepare declaration 12.Review (expert) 13.Review (client) 14.Prepare for filing (IPR #, deposit account, citations) 15.File

13

Patent Trial and Appeal Board

District Court

Stay

Post Grant Review

Lifting Stay

Inter Partes Review

Canceled or Maintained Claims + Estoppel

Pre-litigation

Complaint Judgment/Trial Issue

One-year clock

14

Trust

Relationship

Experience

Flexibility

Cost, billing, responsiveness

Practical understanding of business goals

Technological expertise

Name recognition

Appropriateness to challenge

15

Billing guidelines

Style guidance

Provide examples

Upfront agreement avoids confusion, increases efficiencies

Staffing control

Ability to work well with others

Reputation for settling cases

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Patent Trial and Appeal Board

District Court

Stay

Post Grant Review

Lifting Stay

Inter Partes Review

Canceled or Maintained Claims + Estoppel

Pre-litigation

Complaint Judgment/Trial Issue

One-year clock

17

Petition Final

Written Decision

Oral Hearing

PO Reply

Petitioner Reply/

Opposition

PO Response/ Motion to Amend

Decision/ Institution

PO Prelim.

Response

3 3 3 ≤ 3 1 ≤ 3 months 2


18 18

Petition Final

Written Decision

Oral Hearing

PO Reply

Petitioner Reply/

Opposition



PO Prelim.

Response

PO Discovery

on Real Parties in Interest (3 months)

PO Discovery (3 months)

Petitioner Discovery (3 months)

PO Discovery

(1 month)

3 3 3 ≤ 3 1 ≤ 3 months 2

Period for

Observation & Motions (2 months)

Filings Discovery

≤ 12 months after institution ≤ 6 months pre-institution

19 19

District Court

ITC

Settlement timing

Stay timing

Claim construction timing

101 motion

112 motion

Forum/venue challenges

20

• If sued for infringement, petitioner, RPI & privies have one year to seek inter partes review

– Specific claims do not matter; any complaint for infringement of the patent bars IPR of all claims

– Infringement counterclaim also triggers the bar

– First-served complaint controls (even if before AIA); no reset for later complaint

– Exceptions

• Joinder

• Dismissal of complaint without prejudice

21

–Docket reminder of three month, six month, seven month, and one-year anniversary of service

–Avoid filing petition close to anniversary to allow time for any corrections required by PTAB

–Consider involving infringement counsel, in-house counsel as back-up counsel in review; no limit on back-up counsel

–Generally, the earlier a Petition is filed, the better the chances of obtaining a stay

22

• IPR and PGR are not available if petitioner or RPI has filed DJ action for invalidity

• Trigger is filing of DJ complaint, not service

• An invalidity counterclaim in an infringement lawsuit does not trigger the bar

• No bar if complaint is dismissed without prejudice

• DJ action for non-infringement does not trigger bar

23

• File DJ action for invalidity simultaneously or after review petition

– DJ action will be automatically stayed until either:

(a) Patent owner moves to lift stay,

(b) Patent owner files an action or counterclaim asserting infringement, or

(c) Petitioner or RPI moves court to dismiss the civil action.

24

Order & review file history

Search firms – Landon IP, Cardinal, Crown Point, NGB, etc., etc., small shops, expertiese

In-house, automated, or outside counsel search

Consider searching through IPR, file history, related proceedings

25

• Contact possible experts as early as possible –Wonks & Nerds –Consider avoiding “professional expert witnesses”

but use experienced witnesses – Retain experts for all phases of cases

• Interview potential experts at least by phone, as early as possible

• Assess expert’s contacts with opposing party and make sure each expert does not have conflict of interest

• Almost always best not to use the same expert in review and litigation

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• Retainer agreements

• Consider whether expert is billing client directly, or firm

• Firms in better position to manage cost/billing rate of expert, knows better how to efficiently use expert time

• Ensure expert is on board with potential total cap, costs, etc.

• Consider rolling expert costs into caps

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Petitioners ◦ Must speak with one voice

◦ Must be represented w/ power of attorney

◦ Have power to settle IPR

◦ Subject to estoppel

Real Parties in Interest ◦ Must be named

◦ Are subject to estoppel

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Filing Fees Expert Fees Prior Art Search Fees Legal Fees (staged, budgets, caps, hourly rates, etc.) In-house time

Current Fees: IPR PGR CBM

Petition - up to 20 claims

$9,000 $12,000

- Each additional claim

$200 $250

Institution - up to 15 claims

$14,000

$18,000

- Each additional claim

$400 $550

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Mean Defense Cost of NPE litigation

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Source: AIPLA Survey – 2015

Amount at

Risk

Mean Total

Cost of Case

< $1 million $625,000

$1 to $10

million

$1.39 million

$10 to $25

million

$2.76 million

Petition Final

Written Decision

Oral Hearing

PO Reply

Petitioner Reply/

Opposition



PO Prelim.

Response

3 3 3 ≤ 3 1 ≤ 3 months 2


34 34

• Win institution: • “Reasonable likelihood of prevailing” standard

• Patent Owner gets a Preliminary Response, now with opportunity to submit testimony

• Limited opportunity for Petitioner to respond prior to institution decision

• If trial instituted, win at final written decision: • The PTAB can disregard material first introduced in the

Petitioner’s Reply that:

• goes beyond the scope of the Patent Owner Response or

• should have been part of Petitioners prima facie case

• Petition must be well developed

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PRIOR ART, PRIOR ART, PRIOR ART

Fully develop and vet possible grounds in preparation for drafting petition

Select and present only best grounds, not all, in petition

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Predict the Patent Owner’s strategy ◦ Threading the Needle Between Infringement and Validity ◦ Motivation to Combine ◦ Procedural Attacks – RPI, Prior art not prior art

Predict the issues that the Board may raise sua sponte ◦ Where are the gaps? ◦ Does your case turn on claim construction? ◦ Is there a better reference or combination that avoids

the issue?

Address the issues! ◦ Use techniques discussed today accordingly

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Generally, avoid: ◦ Extraneous words, especially in front matter

◦ Protracted legal discussions

◦ Irrelevant summaries of prosecution history and patent

◦ Unnecessarily lengthy claim construction

Generally, do: ◦ Tell your story / theme

◦ Get to the detailed claim mapping

◦ Use annotated illustrations

◦ Use expert testimony

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• Fee

• Mandatory notices

• Standing

– Availability of the patent for the review

– Statement that petitioner is not barred or estopped

• Supporting evidence as exhibits

• Identification of challenge(s)

– Each claim challenged

– How each challenged claim should be interpreted

– Statutory ground for challenge

– Why each challenged claim is unpatentable

– Relevance of supporting evidence for each challenge

• Certificate of service

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Petition Requirements

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Document Page/Word Limit

IPR PGR CBM

Petition 60 / 14,000

80 / 18,700

Preliminary Response/Response (from PO)

60 / 14,000

80 / 18,700

Reply to Response 15 / 5,600

Motion (to Amend) 15 (25)

Opposition to Motion (to Amend)

15 (25)

Reply to Opposition (to Amend) 5 (12)

• Excluded parts for petitions:

–Table of contents

–Table of authorities

–Certificate of service

–Appendix Mandatory notices other than CBM/RPI issues

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• Double spacing must be used except for

– Claim charts (w/o argument), TOC, TOA

– Certificate of service

– Block quotations, may have a line spacing of 1.5 if indented on both sides.

• See CBS Interactive v. Helferich Patent Licensing, IPR2013-00033, Paper 79, at 5-6 (Aug. 9, 2013).

– Headings

– Word count certification

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• Footnotes must also be double spaced – See Liberty Mutual Ins. v. Progressive Casualty Ins.,

CBM2012-00010, Paper 39, at 2 (Aug. 27, 2013).

• One inch margin on all sides • 14-point, Times New Roman proportional

font, with normal spacing is required in all filings

• Companies should be consistent and professional in formatting; different firms often adopt different styles, looking amateurish

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• Petition must comply with the stated page/word limits

– But, an overlength petition can also be filed with a motion

–Warning: Do not rely on motion to waive the limit for an IPR petition if near the statutory bar (one year after being served)

• Motions to waive the limits for other filings must be submitted in advance of the filing

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• ONE-SHOT ARGUMENTS. • Petition for review limited compared with IPX

request – PTO reports that the average request for IPX was 246

pages from October 1, 2010 to June 30, 2011.

• File more than one petition to institute a trial – Trials can be joined

– Cluster claims

• Declarations are excluded from page limit – Use declaration to discuss prior art in narrative form not in a

claim chart and to provide input on claim construction

– Declarant’s positions should relate to facts that support legal conclusions in petition to avoid problems in deposition

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50

• Mandatory notices to be filed with petition

– Each real party-in-interest

– Related matters

– Lead and back-up counsel

– Service information

• Specify method for service and always opt for e-mail delivery

– The parties may agree that electronic filing with the Board constitutes electronic service.

Mandatory notices

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• Mandatory notices due from patent owner within 21 days after service of the petition

• Duty to supplement

– Mandatory notices due within 21 days by either party when there is a change of information

Lumentum Holdings, Inc. v. Capella Photonics, Inc. [PDF] New precedential opinion: holds that mandatory notice information is not “jurisdictional” can can be corrected without losing filing date

Mandatory notices

http://www.uspto.gov/sites/default/files/documents/Lumentum Holdings v. Capella Photonics IPR2015-00739_Paper 38.pdf




• Trial Practice Guide

– At a general level, real party-in-interest is the party that desires review

– Highly fact dependent question

– Multiple factors are considered

– No bright-line test

– Cites to Gonzales v. Banco Cent., 27 F.3d 751 (1st Cir. 1994)

• Must consider the totality of the circumstances

• Non-party’s participation may be overt or covert

• Evidence may be direct or circumstantial

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• Trial Practice Guide

– Important consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding

– The non-party has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties

– Relevant factors include: (i) the non-party's relationship with the Petitioner; (ii) the non-party's relationship to the petition itself, including the nature and/or degree of involvement in the filing; and (iii) the nature of the entity filing the petition.

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• “Whether something less than complete funding and control suffices to justify similarly treating the party requires consideration of the pertinent facts.”

Trial Practice Guide

• The inquiry has been succinctly summarized as determining “whether someone other than the named petitioner is ‘litigating through a proxy.’”

Aruze Gaming Macau, Ltd. V. MGT Gaming, Inc.,

IPR2014-01288, Paper 13 at 12 (Feb. 20, 2015)

• Burden of proof on petitioner.

Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper 31 (Jan. 22, 2014).

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• Trial Practice Guide cites to Taylor v. Sturgell, 553 US 890 (2008) and the PTAB applies its factors:

1) the existence of an agreement that the non-party be bound by a determination of issues in an action between the parties,

2) the existence of a pre-existing substantive legal relationship between the non-party and a party,

3) representation in an action by someone with the same interests as the non-party,

4) the assumption of control over an action by the non-party,

5) re-litigation of issues through a proxy, and

6) the existence of a special statutory scheme.

55

• Petitioner failed to cite parent as RPI - Zoll Lifecor

v. Phillips Elec., IPR2013-00606, Paper 13 (Mar. 10, 2014)

• Petitioner failed to cite sibling entity, which had paid legal bills for litigation and IPR petition -

GEA Process Eng’g v. Steuben Foods, IPR2014-00041, Paper 135 (Dec. 23, 2014)

• Failed to cite parent and sibling, added before bar date and given new filing date - Petroleum Geo-Servs. v. WesternGeco, IPR2014-00678, Paper 15, (July 24, 2014)

• Real party in interest ≠ the corporate disclosure requirements of Federal Rule of Civil Procedure 7.1 -

Intellectual Ventures v. Xilinx, IPR2012-00018, Paper 12 (Jan. 24, 2013)

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• Indemnitor was an RPI – Had opportunity to control filing of petition, coordinated with petitioner re. prior art to assert, and was obligated to pay for the IPR. - First Data v. Cardsoft Int’l, IPR2014-00715, Paper 9 (Oct. 17, 2014)

• Indemnitor was not an RPI – Defendant in earlier litigation was an indemnitor to a sibling corp. of the petitioner, sibling corporation was not an RPI, indemnification related only to defending against infringement, there was no coordination between indemnitor and petitioner or sibling re. petition, and the financial obligation under the indemnification agreement was being disputed by petitioner and indemnitor. Atlanta Gas Light v. Bennett Regulator Guards, IPR2013-00453, Paper 31 (Jan. 22, 2014)

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• Relevant dates for determining privity include filing date of petition. Synopsys v. Mentor Graphics, IPR2012-00042,

Paper 16 (Feb. 22, 2013).

• Patent owner served complaint on AirWatch on Nov. 15, 2012. Petitioner acquired AirWatch Feb. 24, 2014, so Petitioner and AirWatch were in privity at least as early as that date. Determining privity is not limited to the time of service of the complaint. Petition was filed Aug. 18, 2014. Because privy of Petitioner was served more than a year before the Petition was filed, the Petition was untimely under 315(b). VMware v. Good Tech. Software,

Paper 28 (Feb. 20, 2015).

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Opportunity for advocacy

Some panels enjoy being updated about dismissals, motions to dismiss, and stays

If patent owner exhibits bad behavior, highlight that fact

But, be mindful of word limits

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• Each party must designate – One attorney as lead counsel, and

– At least one other attorney as back-up counsel

• Lead counsel must be a registered patent attorney

• Back-up counsel may be admitted pro hac vice by the PTAB.

• Powers of Attorney accordingly

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• Authorization is not required to file a motion for pro hac vice admittance

• Petitioner and patent owner must wait to file motion until 21 days after service of the petition

• Separate motion required for each candidate

• Must show “good cause.” Example in rule:

– Back-up counsel may be an experienced litigating attorney with an established familiarity with the subject matter in the proceeding.

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1. Membership in good standing of state bar

2. No suspensions or disbarments

3. No application for admission ever denied

4. No sanctions or contempt citations

5. Read and comply with the Trial Practice Guide and Board’s Rules of Practice for Trials (37 C.F.R. 42)

6. Subject to new USPTO Rules of Professional Conduct (37 C.F.R. §§ 11.101 et seq.) and disciplinary jurisdiction under 37 C.F.R. § 11.19(a)

7. List all other pro hac vice appearances before the PTO in last three years

8. Familiarity with the subject matter at issue in review

62

• Became available on 9/16/12.

• Available only after 9-month “first window” has closed and any PGRs have terminated. – Exception: No 9-month waiting period for patents

governed by the pre-AIA first-to-invent laws

• Number of inter partes reviews may be limited to 281 per year in each of the first 4 years. – Cap exceeded in every year

– The PTAB is not expected to use this cap.

63

• IPR is statutorily barred after one-year anniversary of service of complaint for infringement.

– E.g., Motorola Mobility v. Patent of Michael Arnouse, IPR2013-00010, Paper 20 (Jan. 30, 2013).

• Exceptions: Joinder & dismissal without prejudice

• Not triggered by allegation of infringement in an arbitration or by ITC complaint

– All reviews statutorily barred if petitioner or real party in interest (RPI) has filed DJ action for invalidity

• Litigation counsel should not respond to notice letter with DJ action without considering review proceeding

64

• Petitioner’s exhibits, such as documents relied on in petition, expert declarations, and documents cited in an expert’s declaration, must be uniquely numbered sequentially within the range 1001–1999.

• Patent owner’s exhibits are numbered sequentially starting at 2001

• PTAB occasionally submits exhibits, which start at 3001.

66

• EX1001 = 1 word

• Ex. 1001 = 2 words

• Using EX1001 format can save hundreds of words

• Similarly, avoid using superfluous or extraneous words or abbreviations in citations (pp., to, Case No., PTAB, etc.)

67

• Exhibits filed with the petition must include a label with the petitioner’s name followed by a unique exhibit number.

• Each page of an exhibit must be uniquely numbered in sequence, and the exhibit label must be affixed to the lower right corner of the first page of the exhibit without obscuring information on the first page.

– If obscuring information is unavoidable due to the exhibit label, the exhibit label must be affixed to a duplicate first page.

68

• Exhibits not filed with the petition must include a label with:

– Party’s name followed by the unique exhibit number,

– Names of the parties

– Trial number.

69

• Initial exhibit list is set forth in the petition

• Each party must continually maintain an exhibit list that sets forth exhibit number and brief description of each exhibit.

• The exhibit list should note any exhibit that is not filed.

• A current exhibit list must be served whenever evidence is served and must also be filed when filing exhibits.

70

• While outcome is determined based largely on documentary evidence, experts also play a critical role:

– Every technical assertion should be supported by expert declaration

– Expert should support positions with citations to documents that are filed as exhibits. Otherwise, positions can be considered to be conclusory.

71

• BUT – consider whether an expert declaration is worth it, particularly if expert will just be parroting the attorneys

• Some think petitions should ALWAYS include one: – Bear Archery Inc. v. AMS LLC, IPR2014-00700,

Paper 9, (Aug. 15, 2014) (institution was denied partially due to lack of an expert declaration).

– PTAB defers to experts more in unpredictable arts

72

• Correct time of skilled artisan’s assessment is patent’s effective filing date. Declaration should help PTAB understand the state of the art.

• Tutorial of state of the art is often helpful, but focus on technical issues not apparent from the prior art references

• Expert should explain any facts that would only be apparent to the skilled artisan

• BUT, material in declaration cannot be incorporated by reference. Expert’s positions must be discussed in Petition

73

• Bad declaration is worse than no declaration

• Expert declaration must be supported by facts and sound reasoning; conclusory opinions are routinely not credited. – Veeam Software v. Symantec, IPR2013-00145, Paper

12 (Aug. 7, 2013); Heart Failure Tech. v. CardioKinetix, IPR2013-00183, Paper 12 (July 21, 2013); Toshiba v. Intellectual Ventures II LLC, IPR2014-00201, Paper 11 (May 21, 2014); Google v. Simpleair, Inc., CBM2014-00054, Paper 19 (May 13, 2014)

74

• Expert testimony without underlying facts or data are entitled to little or no weight. When reproducing experiments disclose data and calculations used in experiment.

–Monsanto Co. v. Pioneer Hi-Breed Int’l, IPR2013-00022, Paper 43 (Apr. 11, 2013).

75

• Each assertion in a claim mapping in a petition should reference a statement by expert witness.

• Do not use a general citation to declaration.

– Wowza Media Systems, LLC v. Adobe Systems Inc., IPR2013-00054, Paper 12 (Apr. 8, 2013).

• Declaration should be independently prepared with respect to petition, particularly the claim chart, so that it does not parrot or even mirror petition.

• Avoid “expertizing your claim chart.”

– AIA Roundtable, April 2014

76

• Declarant’s positions should relate to facts that support legal conclusions without using conclusory statements

• Declarations should avoid legal jargon – Consider use of “not new” instead of invalid or

anticipates

– Consider use of “apparent” or “predictable” based on A + B instead of “obvious” in light of A + B

77

Federal Circuit regards “printed” and “publication” as a “unitary concept”

Legal conclusion based on underlying facts

No single test

–Can be tricky in light of estoppel

–Does not require a finding that anyone actually disseminated or viewed the document

–Temporary accessibility to a few can be enough

–Does not require that the document be indexed

Touchstone is public accessibility

78

Bruckelmeyer inquiry –Could a person of ordinary skill

–Interested in the subject matter of the patent

–Exercising reasonable diligence

–Have been able to locate the prior art document?

79

“Certified” translation not sufficient Requires an “affidavit attesting to accuracy” (37 C.F.R. §

42.5) “Affidavit” defined to mean an Oath or Declaration (37 C.F.R.

§ 42.2) Declaration must state:

◦ That declarant has been “warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001).”

◦ “all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.”

(37 C.F.R. § 1.68)

Best practice, file as a single exhibit: the affidavit, foreign language document, and translation - Volkswagen Group of America, Inc. v. Emerachem Holdings, LLC, IPR2014-01555 (Paper 20)

80

Keep in mind: translators may be deposed.

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83

• The story is about three things: prior art, prior art, prior art

• Set the stage

• Technology overview/tutorial/background

• Introduction

• The litigation story: Mandatory notices

• The petitioner is required to provide some form claim interpretation for each challenged claim. – “Petitioner is not required to define every claim term but rather merely

provide a statement that the claim terms are presumed to take on their ordinary meaning and point out any claim term that has a special meaning and the definition in the specification.” Fed. Reg. at 48700 (Aug. 14, 2012).

– If interpretation is not provided there is a risk that patent owner or PTAB may provide such an interpretation.

84

• Baseline strategy for meeting the petitioner’s obligation: ◦ 1.) Assertion of how the claims are being interpreted

What assertion though - Plain and Ordinary, Broadest Reasonable Interpretation? (more to follow)

◦ 2.) Explicitly construe important, but non-controversial interpretations (‘low hanging fruit’)

Explicit definitions in Intrinsic Record

Non-controversial interpretations that assist in applying the art

◦ 3.) Apply the art conservatively

Nullify the need to construe terms

85

What standard to use – Broadest Reasonable Interpretation (BRI) vs. District Court Standard? ◦ 1.) New § 42.100 rule:

If patent will not expire before Final Written Decision, use BRI

If patent will expire w/in 18 months of notice of filing date, new rules allow either party to request , w/in 30 days of petition, to use District Court Standard

◦ 2.) BUT, appropriateness of BRI under review by SCOTUS -Cuozzo Speed Technologies LLC v. Lee, Appeal No. 15-446)

=>Claim construction standard could change after a petition is filed

86

BRI vs. District Court Standard? ◦ A strategy: use BRI, but take a moderate position - “In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable interpretation in light of the specification in which they appear and the understanding of others skilled in the relevant art. 37 C.F.R. § 42.100(b). Applying that standard, we interpret the claim terms of the ’853 patent according to their “ordinary and customary meaning” in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)).” - (PTAB Final Written Decision)

87

• If a more robust claim construction fight is unavoidable, use resources to win construction:

Use expert and extrinsic evidence, as BRI must be in view of POSITA

Use specification, as BRI must be “in light of the specification.” 37 C.F.R. § 42.100(b).

Use the prosecution history

◦ Tempo Lighting v. Tivoli, 742 F.3d 973, 977 (Fed. Cir. 2014)

◦ Microsoft v. Proxyconn, No. 2014-1542,-1543 (Fed. Cir. June 16, 2015)

88

• Tempo Lighting

“[T]he prosecution history . . . serves as intrinsic evidence for purposes of claim construction. This remains true in construing patent claims before the PTO.” 742 F.2d at 977.

• Microsoft v. Proxyconn

“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Slip op. at 7.

89

• Claim construction positions taken by patent owner in litigation can be used to interpret the same terms in a review. – E.g., Ariosa Diagnostics v. Isis Innovation, IPR2012-00022, Paper 24 (Mar.

19, 2013). Petitioner cited declaration by patent owner’s expert filed in litigation. PTAB noted it “is very relevant to claim interpretation, as it reflects how the patent owner is interpreting the claims such that the alleged infringing product is covered by the asserted claim.”

• But beware:

The PTAB can be reluctant to issue claim constructions beyond that necessary for patentability issues

Introducing infringement theories can be unpredictable – will the Board adopt or reject Patent Owner’s litigation positions, and if they reject, will they do so in a way that is helpful?

Consider your goal – are you better off: Winning invalidity, or Potentially bolstering support for a non-infringement position

90

Where claims having MPF/SPF terms are challenged, petition “must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function”. (37 CFR §42.104(3))

◦ Can be tricky and consuming

◦ Consider second petition to deal with extra claim construction and analysis

Williams v. Citrix Pitfall ◦ Beware of nonce words (device / mechanism / etc.)

plus purely functional language include construction as MPF!

91

IPRs are limited to printed publication and prior art invalidity

PTAB cannot rule that a claim is indefinite in an IPR proceeding

But, indefinite claims can present challenges to showing prior art invalidity

Consider: ◦ Point out claim flaw, but make best argument for prior

art invalidity; ◦ Board has shown willingness to make helpful findings:

“It cannot be reasonably determined what ‘[claim term]’ means in the context of claim [X]’ and so we deny institution of this ground.”

92

• Similarly for 35 U.S.C. § 112(6) means plus function terms, see . . .

–Blackberry v. MobileMedia, IPR2013-00036, Paper 65, at 20-21 (Mar. 7, 2014) (terminating IPR because MPF element had no corresponding structure in spec.);

–Universal Remote Control v. Universal Elecs., IPR2013-00152, Paper 8, at 20 (Aug. 19, 2013) (denying challenge to MPF claim for same reason)

93

IPR limited to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publication.” (35 U.S.C. § 311(a).)

How many? ◦ Generally rather have fewer, well-developed grounds than more, less-

developed grounds

Anticipation or Obviousness? ◦ Anticipation pitfall: Limited ability to deal with PO/Board’s new

constructions ◦ Obviousness pitfalls: Secondary considerations and combinability of

references ◦ Pitfall of attempting both: Board can adopt one, but not the other ◦ Generally, obviousness more appealing than traditionally

Type of reference? ◦ Due to evidentiary issues, generally: Patent > Trade Publication > Other

NPL

94

• Due to swear behind risk, generally:

• 102(b) > 102(a), 102(e), etc.

• For 102(a), (e) etc., earlier > later

• Testing of PO’s evidence of prior invention

• Probably limited to deposition of inventor(s) and other swear-behind declarant(s).

• Probably not document discovery

95

Intervening art? Prompt PTAB findings related to enablement and written description

• IGB Automotive v. Gentherm, IPR2014-00664, Paper 8 (Sep. 30, 2014)

– Provisional application did not provide an enabling disclosure so claims obvious due to intervening art

• Similar to In re NTP, 654 F.3d 1279 (Fed. Cir. 2011):

– PTAB permitted attack on parent as failing to comply with § 112(a) for child’s claims to prove references prior art status.

– Federal Circuit affirmed § 102 rejection, which was tantamount to ruling patent invalid under § 112(a)

96

• Secondary Considerations?

–Discovery may be less in IPR

– PTAB has generally been skeptical of secondary considerations, but stay tuned . . .

– If secondary considerations are potentially strong then consider:

– addressing in petition and/or

– including a 102 ground

97

Introduce the Art - • A brief, early summary of the petition using the key prior art • Establish themes / telling the story

• A summary of the art just before detailed claim mapping • Helps introduce jargon and context to make

quotes in detailed claim mapping understandable

• Reinforces art’s teachings directed to supposed patentability of the challenged patent

98

Clarity, clarity, clarity

Walk the reader through the claim language, mapping it to the art

Consider annotated illustrations (word limits favor):

Take care that cross-references are accurate and easily traceable

99

100

Claim charts vs. narrative?

• New word limits (replacing page limits) may make claim charts more attractive to some practitioners

• If using charts, make sure they are readable

• Claim charts that would be appropriate in other forums, may not be helpful before the PTAB

• Clarity is key

Petition, and expert testimony, should set forth:

• 1. What the reference(s) teach

• 2. A specific combination or modification (how), with an assertion that it would be obvious

• 3. Explain why! Provide the rationale.

Common pitfall is step 3, e.g.: -missing altogether

-circular or conclusory reasoning

-important support in expert declaration, but missing from petition

101

• “KSR identified a number of rationales to support a conclusion of obviousness which are consistent with the proper ‘functional approach’ to the determination of obviousness as laid down in Graham.” MPEP § 2141(III).

• These rationales are detailed in Rationales A-G of MPEP § 2143 which is titled: “Examples of Basic Requirements of a Prima Facie Case of Obviousness.”

102

A. Combining prior art elements according to known methods to yield predictable results.

B. Simple substitution of one known element for another to obtain predictable results.

C. Use of known technique to improve similar devices (methods, or products) in same way and the result would have been predictable.

D. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.

E. “Obvious to try”—choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.

F. Known work in one field may prompt variations of it for use in same field or different one based on design incentives or market forces if the variations are predictable.

G. The teaching-suggestion-motivation (TSM) test.

H. Anything else that can be used to prove obviousness.

103

The Why - Obviousness “Rationales”

Time-consuming;

Requires experienced filing staff;

May have 25-MB issues;

PDFs uploaded directly;

Details needed for each named real party in interest;

New E2E system currently being beta-tested;

Company deposit accounts preferred;

Board and Parties’ Eyes Only;

105

On patent owner of record

Extensive paper service

Avoid videos, MPEG-LA, other non-PDF files

Agree to electronic service at earliest possible date

Keep in mind sealing/privacy issues whenever filing; files go directly to public

106

• For minor informalities, petition will be deemed defective; however, filing date will still be accorded and petitioner will be given opportunity to submit the missing information or to correct the error.

• Examples

– Macauto USA v. Baumeister & Ostler, IPR2012-00004, Paper 6 (Sept. 21, 2012) – Petitioner failed to identify related matters or state there were none, exhibits were not sequentially numbered, lead and back-up counsel were not identified.

– VMware v. ETRI, IPR2014-00901, Paper 7 (July 14, 2014) – Petitioner twice included improper argument in claim charts; given two opportunities to cure.

107

• If a petition is considered incomplete due to a substantive error or omission, it will likely still be entitled to a filing date, or the parties will be given a chance to correct.

– Can be raised at any time.

• GEA Process Eng’g v. Steuben Foods, IPR2014-00041, Paper 135 at 13 (Dec. 23, 2014)

– Example: Petitioner failed to identify a real party-in-interest.

• Petroleum Geo-Servs. v. WesternGeco, IPR2014-00678, Paper 15, (July 24, 2014)

• New Precedential Cases

108

Patent owners routinely violate the 21-day requirement

Good opportunity for early rapport or advocacy

109

Petition Final

Written Decision

Oral Hearing

PO Reply

Petitioner Reply/

Opposition



PO Prelim.

Response

3 3 3 ≤ 3 1 ≤ 3 months 2


110 110

Petition Final

Written Decision

Oral Hearing

PO Reply

Petitioner Reply/

Opposition



PO Prelim.

Response

PO Discovery

on Real Parties in Interest (3 months)

PO Discovery (3 months)

Petitioner Discovery (3 months)

PO Discovery

(1 month)

3 3 3 ≤ 3 1 ≤ 3 months 2

Period for

Observation & Motions (2 months)

Filings Discovery

≤ 12 months after institution ≤ 6 months pre-institution

111 111

• Focus on a few well-developed challenges.

• Focus on the quality of prior art and speed of petitioning.

• Timing is everything.

• 103 > 102.

• Fully support all factual assertions with expert testimony.

• Complete argument must be in petition (not just in expert declaration).

• Authenticate prior art, if it might be questioned.

• Translations must be certified under penalty of perjury.

• Follow all formatting rules.

• File early. Leave time to re-file before one-year bar.

• Focus on a theme in petition and throughout the trial.

112

Questions?

Jonathan Stroud, Chief Patent Counsel, Unified Patents

[email protected]

113

John Baird, Partner, Duane Morris LLP

[email protected]

DISCLAIMER

These materials are public information and 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, Duane Morris LLP or Unified Patents Inc., either individually or collectively can not 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 the authors, Duane Morris LLP or Unified Patents Inc.. Portions of this presentation were prepared separately by the identified authors and neither author substantively reviewed or approved portions prepared by the other author and may have a contrary view to what is set forth. 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.

THANK YOU

Jonathan Stroud, Chief Patent Counsel, Unified Patents

[email protected]

114

John Baird, Partner, Duane Morris LLP

[email protected]

DISCLAIMER

These materials are public information and 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, Duane Morris LLP or Unified Patents Inc., either individually or collectively can not 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 the authors, Duane Morris LLP or Unified Patents Inc.. Portions of this presentation were prepared separately by the identified authors and neither author substantively reviewed or approved portions prepared by the other author and may have a contrary view to what is set forth. 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.

Ex Parte

Reexam

Post-Grant

Review

Covered

Business

Methods PGR

Inter Partes

Review

When After grant Within

nine months

of grant

After grant, for

covered business

method patents

After

nine months of

grant (but one

exception)

Threshold

showing

SNQ More likely

than not or

novel legal

question

More likely than

not PLUS sued or

charged with

infringement

Reasonable

likelihood of

success

Grounds 102, 103 101, 102, 103,

112

101, 102, 103,

112

102, 103

Time at PTO Years 12-18 months 12-18 months

12-18 months

Anonymity Yes No No No

115

Ex Parte

Reexam

Post-Grant

Review

Covered

Business

Methods PGR

Inter Partes

Review

Estoppel None Issues raised

or reasonably

could have

been raised

PTO: raised or

reasonably

could have

raised

Dist. Ct: raised

Issues raised

or reasonably

could have

been raised

Before

whom

CRU PTAB PTAB PTAB

Discover

y/

evidence

Declaration Declaration

and

discovery

Declaration and

discovery

Declaration

and

discovery

Appeal Only patent

owner may

appeal to

PTAB then

Federal Circuit

Both parties

may appeal to

Federal Circuit

Both parties

may appeal to

Federal Circuit

Both parties

may appeal

to Federal

Circuit

116 116

To ask a question,

please select the

Q&A tab and select

“Ask New Question”

117

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118 © AIPLA 2016

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Staying Litigation for Covered Business Method Post-Grant Reviews 1

Jonathan Stroud2

Abstract The America Invents Act in 2011 dramatically altered U.S. patent law, adding three new trial-like review procedures by which aggrieved parties have a means of administratively challenging the patentability of issued patents. With one type—the covered business method (CBM) review—Congress sent a message that a certain subset of patents is likely unpatentable and deserves special consideration. Congress also dictated how courts were to analyze stays related to covered business method post-grant review (CBM). Which begs the question: did the AIA change the law of district court stays in light of co-pending office proceedings, substantively or practically? Here, we analyze early cases and interlocutory appeals under § 18-controlled CBM stays in district court. We find that the AIA has led to a near-unified grant of properly brought stays.

… it was a time, butchered from time that we must tell of quickly before we lose the sound of our own mouths calling mine, mine, mine.3

I. INTRODUCTION

When Congress passed and President Obama signed the 2011 America Invents Act,4 the law

created new administrative reviews meant, among other things,5 as alternatives to expensive patent

litigation.6 To be true alternatives, however, district courts would need to stay related litigations.

1 These materials reflect my personal views, are not legal advice, and do not reflect the views of Unified Patents Inc. (Unified). This article does not establish any form of attorney-client relationship with Unified. While I have sought accuracy, I may have made errors or omissions. 2 Chief Patent Counsel, Unified. I’d like to thank Cara Lasswell, a former colleague, whose tireless work was invaluable to this project. And I’d like to thank Gwen, for butchered time. 3 Anne Sexton, The Emigrants, in THE COMPLETE WORKS OF ANNE SEXTON (2014). 4 Leahy–Smith America Invents Act, Pub. L. 112-29, 125 Stat. 284 (2011). 5 Addressing low-quality patents is another often-overlooked goal. See Patent Reform Act of 2011, S 23, 112th Cong, 1st Sess in 157 Cong. Rec. S1037 (daily ed Mar. 1, 2011) (“The legislation also provides a modernized, streamlined mechanism for third parties who want to challenge recently-issued, low-quality patents that should never have been issued in the first place.”). 6 America Invents Act, HR Rep No 112-98, 112th Cong, 1st Sess, 48 (2011), reprinted in 2011 USCCAN 67, 78 (calling such reviews “quick and cost effective alternatives to litigation”); cf. Patent Reform Act of 2011, S 23, 112th Cong, 1st Sess, in 157 Cong Rec. S1326 (daily ed Mar 7, 2011) (such reviews ‘will allow invalid patents that were mistakenly issued by the USPTO to be fixed early in their life, before they disrupt an entire industry or result in expensive litigation.’”).

Many practitioners,7 judges, and proponents believed the new reforms virtually guaranteed stays of

district court litigation in favor of these new administrative patent trials. 8 Not so.

While district court judges have stayed many cases related to inter partes and covered business

methods post-grant reviews, early statistics show several denials and some delay in ruling on stays.

By not timely granting stay motions with merit, district court decisionmakers interfere with two of

the main objectives of the AIA—speeding up patent validity disputes and lowering litigation costs.

With the complex of the interplay between Federal Circuit appeals, Board rulings, and the statutes,

the Bar has numerous new standards and rules to apply. Given this, coupled with the denials and

delays, securing a stay in light of a related administrative challenge remains far from certain.

Luckily, thanks to the AIA’s CBM-related interlocutory appeal provision, the Federal Circuit

has already weighed in on stays in light of AIA’s § 18, in cases like VirtualAgility v. SalesForce.9 These

cases provide important guideposts in how parties can secure a stay, and provide insight not just for

parties seeking CBM-related stays, but also for parties seeking stays generally, such as those in light

of inter partes reviews (IPRs), supplemental examinations, and ex partes reexaminations. By carefully

parsing these opinions (and dissents), parties can better secure stays, which in turn should lead to

greater legal certainty nationwide, decreasing costs and streamlining patentability challenges.

7 See, e.g., AIA Post-Issuance Proceedings and Their Impact on ITC Proceedings, ITCTLA Annual Meeting, Nov. 13, 2014, Slide 4, available at http://www.itctla.org/storage/documents/ITCTLA_Annual_Meeting_Slides-v1.pdf (characterizing CBM stays as a “Virtual automatic stay”); Edmund J. Walsh, Turhan F. Sarwar, Charles T. Steenburg, Preparing for Changes in AIA Post-Grant Amendment Practice, 90 BNA Patent, Trademark & Copyright J. 2648 (July 17, 2015) (suggesting that after the AIA “many district courts grant stays almost as a matter of course.”). 8. 157 CONG. REC. S1363-65 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer) (“During floor debate, Senator Schumer explained that the CBM provision “places a very heavy thumb on the scale in favor of a stay” and when there is a CBM proceeding involved, and “it is nearly impossible to imagine a scenario in which a district court would not issue a stay.). 9 759 F.3d 1307 (Fed. Cir. 2014).

Further, by analyzing the emerging patterns in district court decisionmaking and looking to

influential opinions like NFC Tech. LLC v. HTC America,10 this article seeks to guide practitioners on

how best to bring—and oppose—CBM stays. By scrutinizing the cases and trends, I seek greater

certainty for the companies and parties involved, which should lead to reduced corporate waste.

Part II discusses the background of the AIA’s stay provisions, legislative history, and some

preexisting case law; Part III analyzes VirtualAgility v. SalesForce, Versata Software Inc. v. Callidus

Software, Benefit Funding Systems LLC v. Advance America Cash Advance Centers. Inc., Intellectual Ventures II

LLC v. JPMorgan Chase & Co., and Smarthflash LLC v. Apple Inc., as well as early statistics and stay

decisions related to CBM; and Part IV provides practical advice for those parties seeking a stay in

light of any ongoing administrative proceeding. While uncertainty inheres in litigation, skilled

counsel carefully considering and applying existing case law can increase parties’ chances through

effective representation post-AIA.

II. BACKGROUND11

The history of PTO post-grant procedures is long, tangentially relevant, and outside the

scope of this article. Suffice it to say U.S. post-grant procedures preceded the AIA, and courts have

long stayed cases related to such procedures. Stays are “incidental to the power inherent in every

court to control the disposition of the causes on its docket with economy of time and effort for

itself, for counsel, and for litigants.”12 They spring from a court’s Article III power and developed

case law such as Broadcast Innovation, LLC v. Charter Commc’ns.13 In Ethicon, Inc. v. Quigg, the courts

10 Case No. 2:13-cv-01058-WCB, at 10–11 (E.D. Tex. Mar. 11, 2015) (Bryson, J., sitting by designation). 11 Portions of this background section are adapted from other writings by Mr. Stroud. 12 Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). 13 420 F.3d 1364, 1366 (Fed. Cir. 2005), cert. denied, 547 U.S. 1113 (2006), on remand, 2006 WL 1897165 (D. Co. July 11, 2006).

established their inherent power to stay patent cases due to pending office proceedings.14 Courts

stayed those cases about 60% of the time.15

A. Passing the AIA

Congress intended the AIA’s new statutory post-grant review procedures to be “quick and

cost-effective alternatives to litigation.”16 These trials, such as inter partes review (IPR) and post-grant

review (PGR), are held before the rechristened Patent Trial and Appeal Board (PTAB). The AIA’s

Section 18, titled “Transitional Program for Covered Business Method Patents,” also created a

proceeding for “covered business method patents” (CBM), applying the rules of PGR but including

a number of features meant to make them stronger and more effective than other procedures.17

Legislative history indicates Congress intended CBMs to be an accessible, low-cost

alternative for companies challenging patents related to the financial industry.18 CBMs are available

for any party threatened or sued on a covered patent, and may raise any statutory grounds for

unpatentability—i.e. §§ 101, 102, 103, and 112 challenges.

1. Section 18

The CBM statute asks federal courts to consider staying motions in ongoing litigation

pending the outcome of the CBM review in light of four statutory factors.19 Congress intended for

14 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (request for stay pending inter partes reexamination). 15 See, e.g., Docket Navigator, Success Rates for Motions to Stay Pending Reexamination (2014) (showing between 51.2% and 61.3% of district courts stayed cases pending reexaminations). 16 See H. REP. NO. 112-98, Part I, at 48 (2011) (statutory post-grant review procedures were designed to be “quick and cost effective alternatives to litigation”); 157 CONG. REC. S952 (daily ed. Feb. 28, 2011) (inter partes review was intended to provide a “faster, less costly alternative[] to civil litigation to challenge patents) (statement of Sen. Grassley). 17 Because § 18 currently sunsets in 2020, it is not codified. 18 See generally Joe Matal, A Guide to the Legislative History of the America Invents Act: Part II, 21 FED. CIR. B.J. 539, 632 (2012). 19 § 18(b)(1) (“ (1) IN GENERAL.--If a party seeks a stay of a civil action alleging infringement of a patent under Section 281 of title 35, United States Code, relating to a transitional proceeding for that patent, the court shall decide whether to enter a stay based on” the Broadcast Innovation factors discussed infra.).

CBM litigations to be stayed.20 Litigants with related CBM petitions may move for a stay before the

district court, and by statute the court must apply the four-factor test from Broadcast Innovation,

L.L.C. v. Charter Communications:21

(1) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;

(2) whether discovery is complete and whether a trial date has been set; (3) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or

present a clear tactical advantage for the moving party; and (4) whether a stay, or the denial thereof, will reduce the burden of litigation on the

parties and on the court.22

The fourth factor’s burden refers, among other things, to saving litigation costs. Senator

Schumer said the provision “places a very heavy thumb on the scale in favor of a stay,”23 and “it is

nearly impossible to imagine a scenario in which a district court would not issue a stay.”24

2. IPR Stays.

Inter partes reviews carry no similar statute concerning stays. As noted, the power to stay

emanates from a Court’s Article III power to control its own docket and precedent. Courts first

confronted with AIA stays gave special weight to prior reexamination decisions, repeating that

three-factor test:

(1) whether a stay will simplify issues at trial, (2) whether discovery is complete and a trial date is set, and (3) whether a stay will unduly prejudice the non-moving party.25

20 See 157 CONG. REC. S1363-65 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer) (“During floor debate, Senator Schumer explained that the CBM provision “places a very heavy thumb on the scale in favor of a stay” and when there is a CBM proceeding involved, and “it is nearly impossible to imagine a scenario in which a district court would not issue a stay.); Versata Software, Inc. v. Volusion, Inc., No. 1:12-cv-00893, Order at *3 (W.D. Tex. June 20, 2013) (noting Congress intended that a CBM “stay should only be denied in extremely rare instances.”). 21 Broadcast Innovation, LLC v. Charter Commc’ns, Inc. 420 F.3d 1364, 1366 (Fed. Cir. 2005), cert. denied, 547 U.S. 1113 (2006), on remand, 2006 WL 1897165 (D. Co. July 11, 2006). 22. Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29 § 18(b)(1), 125 Stat. 284, 331 (2011) (codified in scattered sections of 35 U.S.C.). 23. 157 CONG. REC. S1363-65 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer). 24. Id.

IPR-related stay decisions cannot be appealed directly to the Federal Circuit, as was

demonstrated in Ultratec, Inc. v. CaptionCall LLC, where a unanimous Federal Circuit panel concluded

it lacked jurisdiction over a patent owner’s appeal from the grant of a stay related to a pending IPR.26

Indeed, parties may generally only appeal stay orders after trial has completed, excusing the

case of CBM-related interlocutory appeals and other exceptions. Where the patent owner has not

shown that one of the typical exceptions27 applies, the appellate court would consider any appeal

mandamus. In Ultratec, noting that the district court had “considerable leeway in the exercise of its

judgment in granting a stay” but that “guidance from related PTO proceedings can play a critical

role in determining whether to stay proceedings,” the Federal Circuit declined to find that the

requisites for the “drastic” remedy of mandamus relief was met.28

However, IPRs and PGRs occasionally merit automatic stays. If a declaratory judgment

action of invalidity, but not a counterclaim of invalidity, is filed in or after filing the PTAB petition,

that filing will be automatically stayed. It will be stayed until:

(1) the patent owner asks the court to lift the stay,

(2) the patent owner files a civil action or counterclaim for infringement, or

25 See, e.g., Universal Elecs., Inc. v. Universal Remote Control, Inc, No. SAVC 12-00329 AG (C.D. Cal. May 2, 2013) (Order Denying Defendant’s Motion to Stay); Semiconductor Energy Lab., 2012 U.S. Dist. LEXIS 186322, at *3–4 n.1; Star Envirotech v. Redline Detection, LLC, No. SACV 12-01861, 2013 WL 1716068, at *1 (C.D. Cal. Apr. 3, 2013) (applying reexamination inquiry to considerations of stay pending IPR); see also Gryphon Networks Corp. v. Contact Ctr. Compliance Corp., 792 F. Supp. 2d 87, 90 (D. Mass 2011) (citation omitted); Softview LLC v. Apple Inc., C.A. No. 10-389-LPS, 2012 WL 3061027, at *3–*5 (D. Del. July 26, 2012). 26 Ultratec, Inc. v. Captioncall, LLC, No. 2015-1694, -- Fed. Appx --, 2105 WL 4528272, at *1. (Fed. Cir. June 30, 2015). 27 These exceptions include, for instance, having the practical effect of an injunction. Ultratec, Inc. v. Captioncall, LLC, No. 2015-1694, -- Fed. Appx --, 2105 WL 4528272, at *1. (Fed. Cir. June 30, 2015). 28 Id. at *2.

(3) petitioner asks to dismiss the civil action.29

As Federal Circuit Judge William C. Bryson notes, thought “the stay provisions for CBM

review are statutory, while the stay practice for inter partes has been developed by the courts,” those

“standards for granting stay relief are generally similar” and any “overlap between the standards for

granting a stay in those two contexts is not surprising, since both CBM review and inter partes review,

like reexamination, are designed to promote the same policy goals,”30 such as speed, efficiency,

lowered litigation costs, and a more technically specialized review.

III. EARLY CBM STAY PRACTICE

Most CBM-related stay motions have eventually resulted in stays, with very few notable exceptions

(e.g., the appeal of Smartflash LLC v. Apple Inc.) that tend, so far, to prove the rule.31 Indeed, as noted

by Judge Bryson, while courts have been “nearly uniform” in granting stays since VirtualAgility, a

few have nonetheless been denied for various reasons.32 For instance, if the PTAB has already

instituted reviews of asserted claims, there is a “substantial likelihood of simplification of the district

court litigation,” but “that likelihood is far more speculative before the PTAB decides whether to

institute.”33 Of the handful of denials of CBM stays appealed and decided to date, most have been

reversed.

29 35 U.S.C. § 315(b); 35 U.S.C. §§ 315(a)(2), 325(a)(2). 30 NFC Tech. LLC v. HTC Am., Case No. 2:13-cv-01058-WCB, at 10–11 (E.D. Tex. Mar. 11, 2015) (Bryson, J., sitting by designation). 31 Smarthflash LLC v. Apple Inc., 2015 WL 4603820, -- Fed. Appx. --, at *4 (July 30, 2015). 32 See, e.g., Unifi Sci. Batteries, LLC v. Sony Mobile Commc’ns AB, No. 6:12-cv-224, 2014 WL 4494479 (E.D. Tex. Jan. 14, 2014) (denying review where many asserted claims were not in IPR). 33 See NFC Tech., Case No. 2:13-cv-01058-WCB, at 12–14 (collecting cases) (citing the “near-uniform line of authority” as reflecting “that after the PTAB has instituted review proceedings, the parallel district court litigation ordinarily should be stayed.”) (citing dozens of IPR-related stays, listed again here: Capella Photonics, Inc. v. Cisco Sys., Inc., No. 1:14-cv-03348 (N.D. Cal. Mar. 6, 2015); Gentherm

A. Interlocutory Appellate Decisions on CBM Stays 1. VirtualAgility, Inc. v. SalesForce.com, Inc

i. District Court

In VirtualAgility, Inc. v. SalesForce.com, Inc.,34 Judge Gilstrap of the Eastern District of Texas

issued the first denial of a CBM-related stay motion without leave to refile. Notably, while the

motion itself was filed before the PTAB instituted review, the court did not act on it for months,

and denied it almost two months after the PTAB instituted CBM review of all claims of the only

patent-in-suit.

On the first factor, “whether stay will simplify issues and streamline trial,” the Texas Court

found that the prior examination at the USPTO had been “thorough[,]” it had considered numerous

prior art references and, importantly, section 101 issues. The PTAB, on the other hand, had

Can., Ltd. v. IGB Auto., Ltd., No. 1:13-cv-11536, 2015 WL 804657 (E.D. Mich. Feb. 26, 2015); Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. 12-cv-5501, 2015 WL 435457 (N.D. Cal. Feb. 2, 2015); Service Solutions U.S., L.L.C. v. Autel.US Inc., No. 1:13-cv-10534, 2015 WL 401009 (E.D. Mich. Jan. 28, 2015); In re CTP Innovations, LLC, Patent Litig., MDL 1:14-md-2581, 2015 WL 317149 (D. Md. Jan. 23, 2015); Safe Storage LLC v. Dell Inc., No. 1:12-cv-01624 (D. Del. Jan. 22, 2015); Cutsforth, Inc. v. Westinghouse Air Brake Techs. Corp., No. 1:12-cv-01200 (D. Minn. Jan. 15, 2015); CANVS Corp. v. United States, No. 1:10-cv-00540 (Fed. Cl. Dec. 19, 2014); Kaneka Corp. v. SKC Kolon PI, Inc., No. 1:11-cv-3397 (C.D. Cal. Dec. 5, 2014); Locata LBS LLC v. Paypal Inc., No. 1:14-cv-01864 (N.D. Cal. Dec. 4, 2014); Surfcast, Inc. v. Microsoft Corp., No. 2:12-cv-00333, 2014 WL 6388489 (D. Me. Nov. 14, 2014); Norman IP Holdings, LLC v. Chrysler Group LLC, No. 6:13-cv-00278 (E.D. Tex. Oct. 8, 2014); Cypress Semiconductor Corp. v. GSI Tech., Inc., No. 1:13-cv-02013, 2014 WL 5021100 (N.D. Cal. Oct. 7, 2014); Intellectual Ventures II LLC v. Suntrust Banks, Inc., No. 1:13-cv-02454 2014 WL 5019911 (N.D. Ga. Oct. 7, 2014); Evolutionary Intelligence, LLC v. Sprint Nextel Corp., No. 1:13-cv-04513, 2014 WL 4802426 (N.D. Cal. Sept. 26, 2014); PersonalWeb Techs., LLC v. Google Inc., No. 5:13-cv-01317, 2014 WL 4100743 (N.D. Cal. Aug. 20, 2014); Intellectual Ventures II LLC v. U.S. Bancorp, Civil No. 1:13-cv-02071, 2014 WL 5369386 (D. Minn. Aug. 7, 2014); Affinity Labs of Texas LLC v. Samsung Elecs. Co., No. 1:14-cv-02717, 2014 WL 3845684 (N.D. Cal. Aug. 1, 2014); Depomed Inc. v. Purdue Pharma L.P., No. 1:13-cv-00571, 2014 WL 3729349 (D.N.J. July 25, 2014)); and some CBM-related stays, also listed here: Moneycat Ltd. v. Paypal Inc., No. 1:14-cv-02490, 2014 WL 5689844 (N.D. Cal. Nov. 4, 2014); Secure Axcess, LLC v. U.S. Bank Nat’l Ass’n, No. 6:13-cv-00717 (E.D. Tex. Oct. 20, 2014); DataTreasury Corp. v. Fiserv, Inc., No. 2:13-cv-00431 (E.D. Tex. Sept. 29, 2014); Solutran, Inc. v. Elavon, Inc., No. 1:13-cv-02637 (D. Minn. Sept. 18, 2014); Segin Sys., Inc. v. Stewart Title Guar. Co., No. 2:13-cv-00190, 2014 WL 3895931 (E.D. Va. Aug. 8, 2014). 34 No. 2:13-cv-00011-JRG (E.D. Tex. Jan. 8, 2014).

instituted review based on only one reference, and other non-prior art references “of particular

importance” were involved in litigation but not before PTAB. The judge suggested that the claims

likely were not invalid under section 101. He found the factor weighed “essentially neutral, if not

slightly against” granting a stay.

On the second factor, “whether discovery is complete and trial date is set,” the court found

the “relatively early stage of the proceedings” important. Additionally, the facts that the parties had

completed some discovery, that six months of fact discovery remained, and that claim construction

activities had occurred counseled “in favor” of granting a stay.

On the third factor, “whether a stay will unduly prejudice the non-moving party,” the judge

noted “credible evidence” that parties are direct competitors, noted that the patentee risked potential

loss of market share and consumer goodwill, noted they are a “small company with private investors

and limited resources,” highlighted the potential risk of loss of witnesses, and found that the

patentee’s failure to seek preliminary injunction not dispositive. He thus found the third factor came

out “heavily against” granting a stay.

On the fourth factor, whether stay will reduce the burden of litigation, he found it unlikely

that the PTAB would cancel even a “substantial number” of asserted claims, that there were prior

art references before court that were not before PTAB needing separate resolution, and that

“general relief from dual track litigation . . . is inherent to all CBM reviews.” As a result the fourth

factor was “slightly in favor” of a stay.

At the time, the Eastern District of Texas earned the dubious honor of becoming the first

jurisdiction to deny a CBM stay outright, provoking the first interlocutory review. Defendants

appealed to the Federal Circuit immediately, as provided for by § 18.

ii. Federal Circuit

The Federal Circuit, upon receipt of the appeal, expedited review. The parties heard oral

arguments on March 4, 2014, before a panel of Judges Pauline Newman, Susan Moore, and

Raymond Chen in VirtualAgility, Inc. v. SalesForce.com, Inc.35

The Federal Circuit, in a 2-1 opinion, reversed the Eastern District of Texas’s denial of a stay

pending CBM, analyzing the four factors anew and concluding that they favored a stay. They found

that the district court’s review of the PTAB’s decision to institute was at least an abuse of discretion

and essentially a collateral attack on the Board’s institution decision.36

The panel found the first factor, simplification of the issues, greatly favored a stay because

the PTAB “expressly determined that all of the claims are more likely than not unpatentable” when

it instituted CBM review. The Federal Circuit panel held that “[t]he district court erred as a matter of

law to the extent that it decided to ‘review’ the PTAB’s determination that the claims of the [] patent

are more likely than not invalid in the posture of a ruling on a motion to stay”37 and this was an

“improper collateral attack on the PTAB’s decision to institute CBM review.”38

For the second factor, the status of the district court proceedings, the overturned district

court judge, as noted above, had found that the “relatively early stage of the proceedings” important

counseled “in favor” of granting a stay.39 On appeal, the Federal Circuit generally agreed, holding “it

was not error for the district court to wait until the PTAB made its decision to institute CBM review

35 VirtualAgility, Inc. v. Salesforce.com, Inc.., 759 F.3d 1307 (Fed. Cir. 2014). 36 Id. 37 In Virtual Agility, the district court analyzed the likelihood of success at the PTAB, noting that prior patent examination was “thorough[,]”it considered numerous prior art references and importantly, section 101 issues, the PTAB instituted review based on only one reference, and other non-prior art references “of particular importance” were involved in litigation but not before PTAB. The Federal Circuit rejected this approach, finding that the court below had he improperly adjudged the merits of the grounds before the PTAB. 38 VirtualAgility, Inc. v. Salesforce.com, Inc.., 759 F.3d 1307 (Fed. Cir. 2014). 39 See also VirtualAgility, Inc. v. Salesforce.com, Inc., No. 2:13-cv-00011-JRG, 2014 U.S. Dist. LEXIS 2286, at *23–24 (E.D. Tex. Jan. 8, 2014).

before it ruled on the motion.”40The Court stated that there is “no doubt the case for a stay is

stronger after post-grant review has been instituted.”41

Judge Gilstrap below found the third factor, undue prejudice, to “weigh heavily against”

granting a stay.42 The Federal Circuit disagreed.43 While “competition between parties can weigh in

favor of finding undue prejudice,” the Federal Circuit found there was little direct evidence that

these two companies competed. Moreover, there was no irreparable harm where a stay would “not

diminish the monetary damages” to which VirtualAgility would be entitled to should it eventually

prevail.44 The panel also found it relevant that VirtualAgility did not move to preliminarily enjoin

Salesforce.com, given VirtalAgility’s argument that it needed quick injunctive relief to avoid

prejudice.45 They found that assertions that potentially relevant witnesses were elderly—over 60 and

over 70, the age of many Federal Circuit judges—did not, without evidence that they were in ill

health, result in undue prejudice, adding: “Since when did 60 become so old?”46 They held that the

factor, at best, weighed slightly against a stay.47

On the fourth factor, the reduction of the litigation burden, Judge Gilstrap analyzed the

factor as if it were a question of the substantive difficulty of the ultimate case, finding it unlikely that

the PTAB would cancel even a “substantial number” of asserted claims. He found that there were

prior art references before court that were not before PTAB, needing separate resolution, and found

that “general relief from dual track litigation . . . is inherent to all CBM reviews.”48 Thus he held the

40 See VirtualAgility, Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014). 41 Id. 42 Id. 43 See VirtualAgility, Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014). 44 Id. 45 Id. 46 Id. at 1319. 47 Id. at 1318. 48 VirtualAgility, Inc. v. Salesforce.com, Inc., No. 2:13-cv-00011-JRG, 2014 U.S. Dist. LEXIS 2286, at *23–24 & n.4 (E.D. Tex. Jan. 8, 2014).

fourth factor to be “slightly in favor” of a stay. On appeal, the Federal Circuit clarified that the

fourth factor was not meant to, and should not be, collapsed into other factors, even given the

chance for redundancies weighing in favor of stays.49 Considerations included “the number of

plaintiffs and defendants, the parties’ and witnesses’ places of residence, issues of convenience, the

court’s docket and in particular its potential familiarity with the patents at issue.”50They disagreed

with the lower court on the fourth factor as well.

Disagreeing with the court and finding all four factors favoring a stay, the majority met the

question of whether the statute’s dictate that “such review may be de novo”51 required a de novo

review, gave them discretion, or was something akin to a fact/law divide for standards of review.

But they ultimately declined to rule because under even a stringent abuse of discretion standard,

their findings merited reversal.52 They and reversed the Eastern District of Texas Judge’s denial,

under either a clearly erroneous or a de novo standard of review, putting off at the time answering the

question of what “may review de novo” means.53

In dissent, Judge Pauline Newman, long seen as a staunch advocate of the existing patent

system, argued that the majority should have reached the issue of the proper standard of review.54

She wrote that the decision “effectively creates a rule that stays of district court litigation pending

CBM review must always be granted.”55 She noted that what she characterized as “near automatic

grant of litigation stays . . . tilts the legislative balance” and suggested the ruling would lead “to

inequity and tactical abuse.”56

49 VirtualAgility, 759 F.3d at 1324. 50 Id. at 1315 n.4. 51 AIA § 18(b)(2). 52 VirtualAgility, 759 F.3d at at 1319–20. 53 Id. 54 Id. at 1321–22 (Newman, J., dissenting). 55 Id. at 1322. 56 Id.

2. Versata Software Inc. v. Callidus Software

In Versata Software v. Callidus Software, a later-vacated Federal Circuit panel recognized that

“[s]tays can be warranted even when a CBM proceeding does not address all asserted patents, claims,

or invalidity defenses.”57 The panel there had reversed a denial of a stay, finding the lower court had

misapplied the legal standard.58 The panel found the District Court’s suggestion of “a categorical

rule” disfavoring stays “if any asserted claims are not also challenged in the CBM proceeding” was

“inappropriate.”59Instead, stays may lie even where “some, but not all, of the claims asserted in

litigation are challenged in a CBM review.”60And the panel took judicial notice that the PTAB

instituted CBM review of the remaining claims in Versata’s patents during the appeal.61As such, the

Federal Circuit concluded that the district court had erred both under the de novo standard that might

have applied, as well as under the traditional abuse-of-discretion standard.62 The decision was later

vacated as moot due to a late-filed settlement agreement.

3. Benefit Funding Systems LLC v. Advance America Cash Advance Centers. Inc.

In Benefit Funding Systems v. Advance America Cash Advance Centers Inc.,63 the Federal Circuit

affirmed the District of Delaware’s grant of a stay. In doing so, the Federal Circuit noted that “[t]he

stay determination is not the time or the place to review the PTAB’s decisions to institute a CBM

proceeding.”64 The Federal Circuit found that because “CBM review was instituted and that such

review addresses whether the claims are directed to patentable subject matter,” the CBM would

57 771 F.3d 1368, 1371 (Fed Cir. 2014), vacated as moot, No. 2014-1468 (Fed. Cir. Feb. 27, 2015) (slip op.). 58 Versata Software Inc. v. Callidus Software Inc., 771 F.3d 1368 (Fed. Cir. 2014), vacated as moot, No. 2014-1468 (Fed. Cir. Feb. 27, 2015) (slip op.). 59 Id. at 1371. 60 Id. at 1372. 61 Id. 62 Id. 63 767 F.3d 1383 (Fed. Cir. 2014). 64 Id. at 1386 (quoting Virtual Agility, 759 F.3d at 1313).

necessarily narrow the issues before the district court. In view of the lack of evidence regarding the

other factors set forth in § 18, the panel upheld the district court’s stay decision.

Of note, the court again avoided addressing what § 18(b)(2)’s standard of review should be,

other than reiterating the standard,65 and suggesting it gave the Federal Circuit the “authority to

conduct more searching review of decisions to stay pending CBM review.”66

4. Intellectual Ventures II LLC v. JPMorgan Chase & Co. In Intellectual Ventures II LLC v. JPMorgan Chase & Co.,67 a 2–1 Federal Circuit denied an

appeal from a CBM-related stay as premature where the stay motion was denied with leave to refile

after the Board’s institution decision. Invoking the “final judgment rule,” the panel, in an opinion

authored by Judge O’Malley and joined by Judge Bryson, analyzed § 18, which gives the Federal

Circuit interlocutory jurisdiction over only appeals “relating to a [CBM review] proceeding for that

patent.”68Over a strong dissent, Judge O’Malley found appeals over petitions did not fall within the

court’s interlocutory jurisdiction under § 18, but rather only appeals from stay motions over

instituted proceedings should be appealable. Referring to the “not terribly illuminating” legislative

history,69 she construed the statute’s term “proceeding” as meaning an instituted review.

This was curious, because by the time the panel heard the appeal the review had been

instituted. The panel noted that while the courts and the Federal Circuit could take judicial notice of a

proceeding granted during an appeal’s pendency, it was not required to sua sponte. In footnote 4, the

majority distinguished the earlier VirtualAgility decision, where the panel took such notice adding

“we decline to expand the record before us.”70

65 767 F.3d at 1385. 66 Benefit Funding Sys., 767 F.3d at 1385. 67 No. 2014-1724 (Fed. Cir. Apr. 1, 2015) (slip op.). 68 Id. at 7 (emphasis removed) (quoting § 18(b)(1)). 69 Id. at 9. 70 Id. at 4–5 n.4.

Dissenting, Judge Hughes argued that the majority improperly limited the Federal Circuit’s

review.71 Relying on the legislative history, he found that “the majority’s statutory construction was

at odds with the overall purpose of the AIA and the specific purpose of the CBM procedure.”72 He

took pains to discuss the practical implications of the majority’s opinion, by which “district courts

could make stay decisions prior to institution that are unreviewable,” and so the Federal Circuit

“could not ensure the uniformity that Congress so clearly intended for such decisions.”73

5. Smarthflash LLC v. Apple Inc. But not every appeal has led to a stay on remand. In Smartflash LLC v. Apple Inc., the Federal

Circuit considered two appeals from the denial of a stay in favor of CBM review of an asserted

patent. The panel affirmed the stay’s denial as to Apple, who had already gone through a jury trial on

infringement and invalidity. But the panel overruled the denial of a stay for Samsung, whose trial,

while then imminent, had not yet begun.74 The panel concluded that the CBM would not simplify

Apple’s issues, where the jury had already considered invalidity and infringement of the asserted

patent. But Samsung had not yet endured the “most burdensome task”—trial. The Court found this

“the critical distinction,” thus “affect[ing] the analysis of two of the four [stay] factors: simplification

of the issues and reduction of the burden of the litigation on the parties and the court.”75 The

decision is thus notable for the easy line-drawing those cases coming after may employ—CBM stays

are unlikely to be granted after trial has concluded.

B. Statistics – The First 141 CBM Stay Motions76

71 Id. at 2 (Hughes, J., dissenting). 72 Id. 73 Id. at 4. 74 2015 WL 4603820, -- Fed. Appx. --, at *4 (July 30, 2015). 75 Id. at *9. 76 All Statistics are through July 31, 2015. Cases were pulled from public listings, and evaluated to identify duplicate decisions (e.g., decisions to continue an already instituted stay after institution) that are counted in raw statistics, but result in over-counting. Unless noted otherwise, all numbers reflect these “non-duplicate” decisions. See e.g., Broadband iTV, Inc. v. Hawaiian Telcom, Inc. et al., No. 1:14-

With the indispensable help of former colleague Cara Lasswell, we compiled and analyzed the

141 unique stay motions as of July 31, 2015, to yield reliable results for the almost three years of

CBM stay motions. We analyzed the status of CBM stays including those reversed on appeal, we

looked at denials, denials-in-part, and grants by judge and jurisdiction, and we collected a list and

some timing data. The appendix lists the cases we compiled and we by no means suggest it is

complete or that we practiced the perfect methodology; our goal was to be transparent and let

readers judge for themselves.

The data revealed many interesting trends. As shown below, 90% of stays were either granted,

moot, or delayed; only 10% of stays related to CBM have been denied outright. Of those, 68% have

simply been granted; 74% at least granted in part; and a remaining 16% are pending in some way.

Figure 1: Total Grant/Denial Rate of Early CBM Stay Motions (Including Reversals on Appeal)

cv-00169 (D.Haw.), in which the raw statistics count both a minute order granting a stay (Dkt. 120, Feb. 12, 2015) and a paper order granting the same motion (Dkt. 123 Feb. 17, 2015) as separate decisions.

10% 4%

10%

68%

6%

2%

CBM Stays: Post Appeal Denied

Denied as moot

Denied WithoutPrejudice

Granted

Granted in Part/Deniedin Part

Pending/Deferred

If you compare the three top jurisdictions for forum-seekers and patent filings, the Eastern

District of Texas, the Central District of California, and the District of Delaware, you see a notable

difference; the Eastern District of Texas has only granted 50% of the motions before it, while

Delaware, for instance, has granted 80%.

9% 8%

25% 50%

4% 4%

Motions to Stay Pending CBM: E.D. Tex Denied

Denied as moot

Denied WithoutPrejudiceGranted

Granted inPart/Denied in PartPending/Deferred

13%

80%

7%

Motions to Stay Pending CBM: D. Del Denied

Granted

Granted inPart/Denied in Part

12% 12%

63%

13%

Motions to Stay Pending CBM: N.D. Cal

Denied


Granted

Granted inPart/Denied in Part

Figure 2: Comparison Stays Pending CBM in the N.D. Cal, D. Del., and E.D. Tex.

When put graphically, it becomes apparent that The Eastern District has a higher volume of

“denials without prejudice,” that is, decisionmakers not ruling on the merits of a stay motion until

later (for instance, after an institution decision on all patents involved, or simply on a delay), while

trial expenses continue to accrue. Though other jurisdictions share this practice, litigators note that

deferred motions tend to linger longer in the Eastern District of Texas. Though stays have been

denied without prejudice in Delaware and the Northern District of California, those decisions are

quickly subsumed into subsequent final grants or denials, while many in the Eastern District of

Texas remain outstanding, either because they have not been renewed or have not been finally

decided. A higher percentage of stays are denied or delayed in the Eastern District of Texas than

elsewhere.

Figure 2: CBM Stay Results by Judge (with three or more unique stay motions)

Of the few outright denials, the majority, four, came from Judges Gilstrap and Payne in the

Eastern District of Texas. As is to be expected, the Eastern District of Texas and the District of

Delaware have seen the most number of filings and the most number of CBM-related stays.

0

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3

4

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Gilstrap Mitchell Payne Robinson Sleet Stark

CBM Stay Results, Top Judges

Denied

Denied as moot

Denied Without Prejudice

Granted

Granted in Part/Denied in Part

Figure 3: CBM Stay Results by Jurisdiction

We also see that certain districts and judges decide more motions than others. Predictably, the

District of Delaware and the Eastern District of Texas see a high number of motions to stay

pending CBM review. Thus far, judges from those districts—Judges Robinson, Sleet, and Stark of

Delaware and Judges Gilstrap, Mitchell and Payne of the Eastern District of Texas—have decided

the most CBM stays.

C. CBM District Court Stays

Courts have denied stays without leave to refile prior to PTAB institution.7778 Some explain that

they do so to avoid delay, which might occur if the proceeding is denied institution,79 but courts

77 See, e.g., Order on Pending Motions, Blue Calypso, Inc. v. Groupon, Inc., No. 6:12-cv-00486 (E.D. Tex. July 19, 2013) (denied with leave to re-file pending institution). 78 Blue Calypso, Inc. v. Groupon, Inc., No. 6:12-cv-00486 (E.D. Tex. July 19, 2013) (denying “premature” motion; PTO had yet to decide institution); Trustees of Boston Univ. v. Everlight Elecs. Co., No. 12-cv-11935 (D. Mass. July 7, 2013) (denied without prejudice to refile). 79 Dane Tech v. Gatekeeper Sys., Inc., No.12-cv-2730-ADM (D. Minn. Aug. 2013) (denied stay prior to grant of IPR).

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disagree on the why.80 Other courts have granted stays prior to institution, while some have granted

stays but only temporarily.81 Notably, the Delaware District Court in Market-Alerts Pty. Ltd. v.

Bloomberg Financial granted a CBM-related stay motion before the PTO decided whether to

implement the petition.82Another court initially declined to do so, but later stayed four co-pending

actions related to ongoing CBM reviews after the PTO initiated the CBM proceedings.83 Judge

Benita Y. Pearson stated that “[t]he analysis of the four-factor test set forth in § 18(b)(1) of the AIA

counsels in favor of granting each defendant’s motion to stay. Accordingly, the motions to stay are

granted. The consolidated cases are administratively closed pending notification of the completion

of the CBM review.”84

Judge Pearson found that the plaintiff did not properly argue the fourth cost-of-litigation factor;

granting a “stay would relieve Liberty Mutual and Progressive of the burden of litigating in multiple

fora.”85 Further, the “Court would be relieved of having to expend substantial judicial resources in

deciding claim construction, non-infringement, and invalidity issues before those claims are

invalidated, narrowed, or refined through CBM review.”86

Either party is authorized to take an immediate interlocutory appeal to the Federal Circuit on the

district court’s decision whether to grant a stay and the AIA provides that the “Federal Circuit shall

80 See, e.g., Pi-Net Int’l, Inc v. Citizens Fin. Grp., Inc., No. 1:12-cv-00355 (D. Del. June 21, 2013) (granting stay; CBM not yet instituted); Order, Versata Software, Inc. v. Volusion, Inc., No. 1:12-cv-00893 (W.D. Tex. June 20, 2013) (same). 81 See, e.g., Capriola Corp. v. LaRose Indus., LLC, No. 8:12-cv-2346-T-23TBM, 2013 U.S. Dist. LEXIS 65754, at *7 (M.D. Fla. Mar. 11, 2013) (“prudence commends resort to a stay until either the PTO declines review or, finding an important issue within the PTO’s special province, the PTO grants and completes review to the benefit of the parties, the court, and the public”). 82 See Market-Alerts Pty. Ltd. v. Bloomberg Fin. L.P., 922 F. Supp. 2d 486 (D. Del. Feb. 5, 2013). 83 See Progressive Cas. Ins. Co. v. Hartford Fire Ins. Co., No. 1:12-cv-1070 (N.D. Ohio Apr. 30, 2012); Progressive Cas. Ins. Co. v. State Farm Mut. Auto. Ins. Co., No. 1:12-cv-1068 (N.D. Ohio Apr. 30, 2012); Progressive Cas. Ins. Co. v. Allstate Ins. Co., No. 1:11-cv-82 (N.D. Ohio Jan. 12, 2011); Progressive Cas. Ins. Co. v. Safeco Ins. Co., No. 1:10-cv-1370 (N.D. Ohio Jun. 18, 2010). 84 See Order resolving ECF No. 98 at 22, Safeco, No. 1:10-cv-1370 (N.D. Ohio Jun. 18, 2010). 85 Id. 86 Id.

review the district court’s decision to ensure consistent application of established precedent.”87 In

the legislative history, Senator Schumer indicated the lower-court proceedings should be stayed

pending the interlocutory appeal because doing so “while the Federal Circuit reviews the question of

whether the case should be stayed pending the post-grant review will help ensure that requests to

stay are consistently applied across cases and across the various district courts.”88

The appeal from a denial is interlocutory—which some courts note supports the notion that

the CBM stays are favored.89 Note that the Federal Circuit may review de novo90—a legislative phrase

parties are unsure how to apply.

IV. RECOMMENDATIONS

“Thus the unfacts, did we possess them, are too imprecisely few to warrant our certitude . . .”91

Analyzing the data and the case law, we note that a clear trend has emerged in certain

districts of dismissals without prejudice early in cases, particularly where the related proceeding has

not yet been instituted. However, given a party’s ability to refile once an institution decision is

reached, and given the Federal Circuit’s pattern of analyzing prejudice and other factors from the

time of filing, the earliest possible date of filing a motion may benefit practitioners in many cases.

Renewed motions can then point back to the earlier motion’s date to avoid charges of dilatory

87 Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29 § 18(b)(2), 125 Stat. 284, 331 (2011) (codified in scattered sections of 35 U.S.C.). 88 157 CONG. REC. S1363, S1364 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer). 89 Market-Alert v. Bloomberg Finance L.P., 1:12-cv-00780-GMS (D. Del. Feb. 5, 2013) (granting defendants’ motion to stay pending outcome of CBM review, and ordered the nonmoving defendants’ action stayed also because “it appears that the intent of [Section 18 of the AIA] was to ensure that district courts would grant stays pending CBM review proceedings at a higher rate than they have allowed stays pending ex parte reexaminations.”). In VirtualAgility, where the district court recently denied a stay during CBM proceedings initiated at the PTAB, the Federal Circuit granted a motion to temporarily stay district court proceedings pending full appellate consideration of the motion for a stay. See VirtualAgility, Inc. v. Salesforce.com, Inc., No. 2014-1232, D.I. 34 (Fed. Cir. Feb. 12, 2014). 90 AIA § 18(b)(2). 39JAMES JOYCE, FINNEGAN’S WAKE 57 (1936).

tactics or gamesmanship. The data reveals that choice-of-forum matters, and to the extent the

parties have a choice, the data may recommend certain jurisdictions over others.

A. Factor I: whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial

The first factor is “whether a stay will simplify issues at trial.” Courts generally first look to

whether some, most, or all of the asserted claims are challenged. If less than all co-defendants will be

covered by the estoppel, the court may weigh that against granting a stay, but parties can mitigate a

court’s concerns through selective (and often creative) party stipulations. For instance, immediately

jointly dissolving a stay at the end of the CBM (but prior to appeal) if asserted claims survive,

conceding procedural advantages, or accelerating the trial should the claims survive.92 And if the

PTAB proceeding has already been instituted when the parties file their motions, they may benefit,

as the majority opinion noted in VirtualAgility that the time of filing is important.93

B. Factor II: whether discovery is complete and whether a trial date has been set;

The second factor is whether discovery is complete and whether a trial date is set. For

instance, when a court has held pretrial hearings, taken discovery, or had the trial hearing, district

and appellate courts are less likely to look favorably on a stay.94 VirtualAgility fixed the date of

analyzing the second factor to the time of filing the motion, which may reward parties for filing early

even if that motion is then tabled until institution. That is the earlier the stay is requested, the more

92 See, e.g., Blue Calypso, Inc. v. Groupon, Inc., No. 6:12-cv-486 (E.D.Tex.) (granting a stay in a multiple-defendant trial, given stipulations). 93 See Polaris Industries, Inc. v. BRP US Inc., No. Civ. 12-01405, 2012 WL 5331227, at *2 (D. Minn. Oct. 29, 2012) (first factor weighed in favor of defendant because it filed for inter partes review one week prior to plaintiff filing its complaint and because inter partes review was already in progress). See, Polaris Industries, Inc. v. BRP US Inc., No. Civ. 12-01405, 2012 WL 5331227, at *42 (D. Minn. Oct. 29, 2012) (first factor weighed in favor of defendant because it filed for inter partes review one week prior to plaintiff filing its complaint and because inter partes review was already in progress). V 12-00329 AG, ECF No. 78 at 5 (C.D. Cal. May 2, 2013) (stay denied where plaintiff had already served written discovery, trial date was set, and the court had held Markman hearing and issued claim construction ruling).

likely it will weigh favorably in the stay request because far fewer resources have been expended.95

For CBMs, however, the timing seems to be weighed less than for IPR review.96

C. Factor III: whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party;

The third factor, whether the stay would “unduly prejudice” the nonmoving party or give the

filer a “clear tactical advantage,” is notable because of the modifiers “unduly” and “clear.” Any

advantage or disadvantage must be out of the ordinary to qualify. To analyze this prong, Courts have

asked if parties are competitors, and if so weighing that in favor of the nonmoving party.97

Parties may want to consider the availability of evidence and witnesses as part of the third

factor.98 In the past, PTO proceedings could last many years. Now, much of the risk of evidence

loss is mitigated for CBMs, since they must be complete within 12-18 months. Note that “waiting

for the administrative process to run its course” often “risks prolonging the final resolution of the

dispute and thus may result in some inherent prejudice to the plaintiff.”99While this potential for

delay “by itself” does not tend to establish undue prejudice courts do consider it.100 Also, serial stay

95 See Pragmatus Telecom, LLC v. NETGEAR, Inc., No. 12-6198, 2013 WL 2051636, at *2 (N.D. Cal. May 14, 2013) (granting stay; discovery had commenced but was not far along); Tierravision, Inc. v. Google, Inc, No. 11cv2170-DMS, 2012 U.S. Dist. LEXIS 21463, at *2 (S.D. Cal. Feb. 21, 2012) (granting stay; Markman briefs had not yet been exchanged). 96 See Broadcast Innovation LLC v. Charter Communications, No. 03-2223, 2006 WL 1897165 (D. Colo. July 11, 2006) (unpublished) (in the case cited in the legislative history as the model for CBM factors, the stay granted for PTO reexamination despite being only three months from trial). 97 See, e.g., Avago Techs. Fiber Ltd. v. IPtronics Inc., 2011 U.S. Dist. LEXIS 82665, at *5 (N.D. Cal. July 28, 2011) (“Staying a case while [harm in the marketplace] is ongoing usually prejudices the patentee that seeks timely enforcement of its right to exclude.”). 98 Ambato Media, LLC v. Clarion Co., Ltd., 2:09-cv-242-JRG, 2012 U.S. Dist. LEXIS 7558, at *5 (E.D. Tex. Jan. 23, 2012) (“[W]hen a case is stayed, witnesses may become unavailable, their memories may fade, and evidence may be lost while PTO proceedings take place.”); VirtualAgility, Inc. v. Salesforce.com, Inc., No. 2:13-cv-00011-JRG, 2014 U.S. Dist. LEXIS 2286, at *18-20 (E.D. Tex. January 8, 2014) (“The possibility of witness loss is heightened in this case because certain identified witnesses are of advanced age.”). 99 See Market-Alerts, 922 F. Supp. 2d at 494. 100 VirtualAgility, Inc. v. Salesforce.com, Inc., No. 2:13-cv-00011-JRG, 2014 U.S. Dist. LEXIS 2286, at *23-24 & n.4 (E.D. Tex. January 8, 2014).

requests are quite obviously less likely to succeed.101 Close cases that would have been denied in light

of reexamination may now favor the movant—“for granting inter partes review probably results in

an even higher likelihood than under the prior standard that the issues in this action will be

simplified by the reexamination.”

D. Factor IV (CBM only): whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.

Federal Circuit Judge Bryson has noted that the additional fourth factor for CBMs indicates

Congress’s desire that the Courts pay special attention to minimizing the burden of litigation

involving patents relating to business and financial methods.102 And as noted above, Senator

Schumer stated that by expressly requiring a fourth factor consider the burden of litigation, § 18

“places a very heavy thumb on the scale in favor of [a] stay.”103

Early decisions have proven the prediction generally true. In Market-Alerts Party Ltd. v.

Bloomberg Financial, for instance, Judge Pearson found granting a “stay would relieve Liberty Mutual

and Progressive of the burden of litigating in multiple fora,”104 while the “Court would be relieved of

having to expend substantial judicial resources in deciding claim construction, non-infringement,

and invalidity issues before those claims are invalidated, narrowed, or refined through CBM

review.”105

Parties should demonstrate both financial and temporal burdens, and should reference

verifiable costs associated with denying the stay and prolonging the trial and review in parallel. In

2015 the American Intellectual Property Law Association (AIPLA) released its annual Report of the

Economic Survey, where it surveys practitioners anonymously concerning costs of litigation and

101 NUTech Ventures v. Norman, No. 12-cv-2326 (N.D. Ohio July 30, 2013) (denying second stay request). 102 NFC Tech., No. 2:13-cv-01058-WCB, at 4. 103 157 Cong. Rec. S1363–65 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer). 104 See Market-Alerts Pty. Ltd. v. Bloomberg Fin. L.P., 922 F. Supp. 2d 486 (D. Del. Feb. 5, 2013). 105 Id.

patent-related legal expenses. The Report has long served as a reliable benchmark for average legal

costs. For the first time, the 2015 study empirically includes median costs for post-grant work:

Through filing petition: $80,000 Through end of motion practice: $200,000 Through PTAB hearing: $275,000 Through Appeal: $350,000106

Costs and complexity vary, while cases may involve multiple challenges, patents, assertions,

or other complicating factors. But practitioners may want to present courts with the comparative

median costs of litigation, which often exceed millions of dollars.107 Those seeking a stay may

choose to rely on these calculations or others, to demonstrate to district court judges that the fourth

factor is empirically likely to result in a reduced litigation burden.

V. CONCLUSION

In light of the Federal Circuit’s guidance in Virtual Agility, Benefits Funding, Versata v. Calldius,

Intellectual Ventures II LLC v. JPMorgan Chase & Co., and Smarthflash LLC v. Apple Inc., parties are in a

much better position to determine whether a stay is likely, and thus whether to move for or oppose

one. And Judge Bryon’s sitting-by-designation opinion in the Eastern District of Texas in NFC

Tech. LLC v. HTC America108 provides a roadmap to stay motion precedent. It is my hope that by

following these cases and using this article, practitioners may better represent their client’s interests,

successfully litigating stay motions. This should lead to greater certainty, fewer conflicts, and lower

litigation costs, effecting Congress’ wishes.

106 2015 REPORT OF THE ECONOMIC SURVEY, AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION 32. 107 Id. 108 Case No. 2:13-cv-01058-WCB, at 10–11 (E.D. Tex. Mar. 11, 2015) (Bryson, J., sitting by designation).

4/27/2016 Duane Morris LLP John M. Baird, Partner Profile

http://www.duanemorris.com/attorneys/johnmbaird.html 1/4

John M. Baird practices in the area of intellectual property law, including analysis, acquisition,

enforcement and defense. Mr. Baird has experience with complex intellectual property litigation in

federal courts from pre- ling stages through summary judgment and trial. He provides technical and

legal analysis, works with experts and witnesses, takes and defends depositions, prepares and argues

motions, and manages the day to day efforts of trial teams. He has prepared non-infringement

opinions and assisted in defensive proceedings, including declaratory judgment actions in federal

court and has been engaged in multiple inter partes review (IPR), including arguing in nal Trial

Hearings, and other post issuance proceedings challenging the validity of issued patents before the

Patent Trial and Appeal Board of the U.S. Patent and Trademark Of ce.

Mr. Baird prosecutes patent and trademark applications before the United States Patent and

Trademark Of ce. He is a registered patent attorney, focusing in the electrical and mechanical arts. He

assists clients in the acquisition of patent rights in diverse technologies such as data networks,

telecommunications, wireless communications, VoIP, thin lm deposition, nuclear power, medical

devices, lighting and electronics. Mr. Baird also has experience drafting and analyzing intellectual

property licenses, including patent, trademark and software licenses.

JOHN M. BAIRD

PartnerDuane Morris LLP505 9th Street, N.W., Suite1000Washington, DC 20004‐2166USA

Phone: +1 202 776 7819

Fax: +1 202 379 9850

[email protected]

http://www.duanemorris.com/practices/intellectualproperty.html



He has experience in complicated, international intellectual property matters. He advises clients in

international IP strategy and has collaborated with foreign associates on a wide variety of IP matters

in major jurisdictions globally. Before joining Duane Morris in April of 2005, he clerked for a boutique

intellectual property rm in Sydney, Australia. He also spent time as a child in Wiesbaden, Germany

and is pro cient in conversational German.

Prior to his legal career, Mr. Baird served as an of cer in the United States Navy, where he managed

the operation and maintenance of nuclear power plants, including electrical power generation and

distribution in a Nimitz class aircraft carrier.

Mr. Baird is a 2008 cum laude graduate of George Mason University School of Law and a 1998

graduate of Cornell University (B.S., Electrical Engineering).

Representative Matters

Patent Trial and Appeal Board Proceedings (Inter Partes Review)

Inter Partes Review Nos. 2014-00815, 2014-01077 and 2014-01191. Representing Petitioners

Arris Group, Inc. and Tellabs, Inc. in IPRs of three patents held by Cirrex concerning optical

waveguides and lters. In one IPR, obtained institution on all challenged claims and early

judgment in favor of petitioner. Argued the nal Trial Hearing in the remaining IPRs, both of

which resulted in a nal written decision in favor of petitioner on all claims.

Inter Partes Review Nos. 2015-01104, 2015-01106 and 2015-1107. Represented Petitioner

Verizon Services Corp. in IPRs of three patents held by AIP that concern telephone call setup

and transmission using a "callback" (i.e. a reverse direction phone call) from a telecommunication

switch associated with the called party. The Patent Trial and Appeal Board instituted all IPRs and

rendered judgment in favor of petitioner on all instituted claims.

Inter Partes Review Nos. 2015-01078 and -01080. Represented Petitioner GoPro, Inc. in IPRs of

two patents held by Contour concerning a compilation of conventional features that were well-

known in the art of "point of view" ("POV") wireless cameras, such as those popularly used in

action sports. The Patent Trial and Appeal Board instituted trial in both IPRs, which are pending.

Patent Prosecution

Prosecutes in the area of integrated circuits on behalf of one of the world's largest independent

semiconductor foundries.

Prosecutes applications for one of the largest professional engineering services rm in the

world in the area of infrastructure engineering.

Patent Litigation

TQ Delta LLC v. Comcast (D. Del.); TQ Delta LLC v. Cox (D. Del.); TQ Delta LLC v. Time Warner Cable

(D. Del.); TQ Delta LLC v. Verizon (D. Del.). Represent defendants. The eight patents-in-suit held by

TQ Delta pertain to multicarrier DSL technology, including low power modes, diagnostics, and

phase scrambling. The patents are asserted against Multimedia over Coax Alliance (MoCA)

products and services.

Consolidated Work Station Computing, LLC v. Cisco Systems, Inc.. (S.D.N.Y.) Represented Cisco

defendant. The patent-in-suit held by CWSC pertains to fault-tolerant power supplies for

powering clustered personal computer processors. Obtained early settlement.



Cirrex Systems LLC v. Verizon Communications Inc., et al. (D. Del). Represent Verizon, Tellabs and

Arris Group defendants as litigation counsel and IPR counsel. The three patents-in-suit held by

Cirrex concern various optical assemblies that include waveguides, thin lm lters, and masks

and are asserted against Optical Networking Terminal components in the Verizon FiOS service.

Obtained stay of case pending resolution of IPRs.

AIP Acquisition LLC v. Verizon Communications Inc., et al. (D. Del). Represent Verizon defendants as

litigation and IPR counsel. The ve patents-in-suit are held by AIP and concern telephone call

setup procedures, including use of data networks, VoIP, least cost routing, hybrid networks, and

call hunt/simulring features. Obtained stay of case pending resolution of IPRs.

ReefEdge Networks, LLC v. Cisco Systems, Inc., et al., (D. Del); ReefEdge Networks, LLC v. Meraki, Inc.

(D. Del); and ReefEdge Networks, LLC v. Aruba Networks, Inc. (D. Del). Represented Cisco, Meraki

and Aruba defendants. The three patents-in-suit held by ReefEdge concerned technology for

seamless user mobility in wireless networking environments. Argued claim construction and

inde niteness at Markman hearing. Case settled for all clients.

BAE Systems Information and Electronic Systems Integration Inc. v. Aero ex Incorporated (D. Del.)

Represented Aero ex defendants. The patent-in-suit held by BAE Systems concerned infrared

countermeasure systems that use lasers to protect aircraft from incoming missiles. Argued claim

construction at Markman hearing. Obtained summary judgment in favor of Aero ex on patent

infringement claim.

Graywire, LLC v. Ciena Corp et. al., (N.D.Ga). Represented Cisco and Ciena defendants. The three

patents-in-suit held by Graywire (now Cirrex Systems) were directed to various optical

technology, including planar lightguide circuitry, recon gurable add-drop optical multiplexers,

optical ber identi cation technology, and laser light ltration and stabilization. Obtained stay

pending inter partes re-examination of the asserted patents at the U.S. Patent and Trademark

Of ce. All asserted patent claims held unpatentable by the Patent Of ce in the reexaminations.

Network Gateway Solutions, LLC v. Adtran, Inc. et al., (D. Del.). Represented defendant Cisco

Systems, Inc. The patent in suit pertained to digital network access servers that connect remote

computers over telephone line infrastructure.

Trade Secret Litigation

BAE Systems Information and Electronic Systems Integration Inc. v. Aero ex Incorporated (D.Del.).

Represented Aero ex defendants. The technology involved infrared countermeasure systems

that used lasers to protect aircraft from incoming missiles. Obtained summary judgment in favor

of Aero ex on trade secret and breach of contract claims.

Ellucian, Inc. v. Lori Crockett, (Fairfax County Circuit Court, Virginia). Served as Virginia local

counsel for Plaintiff, Ellucian, Inc. in bringing claims of breach of contract, misappropriation of

trade secrets and unfair competition.

Design Patent Litigation

Genlyte Thomas Group LLC v. Quality Sourcing Services, Inc. (C.D.Cal.). Represented QSSI

defendant. Design patent directed to lighting structure.

International IP Litigation

ReefEdge Networks Deutschland GmbH v. Cisco Systems GmbH (District of Dusseldorf, Germany).

Represented Cisco defendant through German counsel and coordinated co-pending U.S.



litigation. The patent-in-suit was the European Patent counterpart to patents-in-suit in co-

pending United States litigation concerning technology for seamless mobility in wireless

networking environments.

Cisco Systems GmbH v. ReefEdge Networks Deutschland GmbH (Federal Patent Court, Munich,

Germany). With German counsel, represented plaintiff Cisco in bringing a nullity action

challenging the validity of the European Patent that was the subject of a co-pending

infringement action against Cisco in Germany.

Admissions

Virginia

District of Columbia

U.S. Patent and Trademark Of ce

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the Eastern District of Virginia

Education

George Mason University Law School, J.D., cum laude, 2008

Cornell University, B.S. Electrical Engineering, 1998

Experience

Duane Morris LLP

- Partner, 2016-present

- Associate, 2009-2015

- Patent Agent, 2005-2008

Hodgkinson McInnes Pappas Patent & Trademark Attorneys, Sydney, Australia

- Prosecution Clerk, 2004-2005

United States Navy

- Surface Warfare Of cer, Nuclear 1998-2003

Honors and Awards

Named as a Super Lawyers' Rising Star in Intellectual Property for Washington, D.C., 2015

Professional Activities

American Intellectual Property Law Association (AIPLA)

The Institute of Electrical and Electronics Engineers (IEEE)

JONATHAN STROUD Unified Patents Jonathan Stroud, a former patent examiner and litigator for Finnegan, Henderson, Farabow, Garrett & Dunner LLP, has litigated, examined, prosecuted, negotiated, and counseled clients through patent disputes, focusing on the patentability disputes before the Patent Trial and Appeals Board (PTAB) and their complex interactions with other forms of litigation. At the USPTO for five years, Mr. Stroud examined medical devices, such as minimally invasive surgical devices, stents, shunts, bone implants, heart valves, cutters, spacers, electrodes, and many other medical technologies. Mr. Stroud interned at the U.S. International Trade Commission for Judge Robert K. Rogers, where he focused on discovery disputes in administrative proceedings. At Finnegan, he represented clients such as LG, Eli Lilly & Co., BMW, Bausch & Lomb, and Freedom Innovations on dozens of covered business method (CBM), post-grant (PGR), and inter partes reviews (IPRs) for both patent owners and petitioners, drafting petitions, responses, and motions. He drafted a CBM filed the first night of the proceedings’ availability that resulted in all claims being held unpatentable. He now manages outside counsel, settlement and licensing negotiations, prior art analysis, legal strategy, and prepares, drafts, and files IPR proceedings for Unified. He earned his J.D. with honors from American University Washington College of Law; his B.S. in biomedical engineering from Tulane University; and his M.A. in print journalism from the University of Southern California.

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