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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
IMPORTANT:
Should you require CLE credit for participating in today’s webinar,
please reference the document entitled 6.2.16 CLE Instructions &
Attendance Roster contained in the WEBINAR & MATERIALS ACCESS
LINK or included through the MATERIALS tab on the webinar day.
Compliance is time-sensitive. Online Survey completion and CLE
Attendance Roster submissions are due by Monday, June 6, 2016 by
close of business (COB). Return all required documents to
attendance@aipla.org; Subject: 6/2/16. Please allow 4 weeks for
processing.
Serving the
Creative and Legal Communities
Thursday, June 2, 2016
A Deep Dive into Preparing Winning
IPR/PRG/CBM Petitions
1
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
To adjust your volume
2
To ask a question, please select the Q&A
tab and select “Ask New Question” 3
Click “Ok” when checkpoints appear
4
To download materials, please select the
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5
For technical assistance, please select the
Help tab
6
Serving the
Creative and Legal Communities
Thursday, June 2, 2016
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
Rogers@ssiplaw.com
Jameson Ma
Vice Chair, Online Programs
Webinar Coordinator
Bookoff McAndrews
JMa@bookoffmcandrews.com
Jonathan Stroud 202.805.8931 jonathan@unifiedpatents.com
1875 Connecticut Ave. NW, Floor 10
Washington, D.C., 20003
John Baird 202.776.7819 jmbaird@duanemorris.com 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
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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
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Trust
Relationship
Experience
Flexibility
Cost, billing, responsiveness
Practical understanding of business goals
Technological expertise
Name recognition
Appropriateness to challenge
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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
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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
PO Response/ Motion to Amend
18 18
Petition Final
Written Decision
Oral Hearing
PO Reply
Petitioner Reply/
Opposition
PO Response/ Motion to Amend
Decision/ Institution
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
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District Court
ITC
Settlement timing
Stay timing
Claim construction timing
101 motion
112 motion
Forum/venue challenges
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• 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
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–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
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• 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
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• 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.
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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
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• 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
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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
PO Response/ Motion to Amend
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• 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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• 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
• 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.
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• 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
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• 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.
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• 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
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• 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.
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• 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.)
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• 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.
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• 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.
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• 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.
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• 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.
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• 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
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• 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
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• 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)
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• 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).
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• 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
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• 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
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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
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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?
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“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)
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Keep in mind: translators may be deposed.
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• 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.
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• 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
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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
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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)
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• 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)
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• 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.
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• 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
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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!
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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.”
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• 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)
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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”
104
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 Response/ Motion to Amend
Decision/ Institution
PO Prelim.
Response
3 3 3 ≤ 3 1 ≤ 3 months 2
PO Response/ Motion to Amend
110 110
Petition Final
Written Decision
Oral Hearing
PO Reply
Petitioner Reply/
Opposition
PO Response/ Motion to Amend
Decision/ Institution
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
jonathan@unifiedpatents.com
113
John Baird, Partner, Duane Morris LLP
jmbaird@duanemorris.com
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
jonathan@unifiedpatents.com
114
John Baird, Partner, Duane Morris LLP
jmbaird@duanemorris.com
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
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please select the
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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
Denied WithoutPrejudice
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
1
2
3
4
5
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
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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
JMBaird@duanemorris.com
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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.
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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.
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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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