March 10, 2015

Prosecution issues that can prove costly in Post Grant Reviews

Amending claims during Post Grant Reviews Tips for patent owners to avoid IPR

Focus too much on litigating claims after issuance Competing interests – patent owners seek broadly construed

claims in litigation but more narrowly construed claims in post grant review proceedings

Not including enough dependent claims All depend from independent claim Consider more dependent claims depending from each other Do not have to amend dependent claim.

Adequate support in priority applications – CIP, provisional, etc. Written description and prior art

Means-plus function limitations Must be supported by corresponding

structure in the specification Creates issues if claims are amended Possible Indefiniteness challenge in CBM

or PGR – Ergo Licensing, LLC v. Carefusion 303, Inc., 673 F.3d 1361 (Fed. Cir. 2012)

Not having a continuation pending

Cite the closest prior art and discuss it in the background – 35 U.S.C. §314 Reasonable likelihood petitioner will prevail

Might be less willing to institute if prior art were discussed and distinguished during prosecution

But possible harm during litigation because it could narrow scope of claim due to disparaging statements

First Action allowance Good for litigation – little or no prosecution history Sometimes not so good for post grant review

Examiner’s amendment Be sure claims are fully supported

Reasons for allowance Carefully review – If allowed because prior art does not disclose certain element, but

applicant is aware of prior art that discloses that element, file an RCE and cite the prior art

One motion to amend, but only after conferring with the Board. 37 C.F.R. § 42.121(a). Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 2 (PTAB June 11, 2013).

Provides the patent owner an opportunity to obtain guidance from the Board before filing a motion to amend. Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27 at 2 (PTAB June 3, 2013).

Conference typically takes take place two weeks before filing the motion to amend. Apple, Inc. v. Evolutionary Intelligence, LLC, IPR2014-00086, Paper 20 at 4 (PTAB June 3, 2014); see, e.g., Intri-Plex Tech., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., IPR2014-00309, Paper 20 at 3 (PTAB July 8, 2014) (citing 37 C.F.R. § 42.121(a).

No requirement to identify a fully developed claim set during the conference. Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27 at 2-3 (PTAB June 3, 2013).

Motion Limited to 15 pages, in addition to a cover page. Autel U.S., Inc. v. Bosch Auto. Serv. Sols., LLC, IPR2014-00183, Paper 22 at 5 (PTAB June 27, 2014) PTAB may permit more than 15 pages on a case by case basis.

The Brinkman Corp. v. Coprecitec, S.L., IPR2013-00435, Paper 8 at 3 (PTAB Nov. 25, 2013)

Propose focused amendments and use the bulk of the motion to amend to explain why the motion should be granted. Int’l Sec. Exch, LLC v. Chicago Bd. Options Exch., Inc., CBM2013-00049, Paper 24 at 3 (PTAB Apr. 18, 2014).

Patent owner has the burden of proof in establishing entitlement to the requested relief. Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27 at 2 (PTAB June 3, 2013). See 37 C.F.R. § 42.20(c).

Must clearly identify the written description support for the proposed substitute claims. Organik Kimya A.S. v. Rohm & Haas Co., IPR2014-00185, Paper 16 at 4 (PTAB June 17, 2014). Support in original application, unless patentee indicates there was no change to

the original disclosure - Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27 at 3 (PTAB June 3, 2013

Must establish that the substitute claims are patentable. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-0027, Paper 26 at 2 (PTAB June 11, 2013).

Explain how substitute claim obviates grounds of unpatentability in the proceeding - Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 17 at 2 (PTAB Mar. 13, 2013); Intell. Ventures Mgmt. v. Xilinx, Inc., IPR2012-00018, Paper 16 at 2 (PTAB Mar. 18, 2013)

Explain why substitute claims are patentable over prior art known to Patent Owner - SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00226, Paper 15 at 2 (PTAB Nov. 7, 2013)

Section 6 of the AIA authorized patent owners in post grant proceedings to amend their claims, and granted the Director the authority to proscribe regulations that set forth the standards and procedures for allowing the patent owner to move to amend the patent. 35 U.S.C. §§316(a)(9) and (d) for Inter Partes Review, and 35 U.S.C. §§326(a)(9) and (d) for Post Grant Review.

The Director proposed the following rules (77 Fed. Reg.7041, 7060 (Feb. 10, 2012): 37 C.F.R. §42.121 for Inter Partes Review; and 37 C.F.R. §42.221 for Post Grant Review and Covered Business Method Review

Nowhere in the Proposed or final Rules is there a requirement that the Patent Owner must prove the claims are patentable

So where did this requirement arise?

By the PTAB in Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 2 (PTAB June 11, 2013).

The motion must set forth the support for the amendment (§42.121(b) and §42.221(b));

The motion must show how the amendment responds to a ground of rejection (§42.121(c)(1) and §42.221(c)(1)); and

The motion must explain why the amendment does not enlarge the scope of the claims or introduce new matter (§42.121(c)(2) and §42.221(c)(2)).

The public commented on these rules, and they ultimately were adopted. 77 Fed. Reg. 48680, 48705 (Aug. 14, 2012).

The patentability requirement stems from 37 C.F.R. §42.20(c), which relates to motions generally and requires the moving party to establish that it is entitled to the requested relief.

PTO sought comments on Trial Proceedings – 79 FR 36474 (June 27, 2014) – Comments due Oct. 16, 2014

PTO received 36 comments – many comments on Motions to Amend

Burden of proof – many commented that patent owner should not be required to prove patentability

If PO does have the burden, most suggested the PTAB should permit more than 15 pages

If significant amendments are proposed, consider filing a reissue or ex parte reexamination. If a patent owner desires a complete remodeling of its claim

structure according to a different strategy, it may do so in another type of proceeding before the Office. For instance, a patent owner may file a request for ex parte reexamination, relying on the Board's conclusion of a petitioner's having shown reasonable likelihood of success on certain alleged grounds of unpatenatability as raising a substantial new question of unpatentability. In appropriate circumstance, it may also seek to file a reissue application. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 3 (PTAB June 11, 2013).

PTAB may stay those ancillary PTO proceedings pending the resolution of the post grant proceeding, even if the reissue or reexamination were filed prior to the post grant review petition. Hewlett-Packard Co. v. MCM Portfolio, LLC, IPR2013-00217, Paper 8 at 2, 3 (PTAB May 10, 2013). The PTAB stated in the Hewlett-Packard IPR to support its decision to

stay the reissue proceeding that “Patent Owner could amend the claims in the reissue application and change the scope of the challenged claims while the Board is conducting its review (should a review be instituted).”

The PTO has issued guidance on filing a motion to amend.

“USPTO Message from PTAB: How to Make Successful Claim Amendments in an AIA Trial Proceeding,” a blog posting from the Board’s AIA Blog, available at http://www.uspto.gov/blog/aia/entry/uspto_ptab_message_how_to and reprinted in Autel U.S., Inc. v. Bosch Auto. Serv. Sols., LLC, IPR2014-00183, Paper 22 at 3-5 (PTAB June 27, 2014).

Autel U.S., Inc. v. Bosch Auto. Serv. Sols., LLC, IPR2014-00183, Paper 22 at 3-5, provides the following guidance:

Amendment process in an AIA trial proceeding is NOT like the amendment process during examination.

To succeed on a motion to amend, a patent owner should discuss what it knows what was previously known about the feature and about the level of ordinary skill in the art.

No need to individually address all the items of prior art known to the patent owner

No need to address all of the prior art in existence at the time of filing

Should explain why the claim feature added by amendment, in combination with all the other features of the claim, would not have been obvious to a person of ordinary skill in the art at the time of the invention.

Not sufficient to argue patentability over the prior art applied by the petitioner (or only over Section 101 grounds of unpatentability). SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00226, Paper 15 at 2 (PTAB Nov. 7, 2013)

Statement that the closest prior art of which it is aware was applied by the petitioner in the petition might be helpful if the supporting basis is explained in and established by the motion to amend. A conclusory statement to this effect would be of questionable value

The PTAB has granted very few motions to amend

PTAB has granted motions to amend where the motion seeks to cancel claims

Substitute claims

denied about 93% of the time.

Source: Finnegan, Henderson, AIA blog - http://www.aiablog.com/claim-and-case-disposition/

Other than motions to cancel claims, the PTAB has only granted 3 motions to amend where the patent owner amended the claims.

International Flavors & Fragrances Inc. v. The United States of America, IPR2013-00124, -unopposed motion by the US Government granted; and

Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00402 and IPR2013-00403 – only granted motion with respect to 2 claims.

Decided shortly after public comments to PTO’s request for comments on the AIA trials set out in FED. REG. Vol. 79, No. 124 (June 27, 2014) The proposed amendment added a number of limitations to the claims – see next slides.

PTAB granted the motion to amend because: Patent Owner explained why substitute claims do not enlarge

scope Patent Owner cited paragraphs and figures to show support Patent Owner provided claim construction Patent Owner addressed prior art at issue in the IPR and

additional prior art Even though Patent Owner did not rely on an expert, the PTAB

held that such declarations are not a prerequisite

No silver bullet other than not to assert the patent

Include a number of dependent claims - similar to the first issue

Avoid overly broad claim construction positions in litigation

More comprehensive prior art search prior to filing application

Thank You