defending patents in ipr...
TRANSCRIPT
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Defending Patents in IPR Proceedings Leveraging Motions to Amend and Preliminary Responses,
Weighing Secondary Considerations
Today’s faculty features:
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
THURSDAY, AUGUST 13, 2015
Presenting a live 90-minute webinar with interactive Q&A
Michael J. Flibbert, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
John C. Jarosz, Managing Principal, Analysis Group, Washington, D.C.
Maureen D. Queler, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Strafford Webinar August 13, 2015
Michael J. Flibbert
Defending Patents in IPR
Proceedings
5 5
Petition Filed
PO Preliminary
Response
Decision on
Petition
PO Response & Motion to Amend
Claims
Petitioner Reply to PO
Response & Opposition
to Amendment
PO Reply to Opposition
to Amendment
Oral Hearing
Final Written Decision
3 months no more than 3 months
3 months 3 months 1 month Hearing Set
No more than 12 months
IPR Overview
PO
Discovery
Period
Petitioner
Discovery
Period
PO
Discovery
Period
Observations
&
Motions to
Exclude
6 6
IPR Statistics- Technology Breakdown FY 2015
928 64%
343 23%
68 5% 113
8%
4 0%
Electrical/Computer Mechanical/Business Method
Chemical Bio/Pharma
Design
7 7
IPR Statistics- Institution Rate
*http://www.uspto.gov/sites/default/files/documents/aia_statistics_04-30-2015.pdf
Joined 7%
Denied 25%
Instituted 68%
8 8
IPR Statistics- Outcome
*http://www.aiablog.com/claim-and-case-disposition/
9 9
IPR Statistics- Substitute Claim Outcome
*http://www.aiablog.com/claim-and-case-disposition/
10 10
Patent Owner Preliminary Response
Petition Filed
PO Preliminary
Response
3 months
• 37 C.F.R. § 42.107
• Respond to proposed grounds of
unpatentability in Petition
• No new testimony beyond that of record except as
authorized by Board
• No deposition of Petitioner’s expert at this stage
• Can file other non-testimonial evidence (e.g., prosecution
declarations, declarations from EP opposition, literature)
• Can request motion for additional discovery relating to
real party-in-interest
11 11
Patent Owner Preliminary Response
* http://www.uspto.gov/sites/default/files/documents/2015-06-30%20PTAB.pdf
• Response optional: “patent owner may file a preliminary
response”
12 12
Patent Owner Preliminary Response
• Reasons to file:
– Statutory time bar: 35 U.S.C. §315(b)
• Time bar applies even if complaint was before enactment of AIA (IPR2014-
00008)
• Time applies even if there is a subsequent amendment in reexamination –
statute refers to the patent, not the claims (IPR2013-00315)
• Time bar includes counterclaims for infringement (IPR2013-00258)
• Time bar does not apply if the complaint is dismissed without prejudice
(IPR2013-00312; also IPR2012-00004)
• Time bar does apply if complaint is dismissed WITH prejudice (IPR2013-00168)
– Narrow grounds instituted
• Redundancy
• Improper anticipation grounds
13 13
Patent Owner Preliminary Response
• Reasons to file:
– Incorrect or omitted claim construction
• Symantec Corp. v. RPost Communications Ltd., IPR2014-00357,
Paper 14 at 10, 14 (PTAB July 15, 2014) (claims not anticipated
because proposed construction was overly broad)
– Missing claim elements in proposed obviousness or
anticipation grounds
• 35 U.S.C. § 312(a)(3)- requires an IPR petition to identify with
particularity the grounds on which the challenge is based, and the
evidence supporting those grounds
14 14
Patent Owner Preliminary Response
• Reasons to file:
– Failure to address reasonable expectation of success
• BioGatekeeper, Inc. v. Kyoto Univ., IPR2014-01286, Paper 12 at
6-8 (PTAB Feb. 11, 2015) (denying institution because the
petition failed to establish that one of ordinary skill would have
had a reasonable expectation of success in achieving the
claimed combination)
– Failure to name all real parties-in-interest
– Failure to address prosecution history evidence of
unexpected results or other secondary considerations of
nonobviousness
15 15
Patent Owner Preliminary Response
• Reasons to file:
– Conclusory / unsupported expert declaration
• Kinetic Techs., Inc. v. Skywork Solutions, Inc., IPR 2014-00529,
Paper 8 at 15 (PTAB Sept. 23, 2014) (“Merely repeating an
argument from the Petition in the declaration . . . does not give
that argument enhanced probative value.”).
• TRW Automotive US LLC v. Magna Elecs., Inc., IPR2014-00258,
Paper 18 at 10-11 (PTAB Aug. 27, 2014) (finding Petitioner’s
obvious-to-try rationale unsupported and giving little weight to the
expert declaration because it simply repeated TRW’s conclusory
statements verbatim)
– Reliance on non-prior art
16 16
Patent Owner Preliminary Response
• Reasons to file:
– Reliance on non-prior art
• The petitioner has the burden to establish that a reference is a
printed publication under 35 U.S.C. § 311(b). Cisco Sys., Inc. v.
Constellation Techs. L.L.C., IPR2014-01085, Paper 11 at 9
(PTAB Jan. 9, 2015)
• LG Elecs., Inc. v. Advanced Micro Devices, Inc., IPR2015-00329,
Paper 13 at 13 (PTAB July 10, 2015) (holding that date printed on
face of reference did not establish that it was published on that
date)
• Because institution decisions must be based on information in the
petition, deficiencies cannot be remedied later. Actavis, Inc. v.
Research Corp. Techs., Inc., IPR2014-01126, Paper 22 at 13
(PTAB Jan. 9, 2015) (citing 35 U.S.C. § 314(a))
17 17
Patent Owner Preliminary Response
• Reasons to file:
– The Board’s discretion to deny “follow-on” petitions
• Conopco, Inc. dba Unilever v. The Proctor & Gamble Co.,
IPR2014-00628, Paper 23 at 4-6 (March 20, 2013)
• Allowing petitioners to strategically unveil the best prior art and
arguments in serial petitions would tax Board resources and force
patent owners to defend multiple attacks
– No right of appeal of institution decisions
• 35 U.S.C. §319 - A party dissatisfied with a final written decision
may appeal
• St. Jude Medical, Cardiology Division, Inc. v. Volcano
Corporation, 749 F.3d 1373 (Fed. Cir. 2014)
18 18
Patent Owner Preliminary Response
• Reasons to consider not filing:
– High institution rate (~68%)
– No expert support allowed in Patent Owner preliminary
response
– Claim construction not final in institution decision
– Gives petitioner 5+month lead on your arguments
– Depose Petitioner’s expert without revealing theory of
case
19 19
Experts
• Consider testifying and consulting experts
• Deposition testimony is key
– Good witness is key due to role of depositions
• Retain experts early (even if not filing patent owner
preliminary response)
– Technical experts and commercial success experts
– Identify and engage technical expert early to vet
arguments for preliminary response
– Confer with in-house scientists to identify expert
candidates
20 20
Institution Decision
• Timing of institution is panel-dependent
• Scheduling order will issue with Institution Decision
• 10 days from Institution - file objections to evidence in
Petition (e.g., hearsay, authentication)
PO Preliminary
Response
Decision on
Petition
no more than 3 months
• 37 C.F.R. § 42.108 and 35 U.S.C. § 314
• Institution is discretionary
• Standard: “reasonable likelihood”
21 21
Patent Owner Response
• Respond to grounds of unpatentability in institution
decision with arguments, technical literature, and expert
declarations
• Provide claim construction positions if disagree with
PTAB
• Strengthen evidence of unexpected results with expert
declarations
• Establish commercial success and long-felt need with
expert declarations
• Antedate prior art if possible
22 22
Secondary Considerations
Obviousness is resolved based on factual determinations
including:
(1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and
the prior art;
(3) the level of skill in the art; and
(4) where in evidence, so-called secondary considerations.
See, e.g. IPR 2013-00004, Final Decision at 14 (citing
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).
Applied by PTAB in IPRs and CBMs:
23 23
Commercial Success
“Commercial success involves establishing success in the
marketplace of a product encompassed by the claims and a
nexus between the commercial product and the claimed
invention.”
(IPR2012-00006, Final Decision at 34; IPR2013-00097, Final
Decision at 45)
What is commercial success?
24 24
Commercial Success
“Commercial success is relevant because the law presumes
an idea would successfully have been brought to market
sooner, in response to market forces, had the idea been
obvious to persons skilled in the art.”
Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 395 F.3d
1364, 1376–77 (Fed. Cir. 2005)
Theory:
25 25
Legal Elements of Commercial Success
Commercial Success: patented product or process
has a substantial share of a definable market. See
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
Nexus: a legally and factually sufficient connection
between the success and the patented invention.
Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387 (Fed. Cir. 1988).
To date, the Board has rejected commercial success
arguments in almost every case in which the issue
was raised
26 26
Burden of Proof at PTAB
Original Claims:
In an IPR, the Petitioner has the burden to prove a
proposition of unpatentability by a preponderance of the
evidence. 35 U.S.C. § 316(e)
Motion to Amend:
For a motion to amend, the Patent Owner has the burden
to show entitlement to the relief requested. 37 C.F.R. §
42.20(c)
27 27
PTAB Timing
Patent Owners:
Argue commercial success in Preliminary Response?
No expert declarations allowed
Gives petitioner head start on attack
Patent Owner Response: only 3 months or less to
respond after institution
Start early: Consider commercial success soon after
receiving petition (before institution)
What experts needed?
What analysis needed to show market share and nexus?
Discovery needed? (own documents? public documents?
discovery from petitioner?)
28 28
Termination
• Termination of IPR proceedings
– 37 C.F.R. § 42.74(a) – The Board is not a party to settlement
and may independently determine any question of
patentability
– Board considers whether issues have been fully briefed (IPR
2013-00016)
• Appeal
– If party does not make, use, or sell the patented invention
there may be no standing to appeal inter partes
reexamination decision (Consumer Watchdog v. Wisconsin
Alumni Research Found., 753 F.3d 1258 (Fed. Cir. 2014))
29 29
Appeal
• Standard of Review:
– Factual findings are reviewed under the substantial evidence
standard of review
– Legal conclusions are reviewed de novo
– If you are successful at PTAB: focus on the facts and substantial
evidence supporting the Board’s final decision
– If you are unsuccessful at the PTAB: focus on the harmful legal
error in the Board’s final decision
• Affirmance rate
– Historically reverses less than 15% of cases originating from the PTO
– Rule 36 judgment is likely (from Feb 2015 – June 2015, eight out of ten
affirmances of IPRs/CBMs were Rule 36 judgments)
30 30
Speaker Information
Mike Flibbert is a partner is Finnegan’s Washington, DC office and chairs the firm’s chemical practice group. He represents clients in patent disputes before federal district courts and the Federal Circuit and also serves as lead counsel in IPR and other contested proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. He lectures frequently in the United States and abroad on patent law topics, including the America Invents Act (AIA).
31 31
Disclaimer
These materials have been prepared solely for educational and
entertainment purposes to contribute to the understanding of U.S.
intellectual property law. These materials reflect only the personal views of
the authors and are not individualized legal advice. It is understood that
each case is fact specific, and that the appropriate solution in any case will
vary. Therefore, these materials may or may not be relevant to any
particular situation. Thus, the authors, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han
Foreign Legal Affairs Law Firm) cannot be bound either philosophically or
as representatives of their various present and future clients to the
comments expressed in these materials. The presentation of these
materials does not establish any form of attorney-client relationship with
these authors. While every attempt was made to ensure that these
materials are accurate, errors or omissions may be contained therein, for
which any liability is disclaimed.
Commercial Success at the PTAB Strafford CLE Webinar
August 13, 2015
John C. Jarosz
33 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
Commercial Success – Economic Considerations
1) Is the product that embodies the patented invention a marketplace success?
2) Is the success of the product due to the patent (causal nexus)?
34 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
1) Product Success
a) Absolute Performance
b) Relative Performance
35 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
a) Absolute Performance
•Shipments
•Revenues
•Prices
•Costs
•Profits
36 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
b) Relative Performance
•Definition of market/competition
a)Product
b)Geographic
•Significance of market share
a)Over time
b)Versus Benchmark
37 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
a) Absolute Performance
38 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
a) Absolute Performance
Refill
Pe
rcen
tage
s
39 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
b) Relative Performance
Product 1
Product 2
Product 3
40 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
b) Relative Performance
Brand Product 1
Generic Product
Brand Product 2
41 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
b) Relative Performance
Shipments
Product 1
Product 2
Product 3
Product 4
Product 5
Product 6
42 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
2) Causal Nexus
a) Features/Advantages of Patent
b) Importance of Patented Features/Advantages
c) Importance of Non-Patented Features/Advantages
43 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
a) Features/Advantages of Patent
•Patent Claims
•Prior Art
•Technical Opinion
44 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
b) Importance of Patented Features/Advantages
•Internal Marketing Materials
•External Promotional Materials
•Industry Praise
•Company Testimony/Declarations
•Customer Testimony/Declarations
•Revealed Preferences
Party Actions
Licenses
Copying
•Consumer Studies/Surveys
Contemporaneous
Made for Litigation
45 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
b) Importance of Patented Features/Advantages
46 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
b) Importance of Patented Features/Advantages
47 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
b) Importance of Patented Features/Advantages
48 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
c) Importance of Non-Patented Features/Advantages
•Product Features
•Non-Product Features
Price
Promotion
Brand Name
Custom
49 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
c) Importance of Non-Patented Features/Advantages
50 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
51 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
PTAB Final Written Decisions September 2012 – April 2015
•80: Discussion of commercial success
•78: Inadequate proof of commercial success
•2: Adequate proof of commercial success
Intri-PlexTechnologies, Inc. and MMI Holdings, Ltd. v. Saint-Gobain Performance Plastics Rencol Limited,
IPR2014-00309, March 23, 2015
Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, June 30, 2014
52 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ AUGUST 13, 2015
PTAB Final Written Decisions September 2012 – April 2015
•80: Discussion of commercial success
•78: Inadequate proof of commercial success
•2: Adequate proof of commercial success
Intri-PlexTechnologies, Inc. and MMI Holdings, Ltd. v. Saint-Gobain Performance Plastics Rencol Limited,
IPR2014-00309, March 23, 2015
Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, June 30, 2014
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Strafford Webinar August 13, 2015
Maureen D. Queler
Defending Patents in IPR
Proceedings
54 54
Evidence
Patent Owner can readily introduce evidence of its
own commercial success (IPR2013-00333, Paper 30)
When would Patent Owner need discovery?
− Petitioner is an alleged infringer whose sales would show
commercial success
• IPR2014-00367: Petitioner sold parts to Whirlpool. Patent Owner
alleged that parts fell within claims and that Petitioner’s sales were
substantial
− Patent Owner’s claimed invention is a component of
Petitioner’s product
55 55
Routine Discovery
Routine Discovery
Exhibits cited in paper or testimony
Inconsistent positions (file with document with
inconsistency) (e.g., claim constructions from litigation)
Cross-examination of declarant
56 56
Additional Discovery
Not Part of Routine Discovery: Petitioner need not produce evidence of commercial success as
relevant information inconsistent with positions advanced in Petition
(IPR2013-00333, Paper 30)
Additional Discovery: Interest of justice standard. See 35 U.S.C.§316(a)(5)(B)
Garmin factors (IPR2012-00001, Paper 20 at 2-3)
– (1) more than possibility that useful information will be discovered;
– (2) not seeking litigation positions;
– (3) information not available through other means;
– (4) easily understandable instructions; and
– (5) not overly burdensome to answer.
57 57
Discovery
(1) more than possibility that useful information will be
discovered
“favorable in substantive value to a contention of the
moving party.”
Commercial Success:
− As practical matter, need well-developed commercial success
position to obtain any discovery
− IPR2014-00367, Paper 20
• To obtain sales data from Petitioner, Patent Owner had to
show some evidence of significant sales in relevant market
• To obtain evidence regarding Petitioner’s product, Patent
Owner had to show some evidence that product met claims
58 58
Discovery
(1) more than possibility that useful information will be
discovered
Real Party-in-Interest
− 77 Fed. Reg. 48,760: funding and control of IPR petition, non-
party’s relationship with the petitioner, relation to petition, degree
of involvement in filing
− Threshold amount of evidence or reasoning needed to show that
discovery is in the interests of justice.
• Evidence of existing indemnity agreement?
• Evidence from district court of relationship between non-
party and Petitioner?
59 59
Evidence
37 C.F.R. § 42.62
The Federal Rules of Evidence applies to IPR proceedings
Authentication (FRE 901): proponent must produce evidence sufficient to
support a finding that the item is what the proponent claims it is.
Hearsay (FRE 801-803): prohibits out-of-court statements from being
offered to prove the truth of the matter asserted
60 60
Evidence-Considerations
What evidence are you submitting?
Who can authenticate that evidence?
− Any self-authenticating evidence? (FRE 902) (periodicals,
newspapers, public records)
Any hearsay statements within that evidence?
− Are they being relied upon for the truth of the matter asserted?
− Can you submit a declaration from the speaker?
− Litigation v. IPR: fewer depositions in IPR proceedings; may
cause more authentication/hearsay disputes
61 61
Evidence-Commercial Success
Market share data:
− Declaration by custodian or person that generated data to
authenticate the data
− Declaration by expert analyzing that data
− Can expert analyzing the data do both?
Statements of physicians on nexus for drug patent
− Could be hearsay unless submitted as part of declaration
− An authentic document (newspaper) may still have hearsay
issues (out-of-court statement by physician praising drug)
62 62
Evidence-Antedating
Authentication v. Corroboration
− Authentication: Witness having personal knowledge of the
document can be sufficient to support document’s authenticity.
FRE 901(a)
− Corroboration: proof of conception must be made by evidence
corroborating inventor’s testimony. Coleman v. Dines, 754 F.2d
353, 359 (Fed. Cir. 1985).
− Inventor cannot authenticate documents intended to corroborate
testimony. Avoids “circular” situations.
− Chen v. Bouchard, 347 F.3d 1299, 1308 (Fed. Cir. 2003);
IPR2013-00578 (Paper 52)
Hearsay v. Corroboration
− Do statements only have corroborating value if they are true?
Then they are hearsay. IPR2013-00578 (Paper 52)
63 63
Evidentiary Objections
37 C.F.R. § 42.64
(b) Other evidence. For evidence other than deposition evidence:
(1) Objection. Any objection to evidence submitted during a
preliminary proceeding must be served within ten business days of
the institution of the trial. Once a trial has been instituted, any
objection must be served within five business days of service of
evidence to which the objection is directed. The objection must
identify the grounds for the objection with sufficient particularity to
allow correction in the form of supplemental evidence.
64 64
Schedule of Proceedings
Objections to Petition Evidence (10 days) Objections to Evidence (5 days)
65 65
Evidentiary Objections / Motion to Exclude
• Timing
– Objections: 10 business days after institution of trial for preliminary
proceeding or 5 business after evidence served
– Supplemental evidence: 10 business days after objection
– Board encourages parties to try to work through issues
– Motion to exclude: Set time in schedule, prior authorization not
necessary
• Not for credibility, weight of expert testimony, or
outside of scope
• Must have basis for objection in Federal Rules of
Evidence
66 66
Printed Publication
• Distinct sufficiency of evidence and authentication issues
• Sufficiency: did the Patent Owner submit sufficient evidence
to show that this prior art was a printed publication before
the patent’s critical date?
– Raise this issue in substantive papers (Preliminary Response)
• Authentication: is there evidence that this document is what
it purports to be?
– Raise this issue in objections / motion to exclude
– Webpage printout relied on for the contents: “[t]o authenticate
printouts from a website, the party proffering the evidence must
produce some statement or affidavit from someone with knowledge
of the website . . . a web master or someone else with personal
knowledge would be sufficient.” IPR2013-00084 (Paper 64)
67 67
Patent Owner’s Motion to Amend
• Include on Motions List
• Conference call with the Board is required before filing
No need to identify full claim set
Outline proposed claim substitutions, acknowledge guidelines, ask
for guidance as necessary
• Exemplary Guidelines:
IPR2012-00005, Paper 27 (Nichia)
IPR2013-00027, Paper 26 (Idle Free)
IPR2015-00040, Paper 42 (MasterImage)
• 37 C.F.R. § 42.121: A patent owner may file one motion to
amend a patent, but only after conferring with the Board.
− Additional motions to amend may only be filed with authorization.
68 68
Patent Owner’s Motion to Amend
• High bar: IPRs are not an examination; Patent Owner has
burden to prove patentability
Finnegan achieved grant of only the fourth Motion to Amend to be
granted by the PTAB ever. (REG v. Neste Oil, IPR2014-00192)
69 69
Patent Owner’s Motion to Amend
• Distinguish over prior art
Idle Free Systems (IPR2012-00027 Paper 26): patent owner to
show patentable distinction over the prior art of record and also
prior art known to the patent owner
MasterImage 3D, Inc. (IPR2015-00040 Paper 42) further clarified
this decision
Prior art of record:
• any material art in the prosecution history of the patent;
• any material art of record in the current proceeding, including art
asserted in grounds on which the Board did not institute review;
and
• any material art of record in any other proceeding before the
Office involving the patent.
Prior art known: material prior art made of record pursuant to
duty of candor and good faith. 37 C.F.R § 42.11.
70 70
Patent Owner’s Motion to Amend
• Identify section 112 written description support
• Provide claim construction support
• Consider intervening rights and patent term extension
implications
71 71
Patent Owner’s Motion to Amend
• Only a reasonable number of substitute claims
• Amendments must be responsive to ground of unpatentability
• Claims must include / narrow the challenged claims
• Remodeling of claims- purview of reexamination/reissue
• Contingency
Contingent: if the claims were found patentable the motion would be
denied as the contingency would not have come to pass.
Not Contingent: if the claims were found patentable the Board could
still decide to address the motion and amend or add new claims.
72 72
Confidentiality / Protective Orders
• Standard protective order
– 77 Fed. Reg. 48771 (“Default Protective Order”)
– Changes must be redlined compared to this default
• Broadly written to encompass any employee of either party,
who signs agreement
– Do not try a litigation-based PO
• Acknowledgement
– Party Representatives (aka “us”) need to sign
– Expert Acknowledgement requires more
– execute but not filed or served?
• Protective order expires 45 days after decision
73 73
Confidentiality / Protective Orders
• Address at Initial Conference (Board may ask)
• Address when comes up (e.g., at deposition)
• Motion to Seal
– File a motion to seal with protective order
– Explain why the information is confidential.
– File redacted/public copy of document
– Filing cross-examination testimony, may need other
party to provide you with reason (ask them to prepare
the papers)
74 74
Finnegan Resources
• AIA blog: http://www.aiablog.com/
• Federal Circuit IP Blog: federalcircuitipblog.com
• http://www.finnegan.com/publications/updatenewsl
etters/
– Full Disclosure Patent Newsletter
– IP Marketplace Newsletter
75 75
Speaker Information
Maureen Queler practices all aspects of patent-related work in the chemical and pharmaceutical areas, including client counseling, patent prosecution, post-grant proceedings, and U.S. district court and appellate litigation. She represents clients in IPR and other contested proceedings before the PTAB. She also has an active patent prosecution and counseling practice, preparing and prosecuting U.S. patent applications on behalf of domestic and foreign clients.
76 76
Disclaimer
These materials have been prepared solely for educational and
entertainment purposes to contribute to the understanding of U.S.
intellectual property law. These materials reflect only the personal views of
the authors and are not individualized legal advice. It is understood that
each case is fact specific, and that the appropriate solution in any case will
vary. Therefore, these materials may or may not be relevant to any
particular situation. Thus, the authors, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han
Foreign Legal Affairs Law Firm) cannot be bound either philosophically or
as representatives of their various present and future clients to the
comments expressed in these materials. The presentation of these
materials does not establish any form of attorney-client relationship with
these authors. While every attempt was made to ensure that these
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