PTAB: SUCCESSBY THE NUMBERSJohn T. Callahan - Shareholder

Andrew P. Ritter - Associate

Sughrue Mion, PLLC

December 2015

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Focus of Webinar

• Provide a review of key aspects of successful practice before the PTAB – what do the statistics show and what does the PTAB require from a petitioner and patent owner

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Outline of Webinar• IPR Statistics – Slides 4-7

• Points to Consider from Petitioner's Perspective – Slide 8

• Preparing a Petition – Slides 9 & 10

• Real Party in Interest – Slide 11

• Expert Testimony and Declarations – Slides 12 & 13

• Notification of IPR Petition(s) and/or Other Proceedings – Slide 14

• Points to Consider from Patent Owner's Perspective –Slide 15

• Patent Owner's Preliminary Response – Slide 16

• Patent Owner's Amendment – Slides 17-20

• Settlement – Slide 21

• General Overview of IPR Proceedings – Slide 22

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IPR Statistics

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Statistics taken from the USPTO

as of December 8, 2015 -

http://www.uspto.gov/patents-

application-process/appealing-

patent-decisions/statistics/aia-

trial-statistics

IPR Statistics

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Statistics taken from the USPTO

as of December 8, 2015 -

http://www.uspto.gov/patents-

application-process/appealing-

patent-decisions/statistics/aia-

trial-statistics

IPR Statistics

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Statistics taken

from the USPTO

as of December 8,

2015 -

http://www.uspto.g

ov/patents-

application-

process/appealing

-patent-

decisions/statistic

s/aia-trial-statistics

IPR Statistics

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Statistics taken

from the Court of

Appeals for the

Federal Circuit as

of December 8,

2015 -

http://www.cafc.usc

ourts.gov/the-

court/statistics

Petitioner's Perspective

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Points to Consider When Preparing a Petition

• Petition is limited to 60 pages (37 C.F.R. § 42.24(a)(1)(i))

• Page limitation does not include appendices

• When filing a petition, do not overwhelm the PTAB with too many grounds of unpatentability and prior art references

• See e.g., Zetec, Inc. v. Westinghouse Elec. Co., LLC, IPR2014-00384 (Paper No. 10) – Numerous grounds of unpatentability had "underdeveloped arguments" and "would place a significant burden on the Board" to evaluate the petition (petition denied)

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Points to Consider When Preparing a Petition (cont.)

• Present strongest arguments first and disregard weak arguments if they will confuse or weaken strong arguments

• See e.g., Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001 (Paper No. 59) – petition limited to two separate combinations of art (petition granted)

• Do not include arguments in claim charts

• Claim charts should be limited to an element-by-element comparison based only on the disclosure of the prior art. VMWare, Inc. v. Electronics and Telecommunications Research Institute, IPR2014-00901 (Paper No. 7) – claim charts should not include explanations, characterizations, conclusions, or inferences drawn from references

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Real Party in Interest

• The Petition must identify "all real parties in interest." 35 U.S.C. § 312(a)(2).

• Definition of a real party in interest

• "Existence of a financially controlling interest in the petitioner…; the

nonparty’s relationship with the petitioner; the nonparty’s relationship to

the petition itself, including the nature and/or degree of involvement in

the filing; and the nature of the entity filing the petition.” Zoll Lifecor

Corp. v. Philips Elecs. N. Amer. Corp. & Koninklijke Philips Elecs. N.V.,

IPR2013-00606 (Paper No. 13) (denied motion to institute)

• Failure to identify real parties in interest can result in the institution of the IPR being denied or termination of the IPR proceeding. See, Atlanta Gas Light Co. v. Bennett Regulator Guards Inc., IPR2013-00453 (Paper No. 88) – IPR proceeding terminated after it was determined that petitioner failed to properly identify all real parties in interest

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Expert Testimony and Declarations

• Expert testimony can be crucial in providing PTAB evidence on which to rely when deciding a petition• Expert testimony is not required and PTAB has deference in

interpreting patentability of claims. See, Belden Inc. v. Berk-Tek LLC, 2014-1575, -1576 (Fed. Cir. November 5, 2015)

• In granting institution of IPR, PTAB relied on expert declaration as evidence that prior art inherently disclosed a prior art limitation. See e.g., Motorola Solutions, Inc. v. Mobile Scanning Technologies, LLC, IPR2013-00093 (Paper 61) – expert declaration provided as evidence that certain components are necessary for a scanner to operate and are therefore inherent in the prior art's disclosure

• Avoid conclusory statements without underlying facts• Expert declaration should provide corroborating evidence to support

expert's opinion, otherwise evidence given little weight. See e.g., General Electric v. Tas Energy, IPR2014-00163 (Paper 11) –conclusory statements in expert declaration unsupported by evidence were unpersuasive

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Expert Testimony and Declarations (cont.)• Establish a clear rationale in the declaration to modify a

reference• Failure to establish a clear rationale for modifying a reference to meet

a claim limitation may result in the PTAB denying institution of IPR. See e.g., Wright Medical Technology, Inc. v. Orthophoenix, LLC, IPR2014-00912 (Paper 9) – expert declaration failed to provide enough evidence for why it would have been obvious to use a cutting tool disclosed in a reference to cut cancellous bone

• Provide sufficient discussion of expert's arguments from the declaration in the petition• Arguments cannot be incorporated by reference from one document to

another (37 C.F.R. § 42.6(a)(3))

• PTAB may not consider arguments from a declaration if not sufficiently described in the petition. See e.g., Tempur Sealy International Inc. v. Select Comfort Corporation, IPR2014-01419 (Paper 1) – failure to include arguments from expert declaration in the petition not cured by referencing the relevant portions of the expert declarations in the petition (petition denied)

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Notification of IPR Petition(s) and/or Judicial Proceedings

• Petitioner is required to disclose all litigation and USPTO proceedings involving the patent that is the subject of the IPR

• Failure to comply with this requirement can result in the petition for the IPR being denied

• See, 35 U.S.C. § 312(a)(4); 37 C.F.R. § 42.8(b)(2); Apple

Inc. v. ContentGuard Holdings, Inc., IPR 2015-00356(Paper No. 9)

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Patent Owner's Perspective

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Patent Owner's Preliminary Response

• Patent Owner has three months to file an optional Patent Owner's Preliminary Response (37 C.F.R. § 41.107(b))

• Patent Owner's Preliminary Response gives patent owners on opportunity to argue a particular claim construction prior to institution of the IPR

• Patent Owner's Preliminary Response can help point out deficiencies in the petition

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Patent Owner's Amendment

• Amendment allowed by statute (37 U.S.C. § 316(d)), but PTAB often denies motions to amend the claims

• Burden is on Patent Owner to establish, by a preponderance of the evidence, that the proposed substitute claims are patentable over the known prior art. See, Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (Paper 26) – PTAB granted motion to amend some of the claims

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Patent Owner's Amendment (cont.)• Requirements to Successfully Amend

• Timing and PTAB Conference Requirement

• Motion to amend must be filed no later than filing of patent owner's

response, unless due date is provided in PTAB order (37 C.F.R. § 42.121(a))

• Must confer with the PTAB before filing motion to amend

(37 C.F.R. § 42.121(a))

• Failure to confer with PTAB can cause motion to be denied. See e.g., Idle

Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (Paper 26)

• A claim listing showing clearly the changes to the claims(37 C.F.R. § 42.121(b))

• One substitute claim per original patent claim, on a claim-by-claim basis (37 C.F.R. § 42.121(a)(3))

• A discussion of where support for the changes are found in the patent

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Patent Owner's Amendment (cont.)

• Successful Claim Amendments Should Demonstrate the Following

• Claim scope is not broadened

• Proposed amendment cannot enlarge the scope of the claims or introduce

new subject matter (37 C.F.R. § 42.121(a)(2))

• A substitute claim having all the limitations of the original claim and added additional limitations did not enlarge the claim scope. See, Riverbed Tech., Inc. v. Silver Peak Sys., Inc., IPR2013-00402 (Paper No. 35)

• Written description support for claim(s)

• Must show (1) support in original disclosure of the patent; and (2) support in

an earlier-filed disclosure for which benefit of the filing date of the filing date is

sought (37 C.F.R. § 42.121(b))

• Merely indicating where each claim limitation is individually described may not

be sufficient. Patent Owner must explain why one skilled in the art would

have recognized that the inventor possessed the claimed subject matter as a

whole. Nichia Corp. v. Emcore Corp., IPR2012-00005 (Paper No. 27)

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Patent Owner's Amendment (cont.)

• Successful Claim Amendments Should Demonstrate the Following

• Patentable distinction of the proposed substitute claim over the prior art (37 C.F.R. § 42.20(c))• Identify the specific features which are added to each substitute claim and

identify the technical facts and reasoning about those feature(s) to persuade PTAB that the proposed substitute claim is patentable over the prior art. Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (Paper No. 26) -PTAB granted motion to amend some of the claims

• The PTAB has found that a table showing the new claims and proposed construction helpful. See, Riverbed Tech., Inc. v. Silver Peak Sys., Inc. IPR2013-00402 (Paper No. 35) – motion to amend claims granted

• Distinguish over all prior art that is known to Patent Owner• Must show patentability over prior art of record and any prior art not of

record but known to the Patent Owner. See, Masterimage 3D Inc. v. RealD Inc., IPR2015-00040 (Paper 42)

• No prior art search necessary. However, a prior art search and expert declaration testifying that the prior art found in the search is the closest prior art may aid in demonstrating patentability (PTAB AIA Trial Roundtable, Part I (April 15, 2014))

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Settlement

• Settlement is a key aspect of IPRs

• Parties are allowed to settle a case, but the PTAB has authority to prevent a settlement if the Office has decided the merits of the proceeding before the formal termination of the proceedings has been issued (35 § U.S.C. 317)

• PTAB decisions have held that a final written decision need not be issued for the Office to have "decided on the merits of the proceeding"

• See e.g., Blackberry Corp., et al. v. Mobilemedia Ideas, LLC, IPR2013-00016 (Paper No. 31) – joint motion to terminate the proceeding denied

because the proceeding had reached an advanced stage, including

patent owner's response, petitioner's reply, and an oral hearing had been held

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General Overview of IPR Proceedings

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Taken from the Office Patent Trial Patent Guide, 77 FR 48756

as of December 8, 2015

Questions?

Thank you.

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Disclaimer

• These materials have been prepared solely for educational and entertainment purposes. These materials reflect only the personal views of the speaker 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, Sughrue Mion, PLLC and the speaker cannot be bound as representatives of their various present and future clients to the comments expressed in these materials.

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