ACI’s 9th Annual Paragraph IV Disputes
PTO Proceedings Retrospect:
Exploring the Growing Use of IPR, PGR and
CBM review in Hatch-Waxman Litigation
April 27, 2015
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Tweeting about this conference?
#ParagraphIV
Speakers
Laura A. Lydigsen
Shareholder and Co-Chair,
Appellate Practice Group
Brinks Gilson & Lione
Gregory A. Morris
Of Counsel
Paul Hastings LLP
Irena Royzman
Partner
Patterson Belknap Webb &
Tyler
Martin B. Pavane
Member and Vice-Chair, IP Department;
Co-Chair, ANDA and Biologics
Cozen O'Connor
Paul Ragusa
\ Partner
Baker Botts, LLP
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#ParagraphIV
PTAB Petitions for Orange Book Patents Statistics
Year
IPR (Listed/Total)
CBM (Listed/Total)
PGR
(Listed/Total)
2012
3/94 (3.2%)
0/15
0
2013
9/695 (1.3%)
0/89
0
2014
42/1495 (1.7%)
6/173
1/3
2015
(4/15)
25/446 (5.6%)
0/38
0/2
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#ParagraphIV
PTAB Petitions for Orange Book Patents Statistics (Continued).
• Grounds for challenge:
• Obviousness (~90%)
• Anticipation (~35%)
• Types of claims challenged:
• Formulation (~80%)
• Method of Treatment (>50%)
• Compound (~15%)
• IPRs as Tool for Hedge Funds
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#ParagraphIV
Agenda
• Initial IPR Considerations
• Laura A. Lydigsen
• Claim Construction and Instituting Trial
•
Irena Royzman
• Lessons Learned After The First IPR Final Written
Decisions
• Gregory A. Morris
• PTAB Trial Practice
•
Martin B. Pavane
• IPR Appeals
•
Laura A. Lydigsen
• PGRs & CBMs
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• Paul Ragusa
#ParagraphIV
Initial IPR
Considerations
Laura Lydigsen
Shareholder, Brinks, Gilson & Lione
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#ParagraphIV
Initial Considerations: Advantages of PTAB
Patent Challenges
• Lower burden of proof for invalidity
• PTAB: preponderance of the evidence, 35 U.S.C.
§ § 316(e) (IPR), 326(e) (PGR/CBMPR)
• District Court: clear and convincing evidence
• Claim construction standard
• PTAB: Broadest reasonable interpretation (BRI), 37
C.F.R. § § 4.2100(b), 200(b), 300(b); In re Cuozzo
Speed Techs., LLC., _ F.3d _, 2015 WL 448667 (Fed.
Cir. Feb. 4, 2015)
• District Court: ordinary meaning at the time of
invention. Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc)
#ParagraphIV
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Initial Considerations: Advantages of PTAB
Patent Challenges Cont’d
• Time to decision
• PTAB: 18 months, extendable to 24 months after filing of petition. 35
U.S.C. § 3.14(b); 37 C.F.R. § 42.100(c)
• District court: ~2.5 years (source:
http://www.pwc.com/en_US/us/forensicservices/publications/assets/2014-patent-litigation-study.pdf)
• Grounds
• PTAB:
• IPR: anticipation and obviousness based on printed publications. 35
U.S.C. § 311(b).
• CBM/PGR:
• Any grounds that is a condition for patentability. 35 U.S.C. §
321(b); 37 C.F.R. § 304(b)(2)
• PGR: Important new or unsettled legal questions. 37 C.F.R. §
42.208(d).
• District Court: Any grounds that is a condition for patentability. 35 U.S.C.
§ 282.
#ParagraphIV
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Initial Considerations: Orange Book Patents
• Prior decision upholding validity of OB patents
• Teva v. Viiv, IPR2015-00550 (filed Jan. 8, 2015)
(challenging OB patent for Trizavir®/abacavir
sulfate+doutegravir sodium+vamivudine that is the
subject to Fed. Cir. Appeal Nos. 14-1303, -1304, -1315)
• Noven v. Novartis, IPR2014-00549, -550 (filed Apr. 2,
2014) (IPR instituting on two OB patents for Exelon®
patch/rivastigmine extended release transdermal, one of
which was instituted notwithstanding brand argument
that D.Del. “has upheld the validity of the ‘023 patent
over many of the same references raised”)
• Manageable number of OB patents
• But see: Amneal v. Jazz (challenging some of 15 OB patents listed
for Xyrem®/sodium oxybate)
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#ParagraphIV
Initial Considerations: Orange Book Patents
Cont’d
• Non-FTF status
• Consider pre-suit PTAB challenge
• Late second filer option
• Multi-defendant litigation
• Best known prior art already before the USPTO
• Complex technology/validity arguments
• Strong secondary considerations evidence
• Potentially weak validity defense
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#ParagraphIV
Initial Considerations: Timing
• Time restrictions on filing at the PTAB
• IPR: 1 year or less after petitioner served with
infringement complaint. 35 U.S.C. § 315(b). Includes
counterclaims. St. Jude Medical v. Volcano Corp.,
749 F.3d 1373 (Fed. Cir. 2014).
• CBM: Can file any time after 9 months from patent
issuance. 37 CFR § 42.303.
• PGR: Must be filed 9 months or less after issuance of
patent or broadening reissue patent. 35 U.S.C. §
321(c).
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#ParagraphIV
Initial Considerations: Timing (Cont’d)
• Joinder exception to the 1-year rule
• “The [1-year] time limitation set forth in the preceding
sentence shall not apply to a request for joinder under
subsection (c).”
• Joinder must be sought “no later than one month after
the institution date of any inter partes review for which
joinder is requested.” 37 C.F.R. § 42.122(b)
• Teva v. ViiV, IPR IPR2015-00550 (filed Jan. 8, 2015,
pending): Teva seeks to join IPR filed by Apotex that
was instituted on Dec. 8, 2014 (Trizavir®/abacavir
sulfate+doutegravir sodium+vamivudine)
• Amneal v. Endo, IPR2014-1365 (filed Aug. 22, 2014,
joinder granted Feb. 4, 2015): Amneal permitted to
join its own prior IPR (Opana ER®/oxymorphone)
#ParagraphIV
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Claim Construction and
Grounds for
Instituting IPR
Irena Royzman, J.D., Ph.D.
Partner
Patterson Belknap Webb & Tyler LLP
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#ParagraphIV
BRI v. Phillips: A Tale of Two Standards
Prosecution
History
Claim Language
Specification
PTAB (unexpired patents)
Broadest Reasonable
Interpretation
37 C.F.R. §42.100(b)
Extrinsic Evidence
District Courts
PTAB (expired patents)
Ordinary & Customary Meaning
#ParagraphIV
Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc)
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BRI v. Phillips: An Academic Concern?
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#ParagraphIV
BRI v. Phillips: An Academic Concern?
BRI
Phillips
“The broadest reasonable interpretation of a claim term
may be the same as or broader than the construction of a
term under the Phillips standard. But it cannot be
narrower.”
Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed.
Appx. 864, 869 (Fed. Cir. 2014)
#ParagraphIV
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BRI v. Phillips: Two Bites at the
The Federal Circuit also addressed the corresponding
method claim 4 of the ’149 Patent, but split in a 2-1 decision
in which the majority interpreted the claim more narrowly
than the dissent and found it not invalid. However, when
interpreted under the broadest reasonable interpretation
standard applicable in inter partes review proceedings,
claim 4 would have been obvious for the same reasons as
the composition claims of the ’463 Patent.
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Ferrum Ferro Capital, LLC v. Allergan Sales, LLC,
IPR2015-00858, Petition at 3 (March 9, 2015)
#ParagraphIV
BRI v. Phillips: In re Cuozzo
Panel Majority (Dyk and Clevenger)
• BRI has been used in PTO proceedings for over 100 years.
•
Claims can be amended during IPR.
•
AIA vests PTO with power to prescribe regulations.
Dissent (Newman)
•
Phillips should be the standard in IPRs same as in district court.
•
IPRs are a “surrogate” for district court litigation over validity.
•
No unfettered ability to amend claims in IPR.
In re Cuozzo Speed Techs., LLC., 778 F.3d 1271
(Fed. Cir. 2015)
#ParagraphIV
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BRI v. Phillips: In re Cuozzo
Dissent (Newman):
• “[BRI] serves not to state the correct meaning of
the claim, but to provide a framework for
clarification and amendment.”
• “Adoption of a broadest interpretation renders
the PTAB rulings legally unreliable ….”
• “PTAB tribunals cannot serve as a surrogate for
district court litigation if the PTAB does not apply
the same law to the same evidence.”
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In re Cuozzo Speed Techs., LLC., 778 F.3d 1271 (Fed. Cir. 2015)
#ParagraphIV
BRI v. Phillips: In re Cuozzo
• Cuozzo filed a petition for rehearing en banc on whether BRI is
appropriate in IPR and whether there is judicial review of PTAB’s
decision to institute IPR on appeal of a final decision.
• Amici IPO, PhRMA, and 3M Company et al. urged en banc review
and adoption of Phillips standard.
• NYIPLA urged en banc review of both issues raised by Cuozzo’s
petition.
• Rehearing en banc?
• SCOTUS?
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#ParagraphIV
Grounds for
Instituting IPR
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#ParagraphIV
Grounds for Instituting IPR: In re Cuozzo
Panel Majority (Dyk and Clevenger):
• PTAB’s institution of IPR of claims based on
references not identified in the petition for those
claims is not reviewable even after final decision.
• “The fact that the petition was defective is
irrelevant because a proper petition could have
been drafted.”
• “The failure to cite those references in the
petition provides no ground for setting aside the
final decision.”
In re Cuozzo Speed Techs., LLC., 778 F.3d 1271 (Fed. Cir. 2015)
#ParagraphIV
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Grounds for Instituting IPR: In re Cuozzo
Panel Majority (Dyk and Clevenger):
• “It is not clear that IPR is strictly limited to
grounds asserted in the petition.”
• “[M]andamus may be available to challenge the
PTO’s decision to grant a petition to institute IPR
after the Board’s final decision ….”
• “[W]e did not decide the question of whether
the decision to institute review is reviewable by
mandamus after the Board issues a final decision
….”
In re Cuozzo Speed Techs., LLC., 778 F.3d 1271 (Fed. Cir. 2015)
#ParagraphIV
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Grounds for Instituting IPR: In re Cuozzo
Dissent (Newman):
• “[T]he PTAB decision relies on arguments and
evidence that had not been raised in the
petition to institute, although the statute
requires that all arguments and evidence must
be presented in the petition.”
• “The panel majority holds that ‘[t]he fact that
the petition was defective is irrelevant because
a proper petition could have been drafted.’ Such
broad and conflicting departure from the
statutory provisions cannot have been
intended.”
In re Cuozzo Speed Techs., LLC., 778 F.3d 1271 (Fed. Cir. 2015)
#ParagraphIV
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Role of PTAB: Examiners or Judges?
or
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#ParagraphIV
Role of PTAB: Examiners or Judges?
“An inter partes review is neither a patent
examination nor a patent reexamination.
Rather, it is a trial, adjudicatory in nature and
constitutes litigation.”
Google Inc. & Apple Inc. v. Jongerius Panoramic
Technologies, LLC, IPR2013-00191, Decision at 4
(February 13, 2014)
#ParagraphIV
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Role of PTAB: Referee or Player?
or
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#ParagraphIV
Lessons Learned
• Argue claim construction in Patent Owner Preliminary Response.
• Continue to argue claim construction. It may change through final
decision.
• Argue claim construction under both BRI and Phillips.
• Stay flexible. Present evidence under alternative claim constructions.
• Make use of existing testimony, claim construction and admissions
from district court proceedings.
• Point out differences between grounds in petition and decision to
institute IPR.
• Mandamus to challenge decision to institute IPR after PTAB issues a
final decision?
#ParagraphIV
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Lessons Learned After the First
IPR Final Written Decisions
Gregory Morris, J.D., Ph.D.
Of Counsel
Paul Hastings
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#ParagraphIV
IPRs on OB Patents by the Numbers
106
4 FWDs
7 Settled
Petitions filed
81
14
Pending at
some stage
Not instituted
13
Filed by hedge
funds
#ParagraphIV
The First Four Data Points
1 Amneal v.
Supernus
IPR2013-00368 Dec. 9, 2014
Oracea
2 Amneal v.
Supernus
IPR2013-00371 Dec. 9, 2014
Oracea
3 Amneal v.
Supernus
IPR2013-00372 Dec. 9, 2014
Oracea
4 Apotex v.
Wyeth
IPR2014-00115 Apr. 20, 2015
Tygacil
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#ParagraphIV
Amneal v. Supernus
Three OB patents
challenged:
• 8,206,740 (Chang II)
• 8,394,405 (Chang III)
• 8,394,406 (Chang IV)
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IPR2013-00368
IPR2013-00371
IPR2013-00372
#ParagraphIV
Amneal v. Supernus
F
F
Amneal
Files
Petition
June
2013
F D
PO
Preliminary
Response
Sept.
2013
E
P
E
P
A
Amneal’s
Petition
Granted
PO Response
Dec.
2013
March
2014
PO
Discovery
Period
D
Amneal
Files
Reply to
PO Response
May
2014
Amneal’s
Discovery
Period
Oral
Hearing
Aug.
2014
Final
Written
Decision
Dec.
2014
PO
Discovery
Period
33
#ParagraphIV
Amneal v. Supernus
Challenged claims of all three patents
found not invalid after FWD
F
F
Amneal
Files
Petition
June
2013
F D
PO
Preliminary
Response
Sept.
2013
E
P
E
P
A
Amneal’s
Petition
Granted
PO Response
Dec.
2013
March
2014
PO
Discovery
Period
D
Amneal
Files
Reply to
PO Response
May
2014
Amneal’s
Discovery
Period
Oral
Hearing
Aug.
2014
Final
Written
Decision
Dec.
2014
PO
Discovery
Period
34
#ParagraphIV
Amneal v. Supernus
No appeal
F
F
Amneal
Files
Petition
June
2013
F D
PO
Preliminary
Response
Sept.
2013
E
P
E
P
A
Amneal’s
Petition
Granted
PO Response
Dec.
2013
March
2014
PO
Discovery
Period
D
Amneal
Files
Reply to
PO Response
May
2014
Amneal’s
Discovery
Period
Oral
Hearing
Aug.
2014
Final
Written
Decision
Dec.
2014
PO
Discovery
Period
35
#ParagraphIV
Apotex v. Wyeth
OB patent challenged:
• 7,879,828
36
IPR2014-00115
#ParagraphIV
Apotex v. Wyeth
C
C
F
E
A
Apotex
Files
Petition
Apotex’s
Petition
Granted
PO Response
Nov.
2013
Apr.
2013
July
2014
PO
Discovery
Period
Apotex
Files
Reply to
PO Response
Nov.
2014
Oral
Hearing
Jan.
2015
Final
Written
Decision
Apr.
2015
Apotex’s
Discovery
Period
37
#ParagraphIV
Apotex v. Wyeth
Challenged claims found not invalid after FWD
C
C
F
E
A
Apotex
Files
Petition
Apotex’s
Petition
Granted
PO Response
Nov.
2013
Apr.
2013
July
2014
PO
Discovery
Period
Apotex
Files
Reply to
PO Response
Nov.
2014
Oral
Hearing
Jan.
2015
Final
Written
Decision
Apr.
2015
Apotex’s
Discovery
Period
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#ParagraphIV
Apotex v. Wyeth
PTAB: “Dr. Nelson’s unsupported and unexplained
opinions are not persuasive.”
C
C
F
E
A
Apotex
Files
Petition
Apotex’s
Petition
Granted
PO Response
Nov.
2013
Apr.
2013
July
2014
PO
Discovery
Period
Apotex
Files
Reply to
PO Response
Nov.
2014
Oral
Hearing
Jan.
2015
Final
Written
Decision
Apr.
2015
Apotex’s
Discovery
Period
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#ParagraphIV
Lessons Learned
• Branded pharmaceutical patents, even
formulation patents, can be successfully
defended before the PTAB
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#ParagraphIV
Lessons Learned
• Interpretation of the facts by experts is critical
• Carefully select experts whom PTAB will credit and
prepare declarations addressing in detail how a POSA
would view the cited art
• Cross-examine opposing experts in depositions in
same manner as at a trial because they won’t testify
live
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#ParagraphIV
Lessons Learned
• Use clear and persuasive demonstratives that
cite to the record to drive your points home
before the PTAB at oral argument
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#ParagraphIV
Lessons Learned
• Use clear and persuasive demonstratives that cite to
the record to drive your points home before the PTAB
at oral argument
• KNOW YOUR RECORD COLD!
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#ParagraphIV
Practice Before the
Patent Trial and
Appeal Board
Presented By:
Martin B. Pavane
Cozen O'Connor
Vice Chair, Intellectual Property Department
Co-Chair, ANDA and Biologics Practice Group
277 Park Avenue | New York, NY 10172
P: 212.883.4994 | F: 646-588-1478
mpavane@cozen.com
• Process begins with a third party filing a petition within 9 months after the
grant of the patent or reissue patent
• Other than for business method patents, post-grant review is available only
for patents that have a priority date later than March 15, 2013
• Any ground of invalidity may be asserted. Not limited to 35 U.S.C. §§ 102
or 103 or prior art patents and printed publications
• Petitioner cannot file if it has initiated a litigation
• Requester showing that it is more likely than not that at least one
challenged claim is unpatentable
• Entitled to “routine” discovery; additional discovery if agreed to, or
requested and granted by the Board; additional discovery must be “for good
cause”
• If the proceeding is instituted, a final determination by the Board will be
issued within 1 year after institution (extendable for good cause by 6
months)
#ParagraphIV
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Overview - Post Grant Review
• Process begins with a third party filing a petition:
• For patents having a priority date later than March 15, 2013 - 9 months or more after the grant
of the patent or reissue patent (unless a post-grant review was instituted, in which case, a
petition cannot be filed until after the termination of such post-grant review)
• For patents having a priority date of March 15, 2013 or earlier – any time
• Petitioner cannot file petition if it already initiated a litigation or was served with a Complaint in
patent infringement action more than one year prior to filing petition for inter partes review
• Inter partes review may only be based on 35 U.S.C. §§ 102 or 103, and only on prior art consisting of
patents or printed publications
• Inter partes review may be instituted upon a showing that there is a reasonable likelihood that at
least one challenged claim is unpatentable
• “Comparing the two standards, the ‘reasonable likelihood’ standard is lower than the ‘more
likely than not’ standard. The reasonable likelihood standard allows for the exercise of discretion
but encompasses a 50/50 chance whereas the ‘more likely than not’ standard requires greater
than a 50% chance of prevailing.” Message from Chief Judge James Donald Smith, Board of
Patent Appeals and Interferences: USPTO Discusses Key Aspects of New Administrative Patent
Trials (http://www.uspto.gov/aia_implementation/smith-blog-extravaganza.jsp#heading-1)
• Entitled to “routine” discovery; additional discovery if agreed to, or requested and granted by the
Board; additional discovery must be “in the interests of justice”
• If the proceeding is instituted, a final determination by the Board will be issued within 1 year after
institution (extendable for good cause by 6 months)
#ParagraphIV
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Overview – Inter Partes Review
• For both post grant review and inter partes review
• Pre-AIA: “the estoppel provision of § 315 is triggered not when
examination is completed but only after all appeal rights have been
exhausted.” Bettcher Indus. v. Bunzl USA, Inc., 661 F.3d 629, 642-643
(Fed. Cir. 2011)
• AIA: Estoppel attaches upon PTAB’s final written decision, after which
the petitioner “may not assert either in a civil action … or in a
proceeding before the International Trade Commission … that the
claim is invalid on any ground that the petitioner raised or reasonably
could have raised during” post-grant or inter partes review. See 35
U.S.C §§ 315, 325
• Since invalidity grounds that petitioner can raise in post grant
review are broader than inter partes review, scope of estoppel will
likely be broader
• Parties can settle post grant review or inter partes review – no
estoppel without final written decision
#ParagraphIV
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Overview - Estoppel
• No need for case or controversy for PTAB proceedings. Note that there
is a need for case or controversy to appeal a PTAB decision to CAFC.
See Consumer Watchdog v. Wisconsin Alumni Research Found., 753
F.3d 1258 (Fed. Cir. 2014).
• Claim Construction: Broadest reasonable construction vs. court
interpretation
• Standard of Proof: preponderance of evidence vs. clear and convincing
evidence
• Discovery: limited in PTAB proceedings vs. full discovery in litigation
• Patentee can amend claims (once) during post grant review or inter
partes review (but PTAB has not granted many requests to amend
claims)
• Cost
#ParagraphIV
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Overview - Differences Between Litigation and
Post Grant Review/Inter Partes Review
• Still available after AIA
• May only be based upon patents or printed publications
• Requires a showing that the prior art establishes a substantial and
new question of patentability
• Requester can be anonymous
• Other than petition for ex parte reexamination, requester is not
involved (unless patent owner files response to petition)
• No estoppel
• Patentee can amend claims more freely than in post grant review or
inter partes review
#ParagraphIV
49
Overview - Ex Parte
Reexamination
• Three categories of discovery:
• Mandatory initial disclosures;
• “Routine” discovery; and
• Additional discovery.
#ParagraphIV
50
PTAB Proceedings - Discovery
PTAB Proceedings - Discovery
• Information a party must provide to the other side
• No need for motion practice or discovery request. Nichia Corp. v.
Emcore Corp., IPR2012-00005, Paper 19, page 2
#ParagraphIV
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• Routine Discovery
Routine Discovery
• “any exhibit cited in a paper or in testimony must be served with
the citing paper or testimony”;
• “Cross examination of affidavit testimony”; and
• “relevant information that is inconsistent with a position
advanced by the party during the proceeding.”
#ParagraphIV
52
• Routine discovery:
• Party must provide such discovery at the same
time it serves a paper or testimony citing it
• No requirement to create materials
• Does not require that “all the underlying data and
lab notebooks be produced” with a paper that
references an experiment. See Corning Inc. v. DSM
IP Assets B.V., IPR2013-00043, Paper 27, page 3.
#ParagraphIV
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Exhibits Cited in a Paper or
Testimony
• Party relying upon declarant must
arrange to make that witness available
for cross-examination
• Burden and expense falls upon party
relying upon declarant
#ParagraphIV
54
Cross Examination of Affidavit
Testimony
• Does not include material protected by attorney-client
privilege or attorney work product immunity
• “[N]arrowly directed to specific information known to the
responding party to be inconsistent with a position
advanced . . . , and not broadly directed to any subject area
in general within which the requesting party hopes to
discover such inconsistent information.” Garmin Int'l Inc.
et al. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26,
pages 3-4.
#ParagraphIV
55
Information Inconsistent With
a Party’s Position
• The parties may agree to additional
discovery
• If the parties fail to agree, a party may
move for additional discovery
• If parties do not agree, requests for
additional discovery are rarely
granted
#ParagraphIV
56
Additional Discovery
• The moving party must show that additional discovery:
• Is “in the interests of justice” in an IPR proceeding
• Meets the “good cause” standard in a post-grant
review proceeding
• “interests of justice” standard is slightly higher than the “good cause”
standard, but PTAB looks at same factors (Garmin factors) in both
cases. See Bloomberg Inc. v Markets-Alert, Pty Ltd., CBM 201300005, Paper 32 (May 29, 2013).
#ParagraphIV
57
Additional Discovery
• PTAB in Garmin v. Cuozzo, IPR2012-00001, Paper 20 (Feb. 14,
2013) identified five factors to consider when determining
whether additional discovery will be permitted:
(1) Request must be based upon “more than a possibility
and mere allegation”;
(2) Requests that seek discovery of litigation positions and
case theories are not appropriate;
(3) Requests for information a party can reasonably figure
out or assemble are not appropriate;
(4) The requests should be easily understandable;
(5) The requests must not be overly burdensome to answer.
#ParagraphIV
58
Additional Discovery - Factors
• To satisfy the first factor, the requesting party
must: (1) possess evidence tending to show that
the requested discovery will lead to further
evidence; and (2) establish that something useful
will be found.
• PTAB decisions suggest that the first factor must
be met to have any possibility of getting
additional discovery. See Redline Detection, LLC
v. Star EnviroTech, Inc., IPR 2013-00106, Paper
31, page 5 (Aug. 27, 2013) (emphasis added).
#ParagraphIV
59
Additional Discovery – First
Factor
Joinder
• “If the Director institutes an inter partes review, the Director, in
his or her discretion, may join as a party to that inter partes
review any person who properly files a petition under section 311
that the Director, after receiving a preliminary response under
section 313 or the expiration of the time for filing such a
response, determines warrants the institution of an inter partes
review under section 314.”
#ParagraphIV
60
• 35 U.S.C. § 315(c):
Joinder
• “The Leahy-Smith America Invents Act (AIA) permits joinder of
like review proceedings. Thus, an inter partes review (IPR) may be
joined with another inter partes review, and a post-grant review
(PGR) may be joined with another post-grant review.”
#ParagraphIV
61
• Microsoft Corp. v. Proxyconn, Inc., IPR201300109, Paper 15, page 3 (February 25, 2013):
• Requests for joinder can be used by defendants in related
district court patent infringement actions to ensure that an
IPR will proceed even if the patent owner settles with one IPR
petitioner/litigation defendant
• The request should:
• Explain why joinder is appropriate;
• Identify grounds of unpatentability asserted in the petition;
• Explain what impact, if any, joinder would have on the trial
schedule for the existing proceeding; and
• Address how briefing and discovery may be simplified.
See Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper
15, page 4 (April 24, 2013)
#ParagraphIV
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Joinder
• 37 C.F.R. §42.101(b) (and 35 U.S.C. §315(b)) include a oneyear bar, i.e., an inter partes review may not be instituted if
the petition requesting the proceeding was filed more than
one year after the date on which the petitioner, real party
in interest or privy of the petitioner was served with a
patent infringement complaint
• However, the one-year bar does not apply when the
petition for IPR is accompanied by a request for joinder.
See 37 C.F.R. §42.122(b); Microsoft Corp. v. Proxyconn, Inc.,
IPR2013-00109, Paper 15, page 3 (February 25, 2013)
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Joinder – Exception to the OneYear Ban
• Can petition for joinder be filed by same party
that filed original petition?
• In Target Corp. v. Destination Maternity Corp.,
IPR2014-00508, expanded PTAB panel majority
found that joinder was permissible even though
Target was the petitioner in both proceedings.
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Joinder – Exception to the OneYear Ban
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Settlement
• http://www.uspto.gov/sites/default/files/documents/040915_aia_stat_
graph.pdf
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Settlement
• Preauthorization is required
• May be filed at any stage of the proceeding, even before institution
• Board has discretion to proceed to final written decision;
more likely at an advanced stage when all briefing is
complete
• Board is more likely to grant early motions to terminate,
i.e., without written decision
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• Parties may file a joint motion to terminate a proceeding
on the basis of settlement
PTAB Appeals
Laura Lydigsen
Shareholder, Brinks, Gilson & Lione
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PTAB Appeals
• Notice of appeal
• Timing for notice: 63 days v. 60 days (37 C.F.R. §
90.3)
• Content of the notice of appeal
• Involvement of USPTO solicitor
• The merits?
• How is the Federal Circuit handling multiple
IPRs on the same patent?
• Briefing
• Argument
• Early outcomes
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Post Grant Review &
Covered Business
Method Review
Paul Ragusa
Partner, Baker Botts, LLP
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Post-Grant Review
• Of 5 filed to date, 1 against an Orange Book patent.
• Accord Healthcare, Inc. v. Helsinn Healthcare
S.A., et al., IPR2014-00010
• Petition filed on September 2, 2014
• Asserted invalidity under Section 112.
• PGR Terminated November 24
• "Under these circumstances, and in view of the
preliminary stage of the current proceeding, we
determine that it is appropriate to enter judgment
and terminate the proceeding without rendering a
final decision."
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Covered Business Method Review
• Who can petition for CBM?
• Petitioner must have been sued for infringement
or have standing to bring DJ action against patent.
• 37 CFR 42.302(a).
• Covered business method patent:
• "a patent that claims a method or corresponding
apparatus for performing data processing or other
operations used in the practice, administration, or
management of a financial product or service, except
that the term does not include patents for technological
inventions." 37 CFR 42.301(a).
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Covered Business Method Review (cont.)
• "Financial Product or Service"
• Term refers to products/services that concern money, and
not necessarily the financial services industry
• SAP Am., Inc. v. Versata Dev. Group, Inc. CBM2012-000001
• Par Pharm., Inc., et al. v. Jazz Pharms., Inc.
• Patents listed in Orange Book as covering Risk Evaluation
and Mitigation System (REMS) for Sodium Oxybate
• Institution denied - not CBM patents
• Claims and spec did not apply to financial services
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Covered Business Method Review (cont.)
• "Technological Inventions"
• A claim is not technological if:
• its technical elements merely recite known technologies,
such as computer hardware, communication or
computer networks, software, memory, computer
readable storage media, scanners, display devices,
databases, etc.;
• it merely recites known prior-art technology to
accomplish a process or method, even if that process or
method is itself novel and nonobvious;
• it combines prior art structures to achieve the normal,
expected, or predictable result of that combination.
• A single non-technological claim of a patent is
sufficient to institute a CBM review.
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Questions?
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