John Callahan, partner in the Washington, D.C., law firm Sughrue Mion PLLC, provides 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.

1. PTAB: SUCCESS
BY THE NUMBERS
John T. Callahan - Shareholder
Andrew P. Ritter - Associate
Sughrue Mion, PLLC
December 2015
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2. 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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3. 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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4. 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

5. 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

6. 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

7. 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

8. Petitioner's Perspective
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9. 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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10. 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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11. 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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12. 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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13. 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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14. 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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15. Patent Owner's Perspective
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16. 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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17. 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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18. 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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19. 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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20. 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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21. 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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22. 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

23. Questions?
Thank you.
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24. 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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