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Post-Grant Review Trials: What Are They? (Series: Post-Grant Review Trials)

DailyDAC LLC
Dec. 18, 2020
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Post-Grant Review Trials: What Are They? (Series: Post-Grant Review Trials)

  1. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Insert the cover image for this webinar on this slide entirely 1
  2. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Practical and entertaining education for attorneys, accountants, business owners and executives, and investors. 2
  3. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe DISCLAIMER The material in this webinar is for informational purposes only. It should not be considered legal, financial or other professional advice. You should consult with an attorney or other appropriate professional to determine what may be best for your individual needs. While Financial Poise™ takes reasonable steps to ensure the information it publishes is accurate, Financial Poise™ makes no guaranty in this regard. About this PowerPoint: if you are looking at this PowerPoint without the benefit of listening to the conversation that surrounded it then you are doing yourself a disservice. This PowerPoint was prepared in contemplation of being viewed in conjunction with listening to a one hour webinar on the topic 3
  4. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe MEET THE FACULTY Moderator: Eugene Goryunov – Kirkland & Ellis, LLP Panelists: Jeremy Albright – Norton Rose Fulbright Mike Cohen – Baxter Healthcare Company Jonathan Strang – Latham & Watkins LLP 4
  5. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT THIS WEBINAR: What Are They? This segment will discuss the statutory and procedural background of post-grant review proceedings. It will discuss the types of proceedings available and provide a high-level discussion of how the proceedings are conducted. 5
  6. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT THIS SERIES: Post-Grant Review Trials The series is intended to give attendees a crash-course in post-grant review proceedings at the U.S. Patent and Trademark Office. Many topics will be addressed, sufficient to explain the big picture considerations involved in this new and very popular area of law. 6
  7. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe EPISODES IN THIS SERIES 5/16/19 Episode #1: What Are They? 6/13/19 Episode #2: Pre-Filing Considerations 7/18/19 Episode #3: Interplay With District Court Litigation 7 Dates shown are premiere dates. All webinars will be available On Demand approximately 4 weeks after they premiere.
  8. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Episode #1: What Are They? 8
  9. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OVERVIEW 9
  10. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OVERVIEW OF PROCEEDINGS • Post-grant proceedings for challenging patent validity o Inter Partes Review (IPR) o Covered Business Method Review (CBMR) o Post-Grant Review (PGR) o Derivation 1 0
  11. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OVERVIEW OF PROCEEDINGS (cont’d) • “Trials” before the Patent Trial and Appeal Board (“PTAB”) • Allow for limited discovery, not previously available o Not “trials” in U.S. district court sense: no live witnesses (with rare exception), no jury, no opening statements, no closing arguments 1 1
  12. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OVERVIEW OF THE PTAB • Handles AIA post-grant proceedings, appeals, and derivations • Staffed by Administrative Patent Judges (“APJ”) o Employs roughly 280 APJs currently and actively hiring o New hires come from USPTO Examining Corps and private bar 1 2
  13. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OVERVIEW OF THE PTAB (cont’d) • Each AIA proceeding is decided by a 3-member APJ panel o Expanded panel may be convened by the PTAB itself o Under just-revised SOP1, parties may “suggest” expanded panel 1 3
  14. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OVERVIEW OF PTAB TRIALS • Proceedings are initiated with a petition • Parties may file reply papers • Parties engage in very limited discovery • Hearing is conducted on the merits • Concluded with final written decision unless parties settle 1 4
  15. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe STRATEGIC CONSIDERATIONS 1 5
  16. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OVERVIEW OF ADVANTAGES • “Preponderance” v. “clear and convincing” • Favorable Petitioner success rate • Potential to stay co-pending district court litigation • Lower cost than district court litigation and trial • Quicker to initial resolution than district court litigation 1 6
  17. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OVERVIEW OF DISADVANTAGES • Estoppel • Limited opportunity to develop record • Very limited opportunity to present true testimony • Patent Owner has the opportunity to amend claims 1 7
  18. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe STAYS OF LITIGATION • Patent involved in Patent Owner v. Petitioner litigation: 82% • Granting motion to stay litigation pending PTAB decision o IPR: 65% o CBMR: 62% 1 8
  19. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe STAYS OF LITIGATION (cont’d) • Federal Circuit has considered district courts denying a stay ➢VirtualAgility Inc. v. SalesForce.com, Inc., 2014 WL 3360806 (Fed. Cir. July 10, 2014) ➢Versata Software, Inc. v. Callidus Software, Inc., 2014-1468 (Fed. Cir. Nov. 20, 2014) ➢Intellectual Ventures II, LLC v. JPMorgan Chase, 2014-1724 (Fed. Cir. Apr. 1, 2015) • Stay decisions in district court vary significantly by jurisdiction 1 9
  20. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe DJ ACTIONS • If Petitioner files DJ of invalidity first, no IPR or CBMR ➢ 35 U.S.C. § 315(a)(1); 37 C.F.R. 42.101(a); ➢ http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_f or 2 0
  21. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe DJ ACTIONS (cont’d) • Consider filing DJ of noninfringement; assert invalidity as defense to responsive claim for infringement o Affirmative defense of invalidity to a counterclaim of infringement plead by Patent Owner does not deprive Petitioner of standing ➢ E.g., IPR2012-00022, Paper 20 (Feb. 12, 2013); CBM2014-00035, Paper 12 (Apr. 25, 2014) 2 1
  22. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ESTOPPEL • IPR/PGR: o At the PTO/Court/ITC: Cannot maintain another proceeding on a basis Petitioner “raised or reasonably could have raised” ➢ PGR: 35 U.S.C. § 325(e); IPR: 35 U.S.C. § 315(e) 2 2
  23. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ESTOPPEL (cont’d) • CBMR: o At the PTO: Cannot maintain another PTO proceeding on a basis Petitioner “raised or reasonably could have raised” ➢ 35 U.S.C. § 325(e)(1); 37 C.F.R. 42.73(d) o At Court/ITC: Cannot maintain another proceeding on a basis Petitioner actually raised ➢ PL 112-29, Sec. 18(a)(1)(D) (Sept. 16, 2011) 2 3
  24. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe IMPACT • Should inform district court of IPR proceedings ➢ Va. Innovation Scis., Inc. v. Samsung Elecs. Co., Ltd., 2:12-cv-548 (EDVA May 2, 2014) (must inform court of IPR proceeding or face “sharp[] consequences”) • Motions in Limine ➢ Universal Elec. Inc. v. Universal Remote Control Inc., 8:12-cv-329 (C.D. Cal. Apr. 21, 2014) (denying MIL to preclude mention of rejected petition); StoneEagle Serv., Inc. v. Pay-Plus Solutions, Inc., No. 8:13-cv-2240 (M.D. Fl. June 19, 2015) (same) ➢ InterDigital Commc’ns. Inc. v. Nokia Corp., 1:13-cv-10 (D. Del. Sept. 19, 2014) (granting MIL to preclude mention of rejected petition) ➢ UltraTec, Inc. v. Sorenson Commc’ns, Inc., 3:13-cv-346 (W.D. Wis. Oct. 8, 2014) (granting-in-part MIL to preclude mention of instituted IPR to Jury; allow mention to Judge) 2 4
  25. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe IMPACT (cont’d) • Issues of claim construction, validity, and noninfringement ➢The Procter & Gamble Co. v. Team Techs., Inc., No. 12-cv-552 (S. D. Ohio Jul. 3, 2014) (considering USPTO’s decision in a post-grant proceeding to grant MSJ of no invalidity) ➢VAE Nortrak N. Am. v. Progress Rail Serv. Corp., 459 F. Supp. 2d 1142 (N.D. Alabama Oct. 25, 2006) (granting defendant’s MSJ on DEO based on statements made during foreign prosecution) 2 5
  26. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OTHER CONSIDERATIONS (PETITIONER) • Timing considerations o File right away? File after contentions in court? • Audience considerations o Invalidity arguments more judge/jury friendly? • Multi-patent considerations o Challenge all or subset of asserted patents/claims? 2 6
  27. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe OTHER CONSIDERATIONS (PATENT OWNER) • Multi-party considerations o Joint defense group? Privity? Real Party-in-Interest? • Multi-patent considerations o Assert one or many patents at once? • Non-party considerations o Role of manufacturer/supplier? 2 7
  28. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT THE FACULTY 2 8
  29. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Eugene Goryunov – eugene@poligenes.com Mr. Goryunov is an experienced trial lawyer that represents clients in complex patent matters involving many diverse technologies. He is deeply involved, as trial counsel, in all aspects of cases pending in Federal courts, at the U.S. International Trade Commission involving Section 337 investigations, and in appeals at the U.S. Court of Appeals for the Federal Circuit. He also regularly serves as first-chair trial counsel in post-grant review trials, on behalf of both Petitioners and Patent Owners, pending at the U.S. Patent & Trademark Office. To date, he has been involved in over one-hundred post-grant review trials. Mr. Goryunov is a regular contributor to intellectual property publications, including the Intellectual Property Magazine, The Patent Lawyer, and the IPO Law Journal. To date, he has published more than sixty articles, many of which discuss post-grant review trial practice. Mr. Goryunov also speaks about diverse issues of patent law and post-grant review trial practice. He also teaches patent law and intellectual property litigation at the Columbia University and previously at the University of Notre Dame. 2 9
  30. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Jeremy Albright – jeremy.albright@nortonrosefulbright.com Jeremy Albright is a senior associate at Norton Rose Fulbright US LLP. He is a patent attorney in the mechanical arts, and his practice is focused on patent preparation and prosecution as well as post-issuance challenges, with emphasis on inter partes reviews and ex parte reexaminations. 3 0
  31. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Mike Cohen – michael_cohen@baxter.com Mike Cohen is an Associate General Counsel at Baxter Healthcare Corporation responsible for managing the intellectual property portfolio strategy, freedom to operate activity, IP related transactions, and patent litigation for various software and software-embedded medical products. Prior to joining Baxter in 2014, Michael was an IP litigation partner in Kirkland & Ellis LLP’s Chicago office, where he spent roughly a decade representing Fortune 500 companies in high-stakes patent and commercial litigation matters. Mike holds bachelor and masters degrees in engineering from Bradley University and graduated summa cum laude with a J.D. from the University of Illinois College of Law. Before law school, Mike was a software developer and consultant at Accenture. 3 1
  32. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe Jonathan Strang – jonathan.strang@lw.com Jonathan Strang is counsel in the Washington, D.C. office of Latham & Watkins. His practice focuses on patent litigation, especially proceedings before the Patent Trial and Appeal Board (PTAB). He is also the Editor-in-Chief of the PTAB Bar Association’s PTAB Roundup newsletter, which every two weeks provides the Association’s membership with concise summaries of important cases and other developments in this ever-evolving practice area. Prior to joining Latham, Mr. Strang was a partner at a leading DC-based patent boutique, focusing on patent litigation before the courts and the PTAB. He previously served as an officer in the US Navy Submarine Force where, in addition to his warfare specialty, he was a nuclear and electrical engineer. He also spent six years in the private sector spearheading numerous hardware and software development projects. 3 2
  33. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe QUESTIONS OR COMMENTS? If you have any questions about this webinar that you did not get to ask during the live premiere, or if you are watching this webinar On Demand, please do not hesitate to email us at info@financialpoise.com with any questions or comments you may have. Please include the name of the webinar in your email and we will do our best to provide a timely response. IMPORTANT NOTE: The material in this presentation is for general educational purposes only. It has been prepared primarily for attorneys and accountants for use in the pursuit of their continuing legal education and continuing professional education. 3 3
  34. Copyright © 2019 by DailyDAC, LLC d/b/a Financial Poise Webinars™ Receive our free weekly newsletter at www.financialpoise.com/subscribe ABOUT FINANCIAL POISE DailyDAC LLC, d/b/a Financial Poise™ provides continuing education to attorneys, accountants, business owners and executives, and investors. Its websites, webinars, and books provide Plain English, entertaining, explanations about legal, financial, and other subjects of interest to these audiences. Visit us at www.financialpoise.com. 3 4 Our free weekly newsletter, Financial Poise Weekly, educates readers about business, business law, finance, and investing. To receive it simply add yourself by going to: https://www.financialpoise.com/newsletter/ Email addresses are never sold to or shared with third parties.
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