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Things to Consider Before You File (Series: IP 301 Post-Grant Review Trials 2020)

This segment will delve into considerations that come into play when filing or responding to post-grant review proceedings.  These considerations include issues of real party in interest, timing, and substantive arguments.

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Things to Consider Before You File (Series: IP 301 Post-Grant Review Trials 2020)

  1. 1. 1
  2. 2. 2 Practical and entertaining education for attorneys, accountants, business owners and executives, and investors.
  3. 3. 3 Thank You To Our Sponsor
  4. 4. 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 that information it publishes is accurate, Financial Poise™ makes no guaranty in this regard. 5
  5. 5. Meet the Faculty MODERATOR: Eugene Goryunov - Haynes & Boone PANELISTS: Jeremy Albright - Norton Rose Fulbright Mike Cohen - Baxter Healthcare Company Jon Stroud - Unified Patents 6
  6. 6. About This Webinar – Things to Consider Before You File This segment will delve into considerations that come into play when filing or responding to post-grant review proceedings. These considerations include issues of real party in interest, timing, and substantive arguments. 7
  7. 7. 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. Each Financial Poise Webinar is delivered in Plain English, understandable to investors, business owners, and executives without much background in these areas, yet is of primary value to attorneys, accountants, and other seasoned professionals. Each episode brings you into engaging, sometimes humorous, conversations designed to entertain as it teaches. Each episode in the series is designed to be viewed independently of the other episodes so that participants will enhance their knowledge of this area whether they attend one, some, or all episodes. 8
  8. 8. Episodes in this Series #1: PGRT Basics Premiere date: 7/16/20 #2: Things to Consider Before You File Premiere date: 8/13/20 #3: Interplay With District Court Litigation Premiere date: 9/10/20 9
  9. 9. Episode #2 Things to Consider Before You File 10
  10. 10. Filing a Petition 11
  11. 11. Who Can File a Petition? • PGR: Petitioner must not file DJ of invalidity first o 35 U.S.C. § 321(a); 35 U.S.C. § 325(a)(1); 37 C.F.R. 42.201 • IPR: Petitioner must not file DJ of invalidity first and must file within one year after being served with a complaint o 35 U.S.C. § 315; 37 C.F.R. 42.101  Arbitration and ITC investigation do not count o E.g., IPR2015-00056, Paper 10 (Mar. 23, 2015) • CBMR: Petitioner must be sued or charged with infringement o 37 C.F.R. 42.302(a)  Standing may exist if customer was sued and asked for indemnification o E.g., CBM2013-00013, Paper 15 (Sept. 19, 2013); CBM2013-00055, Paper 16 (Mar. 6, 2014) 12
  12. 12. When Can a Petition be Filed? • PGR  Post-AIA Patent: Must be filed within 9 months after issue o 35 U.S.C. § 321; 37 C.F.R. 42.202 • IPR: Can be filed after the later of:  Pre-AIA Patent: Issue of the patent;  Post-AIA Patent: (1) 9 months after issue or (2) end of PGR o 35 U.S.C. § 311(c); 37 C.F.R. 42.102 • CBMR: Can be filed after the later of:  Pre-AIA Patent: Issue of the patent  Post-AIA Patent: 9 months after issue 13
  13. 13. What is the Standard to Institute PTab Trial • PGR/CBMR:  “More likely than not that at least one of the claims challenged in the petition is unpatentable;” or  “Raises a novel or unsettled legal question that is important to other patents or patent applications” o PGR: 35 U.S.C. § 324(a) and (b); 37 C.F.R. 42.208(c) and (d); CBMR: 37 C.F.R. 42.304(a) • IPR: “[R]easonable likelihood that the Petitioner would prevail” with respect to at least one challenged claim in the patent o 35 U.S.C. § 314(a); 37 C.F.R. 42.108(c) 14
  14. 14. 15 0% 100% Substantial New Question of Patentability Reasonable Likelihood of Success Clear and Convincing Preponderance (More Likely Than Not) Ex Parte Reexamination PGR / CBMR IPR District Court
  15. 15. What Can a Petition be Based on? • PGR: Patents, printed publications, evidence of public use, sale, and offer for sale, and §§ 101, 102, 103, 112, 251. o 35 U.S.C. § 321 • IPR: Patents and printed publications, and §§ 102, and 103. o 35 U.S.C. § 311(b); 37 C.F.R. 42.104(b)(2) • CBMR: All patents on §§ 101, 102, 103, 112, 251.  Pre-AIA Patent: Only § 102(a) prior art (not 102(e) prior art).  Post-AIA Patent: Patents, printed publications, evidence of public use, sale, and offer for sale. o PL 112-29, Sec. 18(a)(1)(C) (Sept. 16, 2011) 16
  16. 16. What Must the Petition Include? • Identify real parties in interest; • Identify challenged claim and grounds for the challenge; • Provide claim construction; • Identify exhibit numbers of supporting evidence; • Provide copies of the supporting evidence; and • Be accompanied by filing fee o PGR: 35 U.S.C. § 322(a) and 37 C.F.R. 42.204(b); o IPR: 35 U.S.C. §312(a) and 37 C.F.R. 42.104(b); o CBMR: 37 C.F.R. 42.304(b); o Generally: 35 U.S.C. § 312(a) 17
  17. 17. Petition Formalities • Grounds  Must include full analysis in petition, not just expert declaration • Claim Construction  Include explanation why proposed construction is correct o 37 C.F.R. 42.104(b)(3)  Common defect in petitions is failure to provide proposed construction for term open to interpretations 18
  18. 18. Fees • IPR Request Fee: $15,500  Additional $300 fee for each claim in request over 20 • IPR Post-Institution Fee: $15,000  Additional $600 for each claim granted review over 15 • PGR/CBMR Request Fee: $16,000  Additional $375 fee for each claim in request over 20 • PGR/CBMR Post-Institution Fee: $22,000  Additional $825 for each claim granted review over 15 o 37 C.F.R. 42.15 19
  19. 19. Word Limits • IPR  14,000 words  14-pt font, including any footnotes • PGR and CBMR  18,700 words  14-pt font, including any footnotes o 37 C.F.R. 42.6 and 42.24 20
  20. 20. Litigating a PTAB Trial 21
  21. 21. Timline/Filings 22
  22. 22. Timeline/Filings – Motion to Amend Pilot 23
  23. 23. Timeline/Filings – Motion to Amend Pilot 24
  24. 24. PO Preliminary Response • Limited to reasons why trial should not be instituted  Cannot include any amendments to the challenged claims • Filed within 3 months after notice of filing date of petition o PGR/CBMR: 35 U.S.C. § 323; 37 C.F.R. 42.207; IPR: 35 U.S.C. § 313; 37 C.F.R. 42.107 • PTAB will discount any conclusory, unsupported Patent Owner statements, especially when contrary to written description o E.g., IPR2013-00010, Paper 21 (Feb. 12, 2013) • Petitioner can seek a reply for good cause 25
  25. 25. PO Response and/or Motion to Amend • PO Response: May respond to any ground included in trial  Filed after discovery is taken of Petitioner o PGR/CBMR: 35 U.S.C. § 326(a)(8); IPR: 35 U.S.C. § 316(a)(8) • PO Motion to Amend: New Motion to Amend Pilot begins March 15, 2019  Cancel or propose substitute claims of same or narrower scope  Can be supported with expert declaration o PGR/CBMR: 35 U.S.C. §§ 326(a)(9) and (d)(1); IPR: 35 U.S.C. §§ 316(a)(9) and (d)(1) o o 84 Fed. Reg. 9497 (Mar. 15, 2019) 26
  26. 26. About the Faculty 27
  27. 27. About The Faculty Eugene Goryunov - 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. 28
  28. 28. About The Faculty Jeremy Albright - 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. 29
  29. 29. About The Faculty Mike Cohen - 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. 30
  30. 30. About The Faculty Jon Stroud - Jonathan Stroud is Chief Intellectual Property Counsel at Unified Patents. Jonathan manages litigation, appeals, PTAB proceedings, licensing, and settlement negotiations, legal strategy, and prior art analysis, and prepares, drafts, and files proceedings for Unified. Previously, he litigated at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, before the PTAB, in district court litigation, and on appeal, and prior to that he examined implantable medical device patents at the USPTO for 5 years. He interned at the U.S. International Trade Commission (ITC) for Judge Robert K. Rogers, and earned his J.D. with honors from American University Washington College of Law; his B.S. in biomedical engineering from Tulane University; and his M.A. in print journalism from the University of Southern California. He regularly speaks, writes, and lectures on patent law, and is an adjunct professor of law at American, teaching PTAB practice. 31
  31. 31. 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 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. 32
  32. 32. About Financial Poise 33 Financial Poise™ has one mission: to provide reliable plain English business, financial, and legal education to individual investors, entrepreneurs, business owners and executives. Visit us at Our free weekly newsletter, Financial Poise Weekly, updates you on new articles published on our website and Upcoming Webinars you may be interested in. To join our email list, please visit: