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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Meet the Faculty
Eugene Goryunov - Haynes & Boone
Jeremy Albright - Norton Rose Fulbright
Mike Cohen - Baxter Healthcare Company
Jon Stroud - Unified Patents
About This Webinar – Things to Consider Before
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.
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.
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
Things to Consider Before You File
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)
When Can a Petition be Filed?
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
What is the Standard to Institute PTab Trial
“More likely than not that at least one of the claims challenged in the petition is
“Raises a novel or unsettled legal question that is important to other patents or patent
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)
of Success Clear and Convincing
(More Likely Than Not)
PGR / CBMR
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
o PL 112-29, Sec. 18(a)(1)(C) (Sept. 16, 2011)
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)
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
• 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
14-pt font, including any footnotes
• PGR and CBMR
14-pt font, including any footnotes
o 37 C.F.R. 42.6 and 42.24
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
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 84 Fed. Reg. 9497 (Mar. 15, 2019)
About The Faculty
Eugene Goryunov - firstname.lastname@example.org
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.
About The Faculty
Jeremy Albright - email@example.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.
About The Faculty
Mike Cohen - firstname.lastname@example.org
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.
About The Faculty
Jon Stroud - email@example.com
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.
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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.
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