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S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

Patent Office Litigation:
Lessons Learned
Deborah Sterling, Ph.D. – Director
Sterne, Kessler, Goldstein & Fox PLLC
January 14, 2016
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

2
PTO Litigation Timeline: Key Issues
Petition
Filed
PO
Preliminary
Response
Decision
on Petition
PO Response
& Motion to
Amend Claims
Petitioner Reply
& Opposition to
MTA
PO Reply
to Opp
to MTA
Oral
Hearing
Final
Written
Decision
3 months ≤ 3 months 2-3 months 2-3 months 1 month 1-2 months
Statutory Filing Bar
Real Party in Interest
325(d) Discretion
Joinder
Priority Challenges
Prima Facie Attack (prior art date)
Stays
Motions to Exclude
Estoppel
Federal Circuit Appeal
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

3
•  Since September
16, 2012, 3,966
IPR petitions, 406
CBM petitions, and
15 PGR petitions
have been filed
•  Averaged 150
petitions per month
in 2015 – slightly
up over 2014.
The Rise of PTO Litigation (1/8/15)
0	
  
500	
  
1000	
  
1500	
  
2000	
  
2500	
  
3000	
  
3500	
  
4000	
  
Sep-­‐12	
  
Dec-­‐12	
  
Mar-­‐13	
  
Jun-­‐13	
  
Sep-­‐13	
  
Dec-­‐13	
  
Mar-­‐14	
  
Jun-­‐14	
  
Sep-­‐14	
  
Dec-­‐14	
  
Mar-­‐15	
  
Jun-­‐15	
  
Sep-­‐15	
  
Dec-­‐15	
  
	
  IPR	
  and	
  CBM	
  Filings	
  by	
  Month	
  	
  
Total	
  
Month	
  
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

4
PTAB Institution Outcomes (12/3/15)
•  Trial has been instituted in 1,839 IPR proceedings (72.4%) and denied in 700 (27.6%)
•  Trial has been instituted in 221 CBM proceedings (69.7%) and has been denied in 96 (30.3%)
•  Parties reached a settlement prior to a decision on institution in 449 IPRs and 41 CBMs
•  The Board institutes trial for 64.2% of challenged claims in IPRs, and 63.9% of challenged claims in CBMs.
Period Institution Rate
1st - 3rd Quarter FY2013 91.2%
4th Quarter FY2013 82.1%
1st Quarter FY2014 78.5%
2nd Quarter FY2014 81.3%
3rd Quarter FY2014 72.2%
4th Quarter FY2014 71.2%
1st Quarter FY2015 77.7%
2nd	
  Quarter	
  FY2015	
   68.8%	
  
3rd	
  Quarter	
  FY2015	
   63.6%	
  
4th	
  Quarter	
  FY2015	
   62.5%	
  
1st	
  Quarter	
  FY2016	
   72.6%	
  
Total	
   72.2%	
  
70%	
  
75%	
  
80%	
  
85%	
  
90%	
  
95%	
  
Mar-­‐13	
  
May-­‐13	
  
Jul-­‐13	
  
Sep-­‐13	
  
Nov-­‐13	
  
Jan-­‐14	
  
Mar-­‐14	
  
May-­‐14	
  
Jul-­‐14	
  
Sep-­‐14	
  
Nov-­‐14	
  
Jan-­‐15	
  
Mar-­‐15	
  
May-­‐15	
  
Jul-­‐15	
  
Sep-­‐15	
  
Nov-­‐15	
  
Tracking	
  the	
  Cumula@ve	
  	
  Ins@tu@on	
  Rate	
  
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

5
PTAB AIA Trial Outcomes
Outcome	
   Count	
   Percentage	
  
Final Written Decision Received	
   684	
   46.6%	
  
Institution Denied	
   299	
   20.4%	
  
Settled Post-Institution	
   264	
   18.0%	
  
Settled Prior to Institution	
   146	
   9.9%	
  
Request for Adverse Judgment	
   59	
   4.0%	
  
Institution Vacated; Case Terminated	
   10	
   0.7%	
  
Petitioner Abandoned Petition	
   4	
   0.3%	
  
Pending 	
   1	
   0.1%	
  
Patent Owner No Response (Claims Cancelled)	
   1	
   0.1%	
  
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

6
Statutory Filing Bar: Civil Action
35 U.S.C. §315(a):
(1) Inter partes review barred by civil action. An inter partes review may not be
instituted if, before the date on which the petition for such review is filed, the
petitioner or real party in interest filed a civil action challenging the validity of a
claim of a patent
•  Counterclaim challenging the validity of a claim of a patent does not
constitute a civil action challenging the validity of a claim of a patent.
35 U.S.C. §315(a)(1)
•  DJ of non-infringement is not a civil action challenging the validity of
a claim of a patent [Ariosa, IPR2012-00022]
•  Filed does not mean “filed and served” [Anova, IPR2013-00114]
•  Dismiss DJ action w/o prejudice “leaves parties as if action had
never been brought.” [Butamax, IPR2013-00539]
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

7
Statutory Filing Bar: 1-Year Bar
35 U.S.C. §315(b):
An inter partes review may not be instituted if the petition requesting the
proceeding is filed more than 1 year after the date on which the petitioner … is
served with a complaint alleging infringement of the patent.
•  Though statute does not refer to a “civil action,” this is how the
Board has interpreted this section. An ITC action does not qualify,
nor does a complaint in an arbitration. See Amkor, IPR2013-00242,
Paper 98.
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

8
The 1-Year Bar, cont.
•  An IPR directed to amended claims of a reexamined patent,
where the original patent was the subject of an infringement
complaint served more than a year earlier, is barred.
[BioDelivery Services, IPR2013-00315]
•  An IPR triggered by a second infringement complaint filed and
served less than a year earlier but after a first infringement
complaint for the same patent filed and served more than a
year earlier is barred. [Apple, IPR2013-00348]
•  Infringement complaint served more than one year earlier but
dismissed without prejudice does not trigger the bar. [Macuato,
IPR2012-00004]
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

9
Real Party in Interest (RPI)
•  Practice Guide states:
•  “what constitutes a real party in interest or privy is a highly fact-
dependent question” (77 FR 6884)
•  “actual control or the opportunity to control the previous proceeding
is an important clue that such a relationship existed” (77 FR 6884)
•  “[f]actors for determining actual control or the opportunity to control
include existence of a financially controlling interest in the
petitioner.” (77 FR 6884)
•  “For example, a party that funds and directs and controls an IPR or
PGR petition or proceeding constitutes a ‘real party-in-interest,’ even
if that party is not a ‘privy’ of the petitioner” (77 FR 48760)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

10
RPI or RIP
•  It includes determining the “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, IPR2013-00606].
•  When an error in identifying RPI was minor “because the current entities
are legal successors to their original entities” the PTAB allowed petition to
keep its original filing date. [Valeo, IPR2014-01203]
•  Where the Petitioner failed to identify all RPIs and amending filing date
would result in time-barred petition, the PTAB terminated IPR proceedings.
[Corning, IPR2014-00440]
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

11
325(d) Discretion: Second bites of the
apple
•  35 U.S.C. § 325(d): In determining whether to institute or order a
proceeding … the Director may take into account whether, and reject the
petition or request because, the same or substantially the same prior art or
arguments previously were presented to the Office.
•  whether a previous petition was instituted/remains pending;
•  whether the second petition was brought by the same petitioner
•  whether the second petition uses the same or different prior art as the previous
petition;
•  whether the second petition challenges the same claims as in the first petition;
•  whether the second petitioner faces a statutory one-year bar under 35 U.S.C. §
315(b);
•  whether the second petition presents new declaration evidence; and
•  whether the second petitioner could have sought joinder with an earlier
proceeding.
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

12
Joinder: Discretionary
•  PO or petition may request joinder via motion, no later than one month after
the institution date of any IPR for which joinder is requested. 37 C.F.R. §
42.122 (b)
•  cannot join if base proceeding terminated [Apple, IPR2013-00354 and
IPR2014-00061]
•  party is not required to file motion for joinder simultaneously with petition
[Apple, IPR2013-00348]
•  one month time period can be waived for special circumstances
[IPR2013-00495 (waived); IPR2013-00584; IPR2014-00061 (not waived)]
•  secondary (understudy) party may assume first chair role if parties settle
[IPR2013-00495]
•  Joinder is for joining parties, not issues [SkyHawke, IPR2014-01485]
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

13
Priority Challenges: IPRs and Prior Art
In IPRs:
•  The Board addressed Petitioner's priority challenge in 63
Institution Decisions and 7 FWDs
•  Out of 63 Institution Decisions:
•  priority challenge successful in 30 cases (48%)
•  priority challenge unsuccessful in 17 cases (27%)
•  Priority challenge moot in 16 cases (25%)
•  The Petitioner was successful in maintaining priority challenge
in all 7 FWDs
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

14
Priority Challenges: IPRs and Prior Art
•  An attack on a priority claim based on 112, 1st paragraph is not
prohibited in an IPR [Rackspace, IPR2014-0058]
•  Priority challenge failed when it relied upon the same 112, 1st
paragraph issue that was raised during prosecution and
overcome [Prism Pharma, IPR2014-00315]
•  Priority challenge succeeded when it relied upon the same
112, 1st paragraph issue that was raised and overcome during
prosecution of a related patent application, but scope of claims
in challenged patent were significantly different [Daiichi
Sankyo, IPR2015-00291]
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

15
Priority Challenges: PGR Eligibility
In PGRs:
•  Priority chain challenged in one PGR in order to turn patent
from pre-AIA patent to post-AIA patent [see Inguran,
PGR2015-00017]
•  Priority challenge successful and PGR instituted
•  Important because patent otherwise not eligible for PGR
•  PGR opens door to 112, 101, etc., in addition to prior art
based challenges
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

16
Prima Facie Attack: Prior Art Date
To qualify as 102(e) prior art by virtue of an earlier effective filing
date, a prior art patent or published application’s claims must
have 112, 1¶ support in earlier-filed application
•  PTAB held challenged claims not unpatentable in FWD where
petitioner failed to demonstrate claims of 102(e)(1) published
application or 102(e)(2) patent had 112, 1¶ support in earlier-
filed provisional or nonprovisional application
•  Vmware, IPR2014-01304 and -01305 (102(e)(2))
•  Ariosa, IPR2014-01093 (102(e)(1))
•  PTAB expanding CAFC decision in Dynamic Drinkware v.
National Graphics, 2015-1214
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

17
Motions to Exclude: Fatal evidentiary gap
•  Prior art not actually prior art--authenticated publication date
not shown
•  In TRW Automotive [IPR2014-01347] all grounds relied
upon a reference that PO moved to exclude as
unauthenticated
•  PTAB excluded reference and petitioner’s case fell apart
•  FWD confirmed all challenged claims
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

18
Cannot Appeal Institution Decision
•  All Federal Circuit appeals from institution decision, even on standing issues,
dismissed
•  In re Procter and Gamble Co. – mandamus is not a proper vehicle for
challenging institution of IPR
•  In re The University of Illinois – statutory scheme precludes the court from
hearing an appeal from the Director’s decision to institute
•  In re Versata – statutory provisions applicable to post-grant review contain an
identical bar to appellate review of institution determinations
•  All district court appeals from institution decision, even on standing issues,
dismissed
•  Mentor Graphics Corp. v. Rea, EDVA – Institution decision is not a final agency
action, and is not reviewable by the EDVA. Can appeal to CAFC at conclusion
of IPR.
•  Dominion Dealer Solutions, LLC v. Lee, EDVA – Institution decision is not a
final agency action, and is not reviewable by the EDVA
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

19
Stays: District Court
•  District courts are generally granting stays
•  Over 65% of contested motions to stay have been granted
•  BUT…Most district courts are waiting until institution before even
considering a motion to stay
•  IPR
•  310 stays granted by district courts pending the outcome of an IPR
(140 stipulated, 4 sua sponte)
•  88 stays denied by district courts pending the outcome of an IPR (1
stipulated)
•  CBM
•  57 stays granted by district courts pending the outcome of a CBM (20
stipulated)
•  16 stays denied by district courts pending the outcome of a CBM
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

20
Estoppel: Petitioner in Dist. Ct.
•  Estoppel in IPR applies to “prior art consisting of patents or
printed publications.” [Redline Detection IRP2013-00106]
•  Some courts may apply estoppel before a FWD [Invensys Sys.
v Emerson Elec. (E.D. Tex)]
•  But others may not [National Oilwell Varco v Omron Oilfield &
Marine (W.D. Texas)]
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

21
Estoppel: at PTAB
•  Petitioner:
•  PTAB denied a second IPR petition under the estoppel
provision when the grounds in the second IPR differed from
those in the first but the underlying art was the same [Dell,
IPR2015-00549]
•  Patent Owner:
•  estoppel under rule 42.73(d)(3) applies only after all
appeals have been exhausted [SDI Technologies, Inc.
IPR2014-00343]
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

22
AIA Appeals to the CAFC
Total Number of Appeals Docketed	
   451	
  
Appealed from IPR Final Written Decisions	
   382	
  
Appealed from CBM Final Written Decisions	
   69	
  
Appeals from Non-Final Decisions	
   22	
  
Appeals by Patent Owners	
   301	
  
Appeals by Petitioners	
   69	
  
Number of Cross Appeals	
   40	
  
Total Number of Mandamus Petitions	
   11	
  
Petitions from decisions in IPR proceedings	
   10	
  
Petitions from decisions in CBM proceedings	
   1	
  
Impact	
  on	
  the	
  Federal	
  Circuit	
  
§  Docketed	
  104	
  appeals	
  in	
  2014,	
  309	
  in	
  2015,	
  and	
  38	
  in	
  2016	
  (TYD)	
  
§  The	
  vast	
  majority	
  of	
  appeals	
  are	
  pursued	
  by	
  patent	
  owners	
  
§  Cross	
  appeals	
  represent	
  two	
  appeals	
  based	
  on	
  one	
  decision	
  
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

23
AIA Appeals to the CAFC
Cases Submitted to the Federal Circuit 90 Percentages
Decided 60
Affirmed 56 93% Affirmed
Affirmed Fed. Cir. R. 36 34
Affirmed Non-Precedential 12
Affirmed Precedential 10
Remanded 3 5% Remanded
Reversed 1 2% Reversed
Dismissed 8
Pending 22
Impact	
  on	
  the	
  Federal	
  Circuit	
  
§  Over	
  90%	
  of	
  appeals	
  decided	
  on	
  the	
  merits	
  have	
  been	
  affirmed	
  
§  Over	
  50%	
  of	
  decisions	
  issued	
  are	
  Rule	
  36	
  summary	
  affirmances	
  
§  Almost	
  10%	
  of	
  appeals	
  have	
  been	
  involuntarily	
  dismissed	
  
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

24
Outcomes Observations
•  Roughly 50% of final decisions are appealed to the Federal Circuit,
and the vast majority of those are by losing patent owners
•  In front of the Federal Circuit, appellants are losing over 90% of
the time with Rule 36 affirmances deciding over 50% of cases
•  high affirmance rate is a natural consequence of the highly
deferential standard of review applicable to the majority of
issues appealed by parties (e.g., substantial evidence, abuse
of discretion, arbitrary and capricious)
•  The Court appears to be handling the volume by issuing Rule 36
affirmances and aggressively consolidating related cases
•  The Court appears to be staying on track in issuing opinions within
90 days of oral argument, but a calendaring backlog is emerging
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

25
Significant Cases
In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015)
§  Upheld BRI as appropriate claim construction standard
§  Institution decision is not appealable, even from final decision
§  Board not strictly limited to grounds raised in the petition
Dynamic Drinkware, LLC v. Nat’l Graphics, 800 F.3d 1375 (Fed. Cir. 2015)
§  There is no presumption that a patent is entitled to its priority claim
§  Burden of production shifts to establish/rebut prior art status in an IPR, but
§  Ultimate burden of persuasion stays with petitioner to prove unpatentability
Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015)
§  PTAB’s determination regarding the filing bar of 315(b) is not appealable
Ethicon Endo v. Covidien, 2016 WL _______ (Fed. Cir. Jan. 13, 2016)
§  It is within the Office’s statutory authority to delegate both the decision to institute and final
written decision to the same panel
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.	

26
Questions?
Deborah Sterling, Ph.D., Director
dsterlin@skgf.com ▪ 202.772.8501

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PTO Litigation Lessons

  • 1. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. Patent Office Litigation: Lessons Learned Deborah Sterling, Ph.D. – Director Sterne, Kessler, Goldstein & Fox PLLC January 14, 2016
  • 2. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 2 PTO Litigation Timeline: Key Issues Petition Filed PO Preliminary Response Decision on Petition PO Response & Motion to Amend Claims Petitioner Reply & Opposition to MTA PO Reply to Opp to MTA Oral Hearing Final Written Decision 3 months ≤ 3 months 2-3 months 2-3 months 1 month 1-2 months Statutory Filing Bar Real Party in Interest 325(d) Discretion Joinder Priority Challenges Prima Facie Attack (prior art date) Stays Motions to Exclude Estoppel Federal Circuit Appeal
  • 3. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 3 •  Since September 16, 2012, 3,966 IPR petitions, 406 CBM petitions, and 15 PGR petitions have been filed •  Averaged 150 petitions per month in 2015 – slightly up over 2014. The Rise of PTO Litigation (1/8/15) 0   500   1000   1500   2000   2500   3000   3500   4000   Sep-­‐12   Dec-­‐12   Mar-­‐13   Jun-­‐13   Sep-­‐13   Dec-­‐13   Mar-­‐14   Jun-­‐14   Sep-­‐14   Dec-­‐14   Mar-­‐15   Jun-­‐15   Sep-­‐15   Dec-­‐15    IPR  and  CBM  Filings  by  Month     Total   Month  
  • 4. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 4 PTAB Institution Outcomes (12/3/15) •  Trial has been instituted in 1,839 IPR proceedings (72.4%) and denied in 700 (27.6%) •  Trial has been instituted in 221 CBM proceedings (69.7%) and has been denied in 96 (30.3%) •  Parties reached a settlement prior to a decision on institution in 449 IPRs and 41 CBMs •  The Board institutes trial for 64.2% of challenged claims in IPRs, and 63.9% of challenged claims in CBMs. Period Institution Rate 1st - 3rd Quarter FY2013 91.2% 4th Quarter FY2013 82.1% 1st Quarter FY2014 78.5% 2nd Quarter FY2014 81.3% 3rd Quarter FY2014 72.2% 4th Quarter FY2014 71.2% 1st Quarter FY2015 77.7% 2nd  Quarter  FY2015   68.8%   3rd  Quarter  FY2015   63.6%   4th  Quarter  FY2015   62.5%   1st  Quarter  FY2016   72.6%   Total   72.2%   70%   75%   80%   85%   90%   95%   Mar-­‐13   May-­‐13   Jul-­‐13   Sep-­‐13   Nov-­‐13   Jan-­‐14   Mar-­‐14   May-­‐14   Jul-­‐14   Sep-­‐14   Nov-­‐14   Jan-­‐15   Mar-­‐15   May-­‐15   Jul-­‐15   Sep-­‐15   Nov-­‐15   Tracking  the  Cumula@ve    Ins@tu@on  Rate  
  • 5. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 5 PTAB AIA Trial Outcomes Outcome   Count   Percentage   Final Written Decision Received   684   46.6%   Institution Denied   299   20.4%   Settled Post-Institution   264   18.0%   Settled Prior to Institution   146   9.9%   Request for Adverse Judgment   59   4.0%   Institution Vacated; Case Terminated   10   0.7%   Petitioner Abandoned Petition   4   0.3%   Pending   1   0.1%   Patent Owner No Response (Claims Cancelled)   1   0.1%  
  • 6. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 6 Statutory Filing Bar: Civil Action 35 U.S.C. §315(a): (1) Inter partes review barred by civil action. An inter partes review may not be instituted if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of a patent •  Counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent. 35 U.S.C. §315(a)(1) •  DJ of non-infringement is not a civil action challenging the validity of a claim of a patent [Ariosa, IPR2012-00022] •  Filed does not mean “filed and served” [Anova, IPR2013-00114] •  Dismiss DJ action w/o prejudice “leaves parties as if action had never been brought.” [Butamax, IPR2013-00539]
  • 7. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 7 Statutory Filing Bar: 1-Year Bar 35 U.S.C. §315(b): An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent. •  Though statute does not refer to a “civil action,” this is how the Board has interpreted this section. An ITC action does not qualify, nor does a complaint in an arbitration. See Amkor, IPR2013-00242, Paper 98.
  • 8. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 8 The 1-Year Bar, cont. •  An IPR directed to amended claims of a reexamined patent, where the original patent was the subject of an infringement complaint served more than a year earlier, is barred. [BioDelivery Services, IPR2013-00315] •  An IPR triggered by a second infringement complaint filed and served less than a year earlier but after a first infringement complaint for the same patent filed and served more than a year earlier is barred. [Apple, IPR2013-00348] •  Infringement complaint served more than one year earlier but dismissed without prejudice does not trigger the bar. [Macuato, IPR2012-00004]
  • 9. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 9 Real Party in Interest (RPI) •  Practice Guide states: •  “what constitutes a real party in interest or privy is a highly fact- dependent question” (77 FR 6884) •  “actual control or the opportunity to control the previous proceeding is an important clue that such a relationship existed” (77 FR 6884) •  “[f]actors for determining actual control or the opportunity to control include existence of a financially controlling interest in the petitioner.” (77 FR 6884) •  “For example, a party that funds and directs and controls an IPR or PGR petition or proceeding constitutes a ‘real party-in-interest,’ even if that party is not a ‘privy’ of the petitioner” (77 FR 48760)
  • 10. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 10 RPI or RIP •  It includes determining the “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, IPR2013-00606]. •  When an error in identifying RPI was minor “because the current entities are legal successors to their original entities” the PTAB allowed petition to keep its original filing date. [Valeo, IPR2014-01203] •  Where the Petitioner failed to identify all RPIs and amending filing date would result in time-barred petition, the PTAB terminated IPR proceedings. [Corning, IPR2014-00440]
  • 11. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 11 325(d) Discretion: Second bites of the apple •  35 U.S.C. § 325(d): In determining whether to institute or order a proceeding … the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. •  whether a previous petition was instituted/remains pending; •  whether the second petition was brought by the same petitioner •  whether the second petition uses the same or different prior art as the previous petition; •  whether the second petition challenges the same claims as in the first petition; •  whether the second petitioner faces a statutory one-year bar under 35 U.S.C. § 315(b); •  whether the second petition presents new declaration evidence; and •  whether the second petitioner could have sought joinder with an earlier proceeding.
  • 12. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 12 Joinder: Discretionary •  PO or petition may request joinder via motion, no later than one month after the institution date of any IPR for which joinder is requested. 37 C.F.R. § 42.122 (b) •  cannot join if base proceeding terminated [Apple, IPR2013-00354 and IPR2014-00061] •  party is not required to file motion for joinder simultaneously with petition [Apple, IPR2013-00348] •  one month time period can be waived for special circumstances [IPR2013-00495 (waived); IPR2013-00584; IPR2014-00061 (not waived)] •  secondary (understudy) party may assume first chair role if parties settle [IPR2013-00495] •  Joinder is for joining parties, not issues [SkyHawke, IPR2014-01485]
  • 13. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 13 Priority Challenges: IPRs and Prior Art In IPRs: •  The Board addressed Petitioner's priority challenge in 63 Institution Decisions and 7 FWDs •  Out of 63 Institution Decisions: •  priority challenge successful in 30 cases (48%) •  priority challenge unsuccessful in 17 cases (27%) •  Priority challenge moot in 16 cases (25%) •  The Petitioner was successful in maintaining priority challenge in all 7 FWDs
  • 14. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 14 Priority Challenges: IPRs and Prior Art •  An attack on a priority claim based on 112, 1st paragraph is not prohibited in an IPR [Rackspace, IPR2014-0058] •  Priority challenge failed when it relied upon the same 112, 1st paragraph issue that was raised during prosecution and overcome [Prism Pharma, IPR2014-00315] •  Priority challenge succeeded when it relied upon the same 112, 1st paragraph issue that was raised and overcome during prosecution of a related patent application, but scope of claims in challenged patent were significantly different [Daiichi Sankyo, IPR2015-00291]
  • 15. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 15 Priority Challenges: PGR Eligibility In PGRs: •  Priority chain challenged in one PGR in order to turn patent from pre-AIA patent to post-AIA patent [see Inguran, PGR2015-00017] •  Priority challenge successful and PGR instituted •  Important because patent otherwise not eligible for PGR •  PGR opens door to 112, 101, etc., in addition to prior art based challenges
  • 16. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 16 Prima Facie Attack: Prior Art Date To qualify as 102(e) prior art by virtue of an earlier effective filing date, a prior art patent or published application’s claims must have 112, 1¶ support in earlier-filed application •  PTAB held challenged claims not unpatentable in FWD where petitioner failed to demonstrate claims of 102(e)(1) published application or 102(e)(2) patent had 112, 1¶ support in earlier- filed provisional or nonprovisional application •  Vmware, IPR2014-01304 and -01305 (102(e)(2)) •  Ariosa, IPR2014-01093 (102(e)(1)) •  PTAB expanding CAFC decision in Dynamic Drinkware v. National Graphics, 2015-1214
  • 17. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 17 Motions to Exclude: Fatal evidentiary gap •  Prior art not actually prior art--authenticated publication date not shown •  In TRW Automotive [IPR2014-01347] all grounds relied upon a reference that PO moved to exclude as unauthenticated •  PTAB excluded reference and petitioner’s case fell apart •  FWD confirmed all challenged claims
  • 18. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 18 Cannot Appeal Institution Decision •  All Federal Circuit appeals from institution decision, even on standing issues, dismissed •  In re Procter and Gamble Co. – mandamus is not a proper vehicle for challenging institution of IPR •  In re The University of Illinois – statutory scheme precludes the court from hearing an appeal from the Director’s decision to institute •  In re Versata – statutory provisions applicable to post-grant review contain an identical bar to appellate review of institution determinations •  All district court appeals from institution decision, even on standing issues, dismissed •  Mentor Graphics Corp. v. Rea, EDVA – Institution decision is not a final agency action, and is not reviewable by the EDVA. Can appeal to CAFC at conclusion of IPR. •  Dominion Dealer Solutions, LLC v. Lee, EDVA – Institution decision is not a final agency action, and is not reviewable by the EDVA
  • 19. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 19 Stays: District Court •  District courts are generally granting stays •  Over 65% of contested motions to stay have been granted •  BUT…Most district courts are waiting until institution before even considering a motion to stay •  IPR •  310 stays granted by district courts pending the outcome of an IPR (140 stipulated, 4 sua sponte) •  88 stays denied by district courts pending the outcome of an IPR (1 stipulated) •  CBM •  57 stays granted by district courts pending the outcome of a CBM (20 stipulated) •  16 stays denied by district courts pending the outcome of a CBM
  • 20. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 20 Estoppel: Petitioner in Dist. Ct. •  Estoppel in IPR applies to “prior art consisting of patents or printed publications.” [Redline Detection IRP2013-00106] •  Some courts may apply estoppel before a FWD [Invensys Sys. v Emerson Elec. (E.D. Tex)] •  But others may not [National Oilwell Varco v Omron Oilfield & Marine (W.D. Texas)]
  • 21. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 21 Estoppel: at PTAB •  Petitioner: •  PTAB denied a second IPR petition under the estoppel provision when the grounds in the second IPR differed from those in the first but the underlying art was the same [Dell, IPR2015-00549] •  Patent Owner: •  estoppel under rule 42.73(d)(3) applies only after all appeals have been exhausted [SDI Technologies, Inc. IPR2014-00343]
  • 22. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 22 AIA Appeals to the CAFC Total Number of Appeals Docketed   451   Appealed from IPR Final Written Decisions   382   Appealed from CBM Final Written Decisions   69   Appeals from Non-Final Decisions   22   Appeals by Patent Owners   301   Appeals by Petitioners   69   Number of Cross Appeals   40   Total Number of Mandamus Petitions   11   Petitions from decisions in IPR proceedings   10   Petitions from decisions in CBM proceedings   1   Impact  on  the  Federal  Circuit   §  Docketed  104  appeals  in  2014,  309  in  2015,  and  38  in  2016  (TYD)   §  The  vast  majority  of  appeals  are  pursued  by  patent  owners   §  Cross  appeals  represent  two  appeals  based  on  one  decision  
  • 23. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 23 AIA Appeals to the CAFC Cases Submitted to the Federal Circuit 90 Percentages Decided 60 Affirmed 56 93% Affirmed Affirmed Fed. Cir. R. 36 34 Affirmed Non-Precedential 12 Affirmed Precedential 10 Remanded 3 5% Remanded Reversed 1 2% Reversed Dismissed 8 Pending 22 Impact  on  the  Federal  Circuit   §  Over  90%  of  appeals  decided  on  the  merits  have  been  affirmed   §  Over  50%  of  decisions  issued  are  Rule  36  summary  affirmances   §  Almost  10%  of  appeals  have  been  involuntarily  dismissed  
  • 24. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 24 Outcomes Observations •  Roughly 50% of final decisions are appealed to the Federal Circuit, and the vast majority of those are by losing patent owners •  In front of the Federal Circuit, appellants are losing over 90% of the time with Rule 36 affirmances deciding over 50% of cases •  high affirmance rate is a natural consequence of the highly deferential standard of review applicable to the majority of issues appealed by parties (e.g., substantial evidence, abuse of discretion, arbitrary and capricious) •  The Court appears to be handling the volume by issuing Rule 36 affirmances and aggressively consolidating related cases •  The Court appears to be staying on track in issuing opinions within 90 days of oral argument, but a calendaring backlog is emerging
  • 25. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 25 Significant Cases In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015) §  Upheld BRI as appropriate claim construction standard §  Institution decision is not appealable, even from final decision §  Board not strictly limited to grounds raised in the petition Dynamic Drinkware, LLC v. Nat’l Graphics, 800 F.3d 1375 (Fed. Cir. 2015) §  There is no presumption that a patent is entitled to its priority claim §  Burden of production shifts to establish/rebut prior art status in an IPR, but §  Ultimate burden of persuasion stays with petitioner to prove unpatentability Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) §  PTAB’s determination regarding the filing bar of 315(b) is not appealable Ethicon Endo v. Covidien, 2016 WL _______ (Fed. Cir. Jan. 13, 2016) §  It is within the Office’s statutory authority to delegate both the decision to institute and final written decision to the same panel
  • 26. S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 26 Questions? Deborah Sterling, Ph.D., Director dsterlin@skgf.com ▪ 202.772.8501