Posturing ip rs for settlement (2016-03-24)
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A petitioner has to carefully craft IPR petitions to obtain institution of trial with the PTAB. But another way to “win” an IPR is to posture the petition filing to encourage early settlement with the patent owner. Learn how IPR petitions are perceived by both the petitioner and patent owner at various stages of an IPR and strategies that maximize early settlement potential.
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Posturing ip rs for settlement (2016-03-24)
- 1. Posturing IPRs for Se0lement Timothy E. Bianchi Patent A0orney Schwegman Lundberg Woessner, PA Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 1
- 2. About Tim Bianchi • M.S.E.E. Patent A0orney – Electronics, Medical Devices, SoLware • Principal, Schwegman Lundberg Woessner – 120 patent a0orneys in Minneapolis, San Jose, AusNn + – Patent Prep & ProsecuNon – Opinions and Due Diligence – LiNgaNon Support – Post-‐Grant Proceedings Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 2
- 3. About Today’s Talk • Brief IntroducNon With IPR StaNsNcs • PeNNoners and Patent Owners Viewpoints – Why they overlook opportuniNes to se0le – Benefits • For both ParNes, Se0lement: – Saves Nme and money – Provides Certainty and reduces risk • Timing Factors for PotenNal Early Se0lement • Posturing Your IPR for Early Se0lement Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 3
- 4. A Few StaNsNcs – Total AIA PeNNons Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 4 Source: USPTO Data Current to 2/29/2016
- 5. PeNNons Per Year Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 5 Source: USPTO Data Current to 2/29/2016
- 6. IPR Decisions Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 6 Source: USPTO Data Current to 2/29/2016
- 7. IPR Se0lements Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 7 Source: USPTO Data Current to 2/29/2016
- 8. CBM Decisions Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 8 Source: USPTO Data Current to 2/29/2016
- 9. CBM Se0lements Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 9 Source: USPTO Data Current to 2/29/2016
- 10. PeNNoner Psychology • Patent has every appearance of being invalid – Known publicaNon prior art “data points” – Concern about certain dependent claims? • NonpublicaNon Prior Art also Known – Non-‐publicaNon prior art can be useful in patent liNgaNon if IPR not successful • IPRs are staNsNcally successful, but if I don’t win on insNtuNon of IPR on at least the relevant claims it will be harder to defend against this patent • Conclusions: – Patent Owner is not being reasonable – Company Will Not Pay For License/Patent – As long as insNtuNon and final wri0en decision against patent is likely, PeNNoner will forge ahead Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 10
- 11. PeNNoner Wants to Know • Will the IPR be successful? – Against all relevant claims? • Are there relevant dependent claims that are likely to survive the IPR? – ParNal insNtuNon and/or parNal invalidity is not a full soluNon • Can I get a claim construcNon that will resolve issues for me in a parallel liNgaNon? • Does the Patent Owner have a right to file conNnuaNons? • Will this challenge of the patent help me or help my compeNNon or both? Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 11
- 12. Psychology of Patent Owner • My claims were allowed for a reason – The Patent Office issued the claimed invenNon – Want to tell my story of why my claims are patentable over the prior art • The peNNon is flawed – It has defects – The cited prior art is not on point • Or: prior art is analogous, but I have dependent claims that should survive the IPR • If my patent claims are insNtuted for trial, it could ruin my chances to enforce patent against PeNNoner and against other defendants • Patent Owner wants to fight the IPR, but insNtuNon is a serious threat Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 12
- 13. Patent Owner Wants to • Tell a consistent story with its patents – How can that be done with BRI v. Phillips claim construcNons? • Use the IPR to strengthen its patent(s) – That which does not kill my patents, only makes them stronger – But avoid joinder opportuniNes for other potenNal PeNNoner Defendants • Educate other infringers about the strength if its pornolio Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 13
- 14. IPR Timeline (early stages) Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 14 PeNNoner Patent Owner Early Se0lement OpportuniNes Data Gathering PeNNon Filing PeNNon Prep Data Gathering Prelim Response Prep Prelim Resp Filing InsNtuNon Decision 3 Mos. Max Pre-‐Prep Pre-‐Filing Pre-‐Prelim Resp Pre-‐ID
- 15. IPR Timeline (cont’d) Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 15 PeNNoner Patent Owner Data Gathering PO Response PO Response Prep Data Gathering Reply Prep PeNNoner Reply InsNtuNon Decision Hearing/ FWD
- 16. PeNNoners Can Encourage Early Se0lement • Develop case thoroughly • Need best prior art and arguments • Know how you stand compared to other defendants – RelaNve sizes of liability – Timing of suits/bars – IPR team factors – ComplicaNng factors • e.g. real party in interest • Work with liNgaNon team • Communicate the strengths of PeNNoner’s IPR without undermining it – PeNNoner needs to show that it understands the target patent, its technology, the prior art, and the process be0er than Patent Owner understands it • SomeNmes filing is the only way to resolve the case Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 16
- 17. Patent Owners Can Also Encourage Early Se0lement • Analyze patent at issue promptly in either case: – Upon a threat of IPR (no peNNon filed) • Communicated by potenNal peNNoner or liNgaNon team – ALer IPR peNNon is filed • CriNcal to get as much informaNon as possible and review the asserNons using experience and an open mind • If a peNNon is filed, and negoNaNon is not a likely opNon, prepare a strong Patent Owner’s Preliminary Response • Be realisNc about the prior art and amendments – Broadest reasonable interpretaNon • Use other tools Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 17
- 18. Higher PotenNal for Se0lement Before the InsNtuNon Decision When . . . • PeNNoner Defendant is not the Patent Owner’s main target – And especially If: • PeNNoner has a strong IPR team and strong IPR peNNon • Other Defendants are barred under the 315(b) bar for failure to Nmely file an IPR peNNon – Joinder is their only entry to IPR Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 18
- 19. Higher PotenNal For Se0lement ALer InsNtuNon Decision When • ParNal InsNtuNon of Claims – Especially when PeNNoner is barred or effecNvely barred from future IPR filings • MulNple Patent Cases with Many PeNNons – Especially with parNal insNtuNon of patents/claims Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 19
- 20. Discussion • If QuesNons, please contact – Tim Bianchi – (612) 373-‐6912 – tbianchi@slwip.com – See my blog on patent prosecuNon, liNgaNon and post-‐grant topics at www.ReexamLink.com Copyright 2016 Timothy E. Bianchi -‐ Posturing IPRs for Early Se0lement 20