Pros and Cons: PTAB vs. District Courts
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PTAB (Patent Trial and Appeal Board) or district court? Where should I bring my patent validity challenge? Hundreds of lawyers and their clients decide every year that the PTAB is their first choice of venue to invalidate a patent. Described as a “death squad,” the PTAB does indeed offer a number of advantages over a traditional invalidity defense in court. The claim interpretation is broader; the evidentiary standard is lower; the PTAB judges are technically trained and understand very well what is legally obvious; PTAB trials are fast and less expensive than traditional court litigation; and district courts are often happy to stay a patent case pending a PTAB trial. It is not surprising that so many opt to have their patent validity challenges decided by the PTAB rather than a lay jury in eastern Texas. Yet, behind the allure of an easy, quick, cheap victory at the PTAB are serious risks for the unwary, and the PTAB is not the best venue for all validity challenges. This webinar will discuss in detail the various pros and cons of the PTAB as an alternative (and sometimes an adjunct) to district court for patent validity challenges.
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Pros and Cons: PTAB vs. District Courts
- 1. Renaissance IP Law Group PTAB vs. District Courts: Pros & Cons Ma#hew C. Phillips Kevin B. Laurence Renaissance IP Law Group LLP February 11, 2016 Patexia Webinar 1
- 2. Renaissance IP Law Group Agenda • Tools for Challenging Patent Validity • Review of AIA Trial Procedures • AIA Trial StaMsMcs • Choosing a Forum to Challenge Validity 2
- 3. Renaissance IP Law Group Tools for Challenging Patent Validity 3
- 4. Renaissance IP Law Group Tools for Challenging US Patents (Pre-‐AIA Patents) Other Basis (§§ 101, 112) Prior Art (§§ 102, 103) Inter Partes Review Ex Parte Reexam LiHgaHon Printed PublicaMon Charged with Infringement of Bus. Meth. Pat. Covered Business Method Patent Review at USPTO 4
- 5. Renaissance IP Law Group Tools for Patent Challengers (AIA FITF Patents UnHl 9/16/20) Inter Partes Review Outside IniMal 9-‐Mo. Window Other Basis (§§ 101,112) Prior Art (§§ 102, 103) Ex Parte Reexam LiHgaHon Printed PublicaMon Covered Business Method Patent Review Post-‐Grant Review Inside IniMal 9-‐Mo. Window Charged with Infringement of Bus. Meth. Pat. Outside IniMal 9-‐Mo. Window at USPTO 5
- 6. Renaissance IP Law Group Tools for Challenging US Patents (AIA FITF Patents ARer 9/16/20) Inter Partes Review Outside IniMal 9-‐Mo. Window Other Basis (§§ 101, 112) Prior Art (§§ 102, 103) Ex Parte Reexam LiHgaHon Printed PublicaMon Post-‐Grant Review Inside IniMal 9-‐Mo. Window at USPTO 6
- 7. Renaissance IP Law Group Review of AIA Trial Procedure 7
- 8. Renaissance IP Law Group Full Timeline for Review Proceeding ≤ 6 months ~2.5 years Prior to Trial ≤ 12 months Trial ~13 months Rehearing & Appeal 8
- 9. Renaissance IP Law Group Pre-‐Trial Proceedings Prior to Trial Trial Rehearing & Appeal NoMce of Filing Date Review ? YES PeMMon 3 mo. NO 1-‐2 wks. Non-‐InsMtuMon Decision Preliminary Response up to 3 mo. InsMtuMon Decision 9
- 10. Renaissance IP Law Group IniMal Conference Call Final Wri#en Decision InsMtuMon Decision (Order) Appeal CerMficate Se#lement Agreement Oral Hearing Patent Owner Discovery Appeal Procedure for Trial (Without MoHon to Amend) PeMMoner Discovery MoMons Reply Response ? DD1 DD2 DD4-DD6 DD7 10
- 11. Renaissance IP Law Group Trial Timeline (Current Typical) Owner Discovery Period PeMMoner Discovery Period Owner Discovery Period MoMons to Exclude Evidence, Etc. (DD4-‐DD6) 1 mo. 2 mos. 2 mos. 11
- 12. Renaissance IP Law Group AIA Trial StaHsHcs 12
- 13. Renaissance IP Law Group Review PeHHon Filings (as of Dec. 31, 2015) 1 10 100 1000 10000 IPR CBM PGR IPR CBM PGR IPR CBM PGR IPR CBM PGR IPR CBM PGR FY 2013 FY 2014 FY 2015 FY 2016 FY 2012 13
- 14. Renaissance IP Law Group Review PeHHon Filings by Technology (FY2014-‐FY2016 through Dec. 31, 2015) Electrical/ Computer 62% Mechanical & Bus. Methods 23% Chemical 6% Bio/Pharma 9% Design 0% 14
- 15. Renaissance IP Law Group Trial InsHtuHon Rate (as of Dec. 16, 2015) 0.0% 10.0% 20.0% 30.0% 40.0% 50.0% 60.0% 70.0% 80.0% 90.0% 100.0% IPR CBM PGR IPR CBM PGR IPR CBM PGR IPR CBM PGR FY 2013 FY 2014 FY 2015 FY 2016 15
- 16. Renaissance IP Law Group IPR Survival Rate (DisposiHon of Challenged Claims) (as of Dec. 31, 2015) Not Subject to Trial 57% Sebled 13% Canceled or Disclaimed by Patent Owner 5% Found Unpatentable 21% Found Patentable 4% 16
- 17. Renaissance IP Law Group IPR Survival Rate (DisposiHon of Claims Subject to Trial) (as of Dec. 31, 2015) Sebled 31% Canceled or Disclaimed by Patent Owner 11% Found Unpatentable 49% Found Patentable 9% 17
- 18. Renaissance IP Law Group IPR Survival Rate (DisposiHon by FWD Only) (as of Dec. 31, 2015) All Claims Unpatentable 72% Some Claims Unpatentable 15% No Claims Unpatentable 13% 18
- 19. Renaissance IP Law Group Choosing a Forum for Challenging Validity 19
- 20. Renaissance IP Law Group Challenge in Court or PTAB? • Assuming Both are Available for Your Validity Challenge • PotenMal Differences – Nature of decision maker – Claim construcMon/interpretaMon – EvidenMary burdens – Nature of supporMng evidence – Discovery opportuniMes and burdens – ParMcipaMon rights – Claims frozen or fluid – Number of arguments that can pracMcally be made – Effect of overall equiMes – Costs – Timing – Standing requirements – Anonymity 20
- 21. Renaissance IP Law Group • Decision Maker (PTAB or Court) – Comfort zone for invalidaMng duly granted patent claims • Comfort reaching a conclusion different from the original examiner? • Comfort finding claims obvious? – Different technical acumen • How complex are your facts? • Is the conclusion apparent once the facts are “properly” understood? – Different predilecMon or facility with legal doctrines • Secondary consideraMons of nonobviousness • Priority enMtlement • Inherent disclosure Challenge in Court or PTAB? 21
- 22. Renaissance IP Law Group ConvenHonal Wisdom (Generally) in LiHgaHon and Review Proceedings AnHcipaHon Obviousness LiMgaMon Review Proceeding 22
- 23. Renaissance IP Law Group Best Bases for Aback at PTAB IPR 103 > 102 PGR PGR 101 > 103 > 102 CBM 23
- 24. Renaissance IP Law Group • Claim ConstrucMon/InterpretaMon – PTAB uses broadest reasonable interpretaMon (“BRI”) – Courts • Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cri. 2005) (en banc) • More likely narrow • Less predictable – Is the prior art within the broadest reasonable meaning of the claims yet different from the disclosed embodiment(s)? Challenge in Court or PTAB? 24
- 25. Renaissance IP Law Group • EvidenMary Burdens – Preponderance standard in PTAB – Clear-‐and-‐convincing standard in court – Ask yourself: Are the issues so close that the evidenMary burden might make a difference? • Is the prior art arguably ambiguous in its disclosure of a claim limitaMon? • Is the prior art status of the printed publicaMon a close quesMon? • Does the outcome turn on disputed, equally reasonable and supported expert opinions? Challenge in Court or PTAB? 25
- 26. Renaissance IP Law Group • Nature of SupporMng Evidence – Federal Rules of Evidence apply in both court & PTAB • Rare for PTAB to exclude evidence – At PTAB: • Evidence typically must be “on the paper” – Documents – DeclaraMons – DeposiMon transcripts • Rare excepMons for live tesMmony at oral hearing in AIA trial – Courts permit all types of evidence, incl. live tesMmony – Do you have a great witness to bring your posiMons to life? Challenge in Court or PTAB? 26
- 27. Renaissance IP Law Group • Discovery OpportuniMes and Burdens – In court, discovery is wide ranging – In PTAB, discovery is very limited • DeposiMons of declarants • AddiMonal discovery is rarely granted – Ask yourself: • Do you need any discovery from the patent owner to prove your invalidity case? • Might the patent owner benefit from discovery from you (e.g., to prove secondary consideraMons of non-‐obviousness based on your alleged infringement)? Challenge in Court or PTAB? 27
- 28. Renaissance IP Law Group • ParMcipaMon Rights – Full parMcipaMon rights in court – Full parMcipaMon rights in PTAB • PeMMon • Depose patent owner’s declarants • Reply to patent owner’s response • Oral argument – ReexaminaMon, however, typically offers no parMcipaMon rights aner filing of request Challenge in Court or PTAB? 28
- 29. Renaissance IP Law Group • Claims Frozen or Fluid – Claims are frozen in court – Claims are fluid in reexaminaMon – Claims are essen4ally frozen in review • MoMons to amend are rarely sought • MoMons to amend are rarely granted • Reissue and reexaminaMon are other opMons • Any amendment must be narrowing (except in broadening reissue) • Almost all amendments trigger intervening rights – Does the specificaMon support a limitaMon absent from the prior art but present in the accused device? Challenge in Court or PTAB? 29
- 30. Renaissance IP Law Group • Number of Arguments – Limits in court • Page limits • Time limits • PracMcal limits on judge’s paMence & indulgence – Limits in AIA trials • Page limits • Redundancy doctrine • Best to focus on a few (1-‐3) well developed challenge grounds – A mulMplicitous approach is be#er suited for reexaminaMon Challenge in Court or PTAB? 30
- 31. Renaissance IP Law Group • Effect of EquiMes – Court • Lines between issues can be blurry • Decision maker “takes it all in” • Juries can be especially influenced by overall equity • Juries seem to be especially moved by inventors – PTAB • Bigger picture does not usually come through • Perhaps some insMtuMonal bias against NPEs? Challenge in Court or PTAB? 31
- 32. Renaissance IP Law Group • Timing – One-‐year bar for IPR • Must file IPR peMMon before 1-‐year anniversary of service of infringement complaint • No such bar for CBM or PGR – No AIA trial possible aner DJ acMon for invalidity – Stay • Court may stay liMgaMon pending AIA trial • Special, more liberal stay statute for CBMs – Estoppel • FWD in AIA trial triggers estoppel against peMMoner • IPR & PGR: Scope of estoppel in court is validity challenges “raised or reasonably could have been raised.” • CBM: Scope of estoppel in court is just validity challenges “raised.” • Don’t agonize over estoppel. Raise your validity challenges in the forum where they are most likely to succeed (PTAB). Challenge in Court or PTAB? 32
- 33. Renaissance IP Law Group • Costs – Differ by order(s) of magnitude – LiMgaMon >> Review > ReexaminaMon • Standing – No standing requirement to file review peMMon or reexaminaMon request – But beware of standing on appeal • Anonymity – Not possible for liMgaMon or AIA trial – Possible for reexaminaMon Challenge in Court or PTAB? 33
- 34. Renaissance IP Law Group Challenge in Court or PTAB? 34 Factor Court PTAB Decision maker Claim interp./constr. EvidenMary burden SupporMng evid. Discovery ParMcipaMon rights No. of arguments Claim fluidity Effect of equiMes Cost Timing Standing Anonymity
- 35. Renaissance IP Law Group Thank You! 35 Kevin B. Laurence Patent Attorney Direct: (703) 448-8787 kevin.laurence@renaissanceiplaw.com 1940 Duke St., Suite 200 Alexandria, VA 22314 Fax: (503) 517-9919