This segment, though last, is arguably the most important. It will discuss issues that come into being as a result of co-pending proceedings with U.S. district court litigation. These issues include estoppel, claim construction, and validity determinations. To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/interplay-with-district-court-litigation-2020/

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5. Disclaimer
The material in this webinar is for informational purposes only. It should not be considered
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6. Meet the Faculty
MODERATOR:
Eugene Goryunov - Haynes & Boone
PANELISTS:
Jeremy Albright - Norton Rose Fulbright
Mike Cohen - Baxter Healthcare Company
Jon Stroud - Unified Patents
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7. About This Webinar –
Interplay With District Court Litigation
This segment, though last, is arguably the most important. It will discuss issues that come
into being as a result of co-pending proceedings with U.S. district court litigation. These
issues include estoppel, claim construction, and validity determinations.
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8. 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.
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9. 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
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10. Episode #3
Interplay With District Court Litigation
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11. Strategic Considerations
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12. Overview of Disadvantages
• Estoppel
• Limited opportunity to develop record
• Very limited opportunity to present true testimony
• Patent Owner has the opportunity to amend claims
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13. Stays of Litigation
• Patent involved in Patent Owner v. Petitioner litigation: 82%
• Granting motion to stay litigation pending PTAB decision
 IPR: 65%
 CBMR: 62%
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14. Stays of Litigation
• Federal Circuit has considered district courts denying a stay
o VirtualAgility Inc. v. SalesForce.com, Inc., 2014 WL 3360806 (Fed. Cir. July 10, 2014)
o Versata Software, Inc. v. Callidus Software, Inc., 2014-1468 (Fed. Cir. Nov. 20, 2014)
o Intellectual Ventures II, LLC v. JPMorgan Chase, 2014-1724 (Fed. Cir. Apr. 1, 2015)
• Stay decisions in district court vary significantly by jurisdiction
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15. DJ Actions
• If Petitioner files DJ of invalidity first, no IPR or CBMR
o 35 U.S.C. § 315(a)(1); 37 C.F.R. 42.101(a);
o http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for
• Consider filing DJ of noninfringement; assert invalidity as defense to responsive claim for
infringement
 Affirmative defense of invalidity to a counterclaim of infringement plead by Patent
Owner does not deprive Petitioner of standing
o E.g., IPR2012-00022, Paper 20 (Feb. 12, 2013); CBM2014-00035, Paper 12 (Apr.
25, 2014)
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16. Estoppel
• IPR/PGR:
 At the PTO/Court/ITC: Cannot maintain another proceeding on a basis Petitioner
“raised or reasonably could have raised”
o PGR: 35 U.S.C. § 325(e); IPR: 35 U.S.C. § 315(e)
• CBMR:
 At the PTO: Cannot maintain another PTO proceeding on a basis Petitioner “raised or
reasonably could have raised”
o 35 U.S.C. § 325(e)(1); 37 C.F.R. 42.73(d)
 At Court/ITC: Cannot maintain another proceeding on a basis Petitioner actually raised
o PL 112-29, Sec. 18(a)(1)(D) (Sept. 16, 2011)
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17. Litigating a PTAB Trial
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18. Timline/Filings
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19. Timeline/Filings – Motion to Amend Pilot
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20. Timeline/Filings – Motion to Amend Pilot
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21. 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
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22. 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 http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for
o 84 Fed. Reg. 9497 (Mar. 15, 2019)
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23. Discovery in PTAB Trials
• Mandatory Initial Disclosures
o Patent Trial Practice Guide, 77 Fed. Reg. 48761-62; 37 C.F.R. 42.51(a)
• Routine Discovery
o Patent Trial Practice Guide, 77 Fed. Reg. 48761; 37 C.F.R. 42.51(b)(1)
• Additional Discovery
o Patent Trial Practice Guide, 77 Fed. Reg. 48761; 37 C.F.R. 42.51(b)(2)
• Live Testimony
o Patent Trial Practice Guide, 77 Fed. Reg. 48762; 37 C.F.R. 42.53
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24. Mandatory Initial Disclosures
• With Agreement:
 Must submit any agreement no later than preliminary response
o 37 C.F.R. 42.51(a)(1)
 Option 1: Modeled after FRCP 26
 Option 2: Intended for petitions based at least in part on “prior non-published public
disclosure” or “obviousness”
o Patent Trial Practice Guide, 77 Fed. Reg. 48761-62
• Without Agreement: Any party can seek by motion
o 37 C.F.R. 42.51(a)(2)
• Fairly uncommon
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25. Routine Discovery
• Includes:
 Production of any exhibit cited in a paper or testimony;
 Cross-examination of opposing party’s declarants; and
I nformation inconsistent with positions taken in trial
o 37 C.F.R. 42.51(b)(1)
• PTAB authorization not required for such discovery
o Patent Trial Practice Guide, 77 Fed. Reg. 48761
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26. Additional Discovery
• With Agreement: Parties may agree to additional discovery
o 37 C.F.R. 42.51(b)(2)
• Without Agreement: May be requested by motion
o 37 C.F.R. 42.51(b)(2)
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27. Additional Discovery
• Standard for Requesting Additional Discovery:
 PGR/CBMR: Requester must show “good cause” for discovery
o 35 U.S.C. § 326(a)(5); 37 C.F.R. 42.224
 IPR: Discovery must be in the “interest of justice”
o 35 U.S.C. § 316(a)(5); 37 C.F.R. 42.51(b)(2)
 Requests for specific documents, with a showing of relevance and unsuccessful
attempts to obtain are more likely to be granted
o E.g., IPR2014-01385, Papers 15, 19 (Mar. 27, 2015; May 4, 2015)
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28. Standard for Additional Discovery
• Evidence is “in the interest of justice” if it satisfies five factors:
 discovery must be more than a possibility and mere allegation;
 requests cannot alter trial timing under pretext of discovery;
 requests should not seek what the requestor can generate itself;
 requests should be easily understandable; and
 requests must not be overly burdensome to answer
o E.g., IPR2012-00001, Paper 26 (Mar. 5, 2013)
• Same factors analyzed under CBMR “good cause standard”
o E.g., CBM2013-00005, Paper 32 (Mar. 29, 2013)
• Very few motions for additional discovery have been granted
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29. Evidentiary Issues in PTAB Trials
• Admissibility: Governed by the Federal Rule Evidence
o 37 C.F.R. 42.62
• Objections to Evidence: Must be filed
 Pre-institution: Serve within 10 court days of institution
 Post-institution: Serve within 5 court days of service
o 37 C.F.R. 42.64(b)(1)
• Response to Objection: May serve supplemental evidence within 10 business days of
objection
o 37 C.F.R. 42.64(b)(2)
• Motions to Exclude: Must file to preserve objection
o 37 C.F.R. 42.64(c); Patent Trial Practice Guide, 77 Fed. Reg. 48767
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30. Settlement and Early Termination
• Joint request may terminate trial
 Joint request must be filed prior to decision on the merits
 Motion to terminate may be denied if the proceedings are well developed and ready for
decision
o E.g., IPR2013-00016, Paper 31 (Dec. 11, 2013)
• Underlying settlement agreement must be filed with the PTAB
o PGR/CBMR: 35 U.S.C. § 327; IPR: 35 U.S.C. § 317(a)
• No estoppel attaches if trial is settled
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31. Oral Hearing
• Can be requested
o PGR/CBMR: 35 U.S.C. § 326(a)(10); IPR: 35 U.S.C. § 316(a)(10)
• No new evidence or argument is permitted
o E.g., IPR2013-00033, Paper 118 (Oct. 23, 2013)
• Demonstrative exhibits should serve merely as visual aids
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32. Final Written Decision and Appeal
• Final Written Decision: Address patentability and new claims
o PGR/CBMR: 35 U.S.C. § 328(a) and (b); IPR: 35 U.S.C. § 318(a) and (b)
• Appeal: Losing party may appeal to the Federal Circuit
o PGR: 35 U.S.C. § 329; 35 U.S.C. § 141(c); IPR: 35 U.S.C. § 319; 35 U.S.C. §
141(c)
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33. About the Faculty
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34. About The Faculty
Eugene Goryunov - sstarzyk@financialpoise.com
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.
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35. About The Faculty
Jeremy Albright - jeremy.albright@nortonrosefulbright.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.
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36. About The Faculty
Mike Cohen - michael_cohen@baxter.com
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.
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37. About The Faculty
Jon Stroud - jonathan@unifiedpatents.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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38. 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 info@financialpoise.com 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.
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39. About Financial Poise
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