MBHB-Webinar-PTAB-Williams-Schafer-FINAL-02.25.15

Prevailing Before the PTAB “Death
Squad”: Practical Considerations for
Petitioners and Patent Holders
(Live MBHB Webinar)
Andrew W. Williams, Ph.D.
John M. Schafer
February 25, 2015

Part 1
The Road to Alexandria
•2

The Road to Alexandria
 Two Paths to Petitioning for IPR of a
Patent
 Path #1 – Proactive Petitions
 Path #2 – Reactive Petitions
•3

Proactive Petitions
 Petitioner has prior knowledge of a
potentially challengeable patent
 Cease and Desist Letter
 Prior Art Search
 Orange Book
•4

Proactive Petitions
 Things to consider before preparing a
petition
 Odds of being sued for infringement
 Budget for defending an infringement suit
 Value of potentially accused products
 Claims to challenge
 Importance to the patent owner
 Related patents
 Invalidity Positions
•5

Reactive Petitions
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, real party in interest, or privy of
the petition is served with a complaint
alleging infringement of the patent.
•6
35 U.S.C. §315(b)

Reactive Petitions
 Keyword in the statute is served
 When service is waived, the time for
petitioning does not begin to toll until the
waiver is filed
 1-year bar does not apply if a complaint is
dismissed without prejudice
•7
See, e.g., Motorola Mobility LLC v. Arnouse,
IPR2013-00010, Paper No. 20 (Jan. 30, 2013)
See, e.g., Macuto U.S.A. v. Bos GmbH & KG,
IPR2012-00004, Paper No. 18 (Jan. 24, 2013)

Reactive Petitions
 Determining which claims to challenge
 Challenge asserted claims
 What about the other claims?
•8

Samsung Elecs. Co. LTD v. Fractus, S.A.
 Fractus asserted claims in 4 patents
against Samsung in complaints filed in
2009 and 2013
 Samsung filed petitions for IPR of each
patent within 1 year of the service of the
2013 complaint
 PTAB denied Samsung’s petitions based
on the 2009 complaint
•9
IPR2014-00008, Paper No. 19 (Jan. 2, 2014)

Reactive Petitions
 Determining which claims to challenge
 1-year bar date applies to all claims in a
patent, not just the claim(s) asserted in district
court litigation
 Should consider the patent’s potential impact
on the accused product(s) and future
product(s)
•10

Reactive Petitions
 Things to consider before preparing a
petition
 How many claims to challenge
 Prior art search
 Budget for litigation and IPR
 Value of the accused products and potentially
accused products
 Likelihood of the district court staying the
litigation
•11

Reactive Petitions
 Determining when to file the petition
 File as early as possible
 Could increase the likelihood of the District Court
staying the litigation pending institution/resolution of
the IPR
 File later
 Can evaluate the strength of non-infringement
positions
 More time for prior art searching and evaluation
 Insight into the patent owner’s claim construction
•12

Reactive Petitions
 Considerations for determining when to file
a petition for IPR
 Prior art search timeline
 District Court procedures for patent
infringement suits
 Risk/reward of filing earlier rather than later
•13

Reactive Petitions
 Two doors into the PTAB for reactive
petitions
 Front door – filing within 1-year of service of a
complaint alleging infringement of a patent
 Back door – filing after the 1-year window
closes by joining the petition to an instituted
trial
•14

Target Corp. v. Destination Maternity Corp.
 The PTAB confirmed that the joinder
statute applies to parties and petitions
 While the Target decision is theoretically
precedential, there is a split among the PTAB
judges as to the scope of the §315(c)
•15
IPR2014-00508, Paper No. 28 (Feb. 12, 2015)

Joinder
 To join a petition, the Petitioner should
demonstrate that joining the petition will
not unduly burden the Patent Owner or
delay the instituted trial
 Use same prior art
 Limit the total number of challenges
 File motion to join within one month of
institution
•16

Joinder
 Patent Owner’s objections should attack
the motion to join on all fronts
 Additional cited art will cause delays
 Time to respond
 Differences in scope of claims or meanings of
claim terms
•17

FOR ATTENDANCE TRACKING
PURPOSES PLEASE ENTER THE
PHRASE
“PTAB"
INTO THE WEBEX POLL

Part 2
Nobody Puts the Patent Owner
in a Corner
•19

Patent Owner Responses
 Patent Owner Preliminary Response
 Patent Owner Response
 Motion to Amend Claims
•20

Patent Owner Preliminary Response
 Ability to challenge institution of trial
 Patent Owner’s are overwhelming filing
preliminary responses
•21
http://www.uspto.gov/ip/boards/bpai/stats/021915_aia_stat_graph.pdf

Patent Owner Preliminary Response
 Grounds to Challenge Petition
 Petitioner is statutorily barred from pursuing an IPR
 Petition contains prior art or arguments that were
previously presented at the Office
 Petition fails to identify all real parties-in-interest
 Highlight weaknesses in petitioner’s case of
unpatentability
 Petitioner’s claim construction is improper
 Citation of supporting evidence
•22
http://www.uspto.gov//blog/aia/entry/deep_dive_into_a_patent

Statutory Bar
•23
“An inter partes review may not be instituted if, before
the date on which the petition for such a review is filed,
the petitioner or real party in interest filed a civil action
challenging the validity of a claim of the patent.”
35 U.S.C. § 315(a)(1)
 Dismissal with prejudice bars trial institution
 Dismissal without prejudice does not bar institution
See, e.g., Anova Food, LLC v. Sandau,
IPR2013-00114, Paper No. 17 (Sept. 13, 2013)
See, e.g., Cyanotech Corp. v. Bd. of Trs. of the Univ. of Ill.,
IPR2013-00401, Paper No. 17 (Dec. 19, 2013) (involuntary);
Clio USA, Inc. v. The Procter and Gamble Co.,
IPR2013-00438, Paper No. 9 (Jan. 9, 2014) (voluntary)

Statutory Bar
•24
“A 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 for purposes of this
subsection.”
35 U.S.C. § 315(a)(3)
 “A civil action for a declaratory judgment of non-infringement is not a
civil action challenging the validity of a patent.”
 “[A]sserting an affirmative defense of invalidity is treated differently
than a counterclaim for invalidity, and thus for the purposes of
315(a)(1) cannot be considered a filing of a civil action for invalidity
Ariosa Diagnostics v. Isis Innovation Ltd.,
IPR2012-00022, Paper No. 20 (Feb. 12, 2103)

Statutory Bar
•25
“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, real party in
interest, or privy of the petitioner is served with a
complaint alleging infringement of the patent.”
35 U.S.C. § 315(b)
 Dismissal without prejudice does not bar institution.
 A Motion for Leave to file an amended complaint does
not start the clock.
See, e.g., Macuto U.S.A. v. Bos GmbH & KG,
IPR2012-00004, Paper No. 18 (Jan. 24, 2013)
See, e.g., TRW Auto. US v. Magna Elecs., Inc.,
IPR2014-00293, Paper No. 18 (June 27, 2014)

Statutory Bar
•26
 Infringement counterclaim is “a complaint alleging
infringement of the patent.”
 An intervening reexamination certificate is not a new
patent for the purposes of the statutory bar.
 A second served complaint does not reset the clock for
the purposes of the statutory bar.
See, e.g., St. Jude Med., Cardiology Div., Inc. v. Volvano Corp.,
IPR2013-00258, Paper No. 29 (Oct. 16, 2013)
See, e.g., BioDelivery Scis. Int’l, Inc. v. Monosol RX, LLC,
IPR2013-00315, Paper No. 31 (Nov. 13, 2013)
See, e.g., Accord Healthcare, Inc., USA v. Eli Lilly & Co.,
IPR2013-00356, Paper No. 13 (Oct. 1, 2013)

Previously Presented Arguments
•27
“In determining whether to institute or order a
proceeding . . . the Director may take into account
whether, and reject the petition because, the same or
substantially the same prior art or arguments previously
were presented to the Office.”
 “The practice of . . . . filing serial petitions challenging claims already
involved in an instituted proceeding and asserting arguments and
prior art previously considered by the Board is contrary to the goals
set forth in our statutory mandate and implementing rules. ”
 But, presenting different arguments and new supporting evidence
can shed light on previously considered art.
SAS Inst., Inc. v. Complementsoft, LLC,
IPR2013-00581, Paper No. 15 (Dec. 30, 2013)
See, e.g., Oracle Corp. v. Clouding IP, LLC,
IPR2013-00100, Paper No. 8 (May 16, 2013)
35 U.S.C. § 325(d)

Real Party-In-Interest
•28
“A petition filed under section 311 may be considered
only if – the petition identifies all real parties in interest.”
35 U.S.C. § 312(a)(2)
 “[A]t a general level, the ‘real party-in-interest’ is the party that
desires review of the patent. Thus, the ‘real party-in-interest’ may be
the petitioner itself, and/or it may be the party or parties at whose
behest the petition has been filed. ”
 “A common consideration is whether the non-party exercised or
could have exercised control over a party’s participation in a
proceeding.”
Office Patent Trial Practice Guide,
77 Fed. Reg. 48,680, 48,759 (August 14, 2012)
Office Patent Trial Practice Guide,
77 Fed. Reg. at 48,759

•29
 “SEL has not shown, for example, that the co-defendants
CMO USA, Acer America, ViewSonic, VIZIO, and
Westinghouse necessarily co-authored the Petition or
otherwise exerted control over its contents, or will exert
any control over the remaining portions of this
proceeding. SEL has failed to provide persuasive
evidence that each of the co-defendants in the CMI Case
provided funding for the instant Petition, let alone
exercised control and funding.”
Chimei Innoulux Corp. v. Semiconductor Energy Lab. Co.,
IPR2013-00068, Paper No. 7 (April 24, 2013) (emphasis added)

•30
 “While Gevo contends that, for example, Gevo ‘believes’
DuPont exercised or could have exercised control over
Butamax’s participation in this proceeding through its
involvement in the filing of the Petition; that Butamax’s
board of directors includes at least one or more members
that are also directors at DuPont; and that Butamax’s
declarant is a paid consultant for, and has an ongoing
relationship with DuPont, these allegations do not
establish DuPont’s control over or funding of this
proceeding.”
ButamaxTM Advanced Biofuels LLC v. Gevo, Inc.,
IPR2013-00214, Paper No. 11 (Sept. 30, 2013)
(citations omitted) (emphasis added))

•31
 GEA Process Eng’g, Inc. v. Steuben Foods, Inc.,
 GEA and GEA Procomac S.p.A (“Procomac”) are related
companies within the same family of companies.
 Steuben Foods had filed a complaint against both.
 Procomac did not file, and was not identified in, the petition.
 Procomac inadvertently paid all of the expenses of the petition,
although it refunded payment to GEA.
 Alleged Procomac had no control or evolvement over petition.
 Board found that Procomac had the “opportunity to control that
might reasonably be expected between two formal coparties.”
 Terminated already instituted trial.
IPR2014-00041, Paper No. 135 (Dec. 23, 2014)

New Testimony Evidence
•32
“The preliminary response shall not present new
testimony evidence beyond the already of record, except
as authorized by the Board.”
37 C.F.R. § 42.107(c)
 New evidence may include existing declarations, trial testimony,
deposition testimony, and expert reports
 Can even include testimony evidence created for a related litigation
 Unless the testimony relates to the patentability of any claim
See, e.g., Anova Food, LLC v. Sandau,
IPR2013-00114, Paper No. 11 (June 25, 2013)
See, e.g., B/E Aerospace, Inc. v. Mag Aerospace Indus., LLC,
IPR2014-01510, Paper No. 13 (Jan. 20, 2015)

Motion to Amend Claims
•33
“The Director shall prescribe regulations – setting forth
standards and procedures for allowing the patent owner
to move to amend the patent . . . to cancel a challenged
claim or propose a reasonable number of substitute
claims.”
35 U.S.C. § 316(a)(9)
“During an inter partes review instituted under this
chapter, the patent owner may file 1 motion to amend
the patent in 1 or more of the following ways: (A) Cancel
any challenged patent claim. (B) For each challenged
claim, propose a reasonable number of substitute
claims.
35 U.S.C. § 316(d)

•34
 Nevertheless, only two sets of motions to amend granted
(at least in part):
 Int’l Flavors & Fragrances Inc. v. U.S.,
IPR2013-00124, Paper 12 (May 20, 2014)
 Riverbed Tech., LLC v. Silver Peak Sys., Inc.,
IPR2013-00402, Paper 35 (Dec. 30, 2014)

•35
 Guidance from the Office
 Idle Free Systems, Inc. v. Bergstrom, Inc.,
IPR2012-00027, Paper 26 (June 11, 2013)
 USPTO Message From PTAB: How to Make Successful Claim
Amendments in an AIA Trial Proceeding, AIA BLOG (May 5, 2014,
3:57 PM),
http://www.uspto.gov/blog/aia/entry/uspto_ptab_message_how_to.
 Corning Optical Comms. RF, LLC v. PPC Broadband, Inc.,
IPR2014-00441, Paper 19 (Oct. 30, 2014)

•36
 Substitute Claim Set
 Be responsive to a ground of unpatentability
 Presumption that for every claim at issue, only one substitute claim
is reasonable
 Burden of Proof
 The patent owner bears the burden of establishing that it is entitled
to amended claims
 Must meet every ground of patentability
 Patentability
 Not limited to references cited by the petition
 Although need not be aware of everything
 Should explain the level of skill in the art and how it relates to the
newly added limitations

•37
Riverbed Tech., LLC v. Silver Peak Sys., Inc.,
IPR2013-00402, Paper 35 (Dec. 30, 2014)

•38
Riverbed Tech., LLC v. Silver Peak Sys., Inc.,
IPR2013-00402, Paper 35 (Dec. 30, 2014)

•39
Int’l Flavors & Fragrances Inc. v. U.S.,
IPR2013-00124, Paper 12 (May 20,
2014).

Part 3
The Sign Says
“No Fishing Allowed”
•42

Discovery at the PTAB
 PTAB has taken a very restrictive
approach to discovery
 “Routine” discovery is very limited
 “Additional” discovery only granted “in the
interest of justice
•43
37 C.F.R §42.51

Routine Discovery
 Routine discovery is very limited
 Exhibits cited in a paper or testimony
 Cross-examination of affidavit testimony
 Relevant information that is inconsistent with a
position advanced by a party
•44

Additional Discovery
 No right to additional discovery
[A] party may move for additional discovery.
The moving party must show that such
additional discovery is in the interests of
justice….
•45
37 C.F.R §42.51(b)(2)

 To meet the “interest of justice” standard,
need to meet the Garmin factors:
1. More than a possibility and mere allegation
2. Litigation positions and underlying basis
3. Ability to generate equivalent information by
other means
4. Easily understandable instructions
5. Requests not overly burdensome to answer
•46
Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
IPR2012-00001, Paper No. 26 (Mar. 5, 2013)

 Motions for additional discovery denied
 Commercial success, copying, and praise by others
 Communications between the petitioner and an
alleged real party-in-interest
 Clinical data underlying studies described in the
challenged patent
•47
Riverbed Tech., Inc. v. Silver Peak Sys., Inc.,
IPR2014-00245, Paper No. 19 (Aug. 22, 2014)
Petroleum Geo-Servs. Inc. v. Westerngeco LLC,
IPR2013-00358, Paper No. 78 (May 16, 2014)
Amneal Pharms., LLC v. Endo Pharms. Inc.,
IPR2014-01475, Paper No. 10 (Nov. 26, 2014)

 Motions for additional discovery denied
 Documents relied on by a witness in ITC
testimony
 Deposition testimony directed to a date a
reference was publicly available
•48
Silicon Labs., Inc., v. Cresta Tech. Corp.,
IPR2014-00728, Paper No. 27 (Dec. 10, 2014)
Alt. Legal Solutions, Inc. v. Emp’t Law Compliance, Inc.,
IPR2014-00728, Paper No. 27 (Dec. 10, 2014)

 Motions for additional discovery granted
 Document relied on by the patent owner’s expert
witness to project petitioner’s sales
 Documents relating to claims made to a third-party
funded litigation fund
 Email communications between Petitioner’s expert
witnesses regarding the prior art
•49
Schott Gemtron Corp. v. SSW Holding Co.,
IPR2013-00358, Paper No. 78 (May 16, 2014)
VMWare, Inc. v. Good Tech. Software, Inc.,
IPR2014-01324, Paper No. 7 (Dec. 5, 2014)
Apple Inc. v. Achates Reference Publ., Inc.,
IPR2013-00080, Paper No. 66 (Jan. 31, 2014)

 Motions for additional discovery granted
 Lab notebooks showing Petitioner’s testing
 Intercompany agreement and deposition of official
•50
Corning Inc. v. DSM IP Assets B.V.,
IPR2013-00046, Paper No. 27 (June 21, 2013)
Zerto, Inc. v. EMC Corp.,
IPR2014-01245, Paper No. 15 (Nov. 11, 2014)

 Rethinking the approach to discovery
 More about getting known information than
discovering potentially useful information
 Realistically assess what you expect to get
•51

 Considerations to improve chances of
getting additional discovery
 Request authorization as soon as possible
 Identity of specific documents or information
 Nexus between the requested discovery and a
material position
 Other means of getting the requested
discovery
•52

Depositions
 Rethinking the approach to depositions
 Unlike litigation, the deposition is the trial
testimony
 Do not want to give the opposing party a
chance to bolster witness’s direct testimony or
credibility
 Should consider whether you really want to
know the answer to a question
•53

Depositions
 Re-direct Examination
 Might be the last chance to respond to
challenges raised during cross-examination
 Can also help establish witness’s credentials
and credibility
•54

Part 4
Appeals of Final Written
Decisions or:
How I Learned to Stop Worrying
and Love the Federal Circuit
•55

Appeal to the Federal Circuit
•56
“A party dissatisfied with the final written decision of the
Patent Trial and Appeal Board under section 318(a) may
appeal the decision pursuant to sections 141 through
144. Any party to the inter partes review shall have the
right to be a party to the appeal.”
35 U.S.C. § 319
 To date, over 160 notices of appeal have been filed at the PTAB!

Determination to Institution
•57
“The determination by the Director whether to institute
an inter partes review under this section shall be final
and nonappealable”
35 U.S.C. § 314(d)

April 24, 2014 Decisions
•58
 St. Jude Med., Cardiology Div., Inc. v. Volcano Corp.,
749 F.3d 1373 (Fed. Cir. 2014)
 The Board did not institute because infringement
counterclaim constituted “a complaint alleging
infringement of the patent.”
 St. Jude argued that §314(d) does not bar immediate
review by the Federal Circuit.
 “The statute provides for an appeal to this court only of
the Board’s decision at the second step [Final Written
Decision], not the Director's decision at the first step.”

•59
 In re Dominion Dealer Solutions, LLC.,
749 F.3d 1379 (Fed. Cir. 2014)
 The Board did not institute because of a failure to
demonstrate a reasonable likelihood that the petitioner
would prevail.
 Dominion petitioned for a writ of mandamus vacating
non-institution decision and ordering institution of review.
 “At a minimum, given our conclusions about the statutory
scheme, Dominion has no ‘clear and indisputable’ right to
challenge a non-institution decision directly in this court,
including by way of mandamus.”

•60
 In re Procter & Gamble Co.,
749 F.3d 1376 (Fed. Cir. 2014)
 The Board instituted because declaratory judgment of
invalidity dismissed without prejudice.
 P&G petitioned for a writ of mandamus vacating
institution of review.
 “Our analysis in St. Jude and Dominion . . . applies
equally to the Director’s decision to institute such a
review.”

•61
“The determination by the Director whether to institute
an inter partes review under this section shall be final
and nonappealable”
35 U.S.C. § 314(d)
 Statute bars appeal of decision not to institute review.
 Statute bars mandamus for decision not to institute.
 Statute bars mandamus for decision to institute.
 Does statute bar appeal and review of decision to
institute after Final Written Decision?

In re Cuozzo Speed Techs., LLC
(Fed. Cir. 2015)
•62
 The first appeal of the first Final Written Decision for the
first IPR petition filed
 U.S. Patent No. 6,778,074

(Fed. Cir. 2015)
•63
 Garmin USA had been sued in district court and filed
petition IPR2012-00001

(Fed. Cir. 2015)
•64
10. A speed limit indicator comprising:
a global positioning system receiver;
a display controller connected to said global
positioning system receiver, wherein said display controller
adjusts a colored display in response to signals from said
global positioning system receiver to continuously update
the delineation of which speed readings are in violation of
the speed limit at a vehicle's present location; and
a speedometer integrally attached to said colored
display.

(Fed. Cir. 2015)
•65
 Aumayer
 Evans
 Wendt disclosed a suction cup attachable speed limit
indicator.

In re Cuozzo Speed Technologies, LLC
(Fed. Cir. 2015)
•66
 Cuozzo argued that the Board improperly instituted trial
 The institution grounds were not those presented in the petition
 The prior art was all identified, but not in that combination
“The Director may not authorize an inter partes review
to be instituted unless the Director determines that the
information presented in the petition . . . and any
response [by the patent owner] . . . shows that there is a
reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the
petition.”
35 U.S.C. § 314(a)

(Fed. Cir. 2015)
•67
 Federal Circuit concluded “that §314(d) prohibits review
of the decision to institute IPR even after a final decision.
 Cited a reexamination case (In re Hiniker Co., 150 F.3d 1362
(Fed. Cir. 1998)) for the proposition that a flawed decision to
institute was not a basis for setting aside a final decision.
 “The fact that the petition was defective is irrelevant because a
proper petition could have been drafted.”
 Did not decide the question whether the decision to institute
would be reviewable by mandamus after final decision.
 Judge Newman in dissent:
 “Does this mean that such decisions can never be judicially
reviewed, even if contrary to law, even if material to the final
appealed judgment?”

(Fed. Cir. 2015)
•68
 Claim construction standard:
Broadest reasonable
construction in light
of specification
Phillips Standardvs.

(Fed. Cir. 2015)
•69
 The Federal Circuit concluded “that Congress implicitly
adopted the broadest reasonable interpretation standard
in enacting the AIA.”
 “It can therefore be inferred that Congress impliedly adopted the
existing rule of adopting the broadest reasonable construction.”
 Failing that, the Court determined that “even if the
broadest reasonable interpretation standard were not
incorporated into the IPR provisions of the statute, the
standard was properly adopted by the PTO regulations.

(Fed. Cir. 2015)
•70
 Judge Newman in dissent:
 BRI standard frustrates the goal of inter partes review to be a
surrogate for district court litigation
 Reference to other office proceedings cannot justify standard
 “It is reported that the ability to amend claims in Inter Partes Review
proceedings, as administered by the PTO, is almost illusory”
 Noted that the House “Innovation Act” contains a section
amending the standard:
 “each claim of a patent shall be construed as such claim would be in a civil
action to invalidate a patent under section 282(b), including constructing each
claim of the patent in accordance with the ordinary and customary meaning
of such as understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent . . . .”

(Fed. Cir. 2015)
•71
 The Court concluded that the Board did not err in
construing the claims
 Use of Teva v. Sandoz standard: underlying factual
determinations concerning extrinsic evidence for substantial
evidence, and ultimate claim construction de novo
 The Court also held that “claim 10 would have been
obvious over Aumayer, Evans, and Wendt because it
encompasses the analog embodiment of the invention
discussed in the specifiction.”
 Reviewed factual findings for substantial evidence, and legal
conclusions de novo

Future Appeals
•72
 Versata Development Gp., Inc. v. SAP Am., Inc.
(No. 2014-1194)
 At least two oral arguments scheduled for March
 Related to at least four Final Written Decisions
 At least four oral arguments scheduled for April
 Related to at least six Final Written Decisions

Andrew W. Williams, Ph.D.
williams@mbhb.com
(312) 913-3301
John “Jay” M. Schafer
schafer@mbhb.com
(312) 935-2353

MBHB-Webinar-PTAB-Williams-Schafer-FINAL-02.25.15

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