An introduction to the trial procedures at the USPTO Patent Trial and Appeal Board. October 17, 2012. Dallas Bar Association IP Section

1. Trial practice before the PTAB in contested
proceedings
INTELLECTUAL PROPERTY LAW SECTION Marc A . Hubbard
DALLAS BAR ASSOCIATION HUBBARD LAW, PLLC
October 18, 2012
Dallas, Texas
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2. Inter partes reviews filed through Oct. 14, 2012
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3. Covered business method reviews filed through Oct.
15, 2012
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4. 4
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5. 5
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6. Topics
• Overview of timing of basic trial procedures in context of reviews
• Overview of motion practice, evidence and discovery
• Discussion of some key issues
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7. Rules governing trial procedures at PTAB
• Part 42, Subpart A, of 37 C.F.R. governs trial in four types of contested proceedings:
• Inter partes review (IPR)
• Post grant review (PGR)
• Transitional covered business method patent review (CBMR)
• Derivation proceeding
• Detailed guidance: Office Patent Trial Practice Guide
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8. Petition Filed
Optional PO
3 months PTAB Contested
response
< 3 months
Proceeding
Overview
Decision on
authorization
No
Rehearing
Yes
Decision on
rehearing
No No appeal /
Trial <12 months, unless
Try again
extended by 6 months
Yes
Trial
Yes
Settlement Dismissal*
No *Unless board
has already
Final decision
made a decision
Motion for
rehearing /
Appeal to Fed.
Cir.
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9. Petition
• Standing
• Must certify that patent/application available for review and demonstrate that statutory requirements for bringing
proceeding have met
• Must certify that petitioner is not barred or estopped
• Mandatory notices (Real party in interest, related matters, lead and backup counsel, service information)
• Challenge to one or more claims
• Evidence
• All evidence relied upon must be filed with petition (subject to limited opportunities to supplement)
• Filing fee
• Must accompany petition; non-refundable
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10. Challenge
• For each challenged claim
• Proposed claim construction
• Can be sufficient to state simply “broadest reasonable interpretation, as understood by one of ordinary skill
in the art and consistent with the disclosure”
• Board will apply the broadest reasonably interpretation standard
• If specific term should have a meaning other than a plain meaning, must identify support in disclosure for it
• Specific statutory grounds (§102, §103 for IPR, PGR and CBM; §§101 and112 for PGR and CBMR)
• How claim is unpatentable
• Must specify exhibit # and specific portions of evidence to support challenge
• Claim charts recommended, but count toward page limits (unless attached as evidence from other case)
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11. Patent owner’s preliminary response
• Optional
• Evidence can be attached, but no testimony can be taken prior to authorization of
trial
• May disclaim one or more claims
• May waive response early in time period in order to expedite decision by Board on
whether to authorize trial
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12. Types of responses for a patent owner to consider
• The petitioner is statutorily barred
• The references are not in fact prior art
• The prior art lacks a material limitation found in all of the independent claims
• The prior art teaches or suggests away from a combination
• The claim interpretation is unreasonable
• For post-grant review raising §101 grounds, a brief explanation as to how the
challenged claims are directed to a patent-eligible invention
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13. Institution of trial
• For IPR
• Petition must demonstrate a reasonable likelihood that petition would prevail as to
at least one of the challenged claims
• Viewed by PTAB as giving it more discretion (can be 50/50)
• For PGR/CBMR
• Petition must demonstrate that it is more likely than not that at least one
challenged claim is unpatentable
• Board will identify claims and specific grounds on which trial is being authorized
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14. Trial management
• Board has broad discretion manage the proceeding as it sees fit, but within confines
of statutory requirements
• Scheduling order (see model in Trial Guide) sets up stages
• All relief must be sought through petition or motion
• Motions may only be entered with Board approval
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15. Due Dates Set By Scheduling Order
(Parties may stipulate to different dates for 1 to 5)
Standard 0
Board decides to institute trial and
issues scheduling order
Schedule for Initial conference call
PO
Discovery
Period
IPR/PGR/ (1) 3 months
PO: (1) response to petition; (2)
motion to amend claims
CBMR Petitioner
Discovery
Period
Petitioner: (1) reply to PO response
(2) 6 months and (2) opposition to motion to
amend PO
Discovery
Period
PO: reply to opposition to
(3) 7 months
amendment
Pet: motion for observations on
(4) 7 months + 3 weeks cross-x of reply witnesses
PO/Pet: motion to exclude
evidence / req. hearing
Pet/PO: Opposition to motion to
(5) 8 months + 1 week exclude
PO: response to observations
(6) 8 months + 2 weeks Replies to motions to exclude
Oral Hearing (only upon request)
12 months Final Decision
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16. Patent owner’s response to petition
• Identify all involved claims that are believed to be patentable
• State basis for that belief
• Include any affidavits and other additional factual evidence to be relied upon
• Explain relevance of the evidence
• May include claim charts
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17. Motion practice
• No motion will not be entered without prior Board authorization, except —
• if impractical to seek prior Board authorization (e.g. motions to seal and motions filed with
petition)
• motions for which authorization is automatically granted by rules or in scheduling order (e.g.
requests for rehearing, observations on cross-examination, and motions to exclude evidence)
• Generally, however, time limits are imposed for making these motions
• Authorization for all other motions obtained during initial conference call or subsequent call.
• Initial conference about one month from the date of institution to discuss the motions that the
parties intend to file and to determine if any adjustment needs to be made to the Scheduling Order
• Procedural issues likely to be decided during conference calls to avoid need for additional briefing
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18. Motions to amend claims
• Only one motion to amend as of right (statutory)
• Timing
• Although permission to file is not required, patent owners expected to confer with
Board before making it (preferably during initial conference call) as it may impact
schedule
• Motion expected to be presented with patent owner’s response
• Good cause required for motions to amend sought later in proceeding
(amendment to advance settlement usually good enough)
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19. Nature of amendment limited
• Generally, one substitute claim per challenged claim, unless need for more than one
demonstrated
• Motion must identify support for each claim that is added or amended
• Motion can be denied if —
• Amendment does not respond to a ground of unpatentability involved in the trial
• Enlarges the scope of the claim or introduces new subject matter
• Petitioner may respond with additional evidence that addresses new issues
• Amendments are subject to §252 intervening rights
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20. Evidence
• Admissibility of evidence generally governed by Federal Rules of Evidence
• Testimony
• Uncompelled direct testimony by affidavits
• All other (compelled direct, cross-examination, redirect) by deposition
• Objections must be made to preserve right to move to exclude evidence
• To deposition evidence: at time of deposition
• 10 business days of institution of trial for evidence filed with Petition; otherwise 5 days of service
• May respond to objection by serving supplemental evidence within 10 business days
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21. Discovery
• Discovery not permitted except —
• For “routine discovery”
• On agreed upon mandatory initial disclosures, if agreed to by the parties prior to patent
owner’s preliminary response
• On motion
• May ask for any type of discover permitted by FRCP
• As otherwise agreed by the parties
• Board expects to enter standard E-discovery order modeled after the Federal Circuit’s model
order when party seeks ESI beyond routine discovery
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22. Routine discovery
• Cross-examination of affidavit testimony within time period authorized by Board in
scheduling order
• Any exhibit cited in paper or in testimony must be served with paper or testimony, unless
previously served or otherwise agreed by parties
• Mandatory disclosure of relevant information inconsistent with position advanced by
party
• Must be served prior to or with paper containing inconsistent statement
• Does not apply to privileged documents
• This apparent duty extends to inventors, corporate officers and persons involved with
preparation of documents
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23. Agreed upon “mandatory initial disclosures”
• Parties may agree to mandatory discovery in the form of initial disclosures
• To be done not later than filing of patent owner preliminary statement or time for filing the
statement
• Upon institution of trial, parties may automatically take discovery of information identified in
the initial disclosure
• Two options
• (1) FRCP Rule 26(a)(1)(A)
• (2) Much more extensive list of disclosures set out in the Trial Guide
• Initial disclosures must be filed as exhibits
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24. Discovery upon motion
• Any types of discovery available under the Federal Rules of Civil Procedure can be
sought, but motion must be filed
• Grant of motion requires showing of —
• “interests of justice” for IPR and derivations (high threshold)
• “good cause” for in PGR and CBM (lower threshold)
• Example of when it might be sought:
• when a party raises an issue, where the evidence on that issue is uniquely in the
possession of the party that raised it
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25. Supplemental information
• Within 1 month of institution of trial—parties may move to submit supplemental
information relevant to a claim that is subject of trial
• Otherwise, party must request authorization to file a motion to submit the
information; motion must show —
• why the supplemental information reasonably could not have been obtained earlier
• that consideration of the supplemental information would be in the interests-of-
justice (a relatively high standard)
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26. Confidentiality / protective orders
• Petition may be filed with motion to seal (with proposed protective order: either its own or PTO
default protective order)
• PO cannot see confidential information unless agrees to protective order supplied by
Petitioner, or parties agree on one
• If not order agreed to prior to institution of trial, Board will enter default standard protective
order
• Confidential information that is subject to a protective order will become public 45 days after
denial of a petition or 45 days after final judgment
• Party may file a motion to expunge the information from the record prior to the information
becoming public
• Redaction preferred over sealing of document
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27. Fees / Page limits on petitions
• Filing fees
• IPR: $27,200 + $600 per excess claim (over 20)
• PGR/CBM: $35,800 + $800 per excess claim
• Page limits: Petitions for IPR and Derivation limited to 60 pages; 80 pages for PGR/CBM (double-spacing; 14 point font;
excludes exhibits)
• Claim charts can be single spaced
• Use claim charts from other proceedings as exhibits
• Omit extensive discussions of basic legal principles
• Break down claims and file multiple petitions
• Board might decline to institute proceeding if too many claims or too many references on grounds that it cannot be
completed within 1 year
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28. Miscellaneous
• Counsel requirements
• Must specify lead and back up counsel
• Non-registered attorneys may apply for pro hac vice admission, but Board will
condition admission on having lead counsel be registered with PTO
• Patent owner estoppel: PO may not take action inconsistent with an adverse
judgment by obtaining patent:
• with patentably indistinct claims
• with an amendment to specification or drawing denied during trial
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29. Conclusion
• No trials have yet been authorized, so we don’t yet have anything to judge how well
these will work
• Rules are geared toward keeping a tight control over the parties and to prevent
abuses
• PTO is serious about its 1 year mandate
• Board seems to be very open and encourages interaction with it
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30. Marc A. Hubbard
Hubbard Law PLLC
740 E. Campbell Road, Suite 550 | Richardson, TX 75081
(214) 396-6001 direct
(214) 208.2601 mobile
(214) 785-6958 fax
www.hubbardip.com
© 2012 Marc A. Hubbard
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