The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Defending Patents in IPR Proceedings Leveraging Motions to Amend and Preliminary Responses, Weighing Secondary Considerations Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific THURSDAY, AUGUST 13, 2015 Presenting a live 90-minute webinar with interactive Q&A Michael J. Flibbert, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. John C. Jarosz, Managing Principal, Analysis Group, Washington, D.C. Maureen D. Queler, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
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The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
Defending Patents in IPR Proceedings Leveraging Motions to Amend and Preliminary Responses,
• Response optional: “patent owner may file a preliminary
response”
12 12
Patent Owner Preliminary Response
• Reasons to file:
– Statutory time bar: 35 U.S.C. §315(b)
• Time bar applies even if complaint was before enactment of AIA (IPR2014-
00008)
• Time applies even if there is a subsequent amendment in reexamination –
statute refers to the patent, not the claims (IPR2013-00315)
• Time bar includes counterclaims for infringement (IPR2013-00258)
• Time bar does not apply if the complaint is dismissed without prejudice
(IPR2013-00312; also IPR2012-00004)
• Time bar does apply if complaint is dismissed WITH prejudice (IPR2013-00168)
– Narrow grounds instituted
• Redundancy
• Improper anticipation grounds
13 13
Patent Owner Preliminary Response
• Reasons to file:
– Incorrect or omitted claim construction
• Symantec Corp. v. RPost Communications Ltd., IPR2014-00357,
Paper 14 at 10, 14 (PTAB July 15, 2014) (claims not anticipated
because proposed construction was overly broad)
– Missing claim elements in proposed obviousness or
anticipation grounds
• 35 U.S.C. § 312(a)(3)- requires an IPR petition to identify with
particularity the grounds on which the challenge is based, and the
evidence supporting those grounds
14 14
Patent Owner Preliminary Response
• Reasons to file:
– Failure to address reasonable expectation of success
• BioGatekeeper, Inc. v. Kyoto Univ., IPR2014-01286, Paper 12 at
6-8 (PTAB Feb. 11, 2015) (denying institution because the
petition failed to establish that one of ordinary skill would have
had a reasonable expectation of success in achieving the
claimed combination)
– Failure to name all real parties-in-interest
– Failure to address prosecution history evidence of
unexpected results or other secondary considerations of
nonobviousness
15 15
Patent Owner Preliminary Response
• Reasons to file:
– Conclusory / unsupported expert declaration
• Kinetic Techs., Inc. v. Skywork Solutions, Inc., IPR 2014-00529,
Paper 8 at 15 (PTAB Sept. 23, 2014) (“Merely repeating an
argument from the Petition in the declaration . . . does not give
that argument enhanced probative value.”).
• TRW Automotive US LLC v. Magna Elecs., Inc., IPR2014-00258,
Paper 18 at 10-11 (PTAB Aug. 27, 2014) (finding Petitioner’s
obvious-to-try rationale unsupported and giving little weight to the
expert declaration because it simply repeated TRW’s conclusory
statements verbatim)
– Reliance on non-prior art
16 16
Patent Owner Preliminary Response
• Reasons to file:
– Reliance on non-prior art
• The petitioner has the burden to establish that a reference is a
printed publication under 35 U.S.C. § 311(b). Cisco Sys., Inc. v.
Constellation Techs. L.L.C., IPR2014-01085, Paper 11 at 9
(PTAB Jan. 9, 2015)
• LG Elecs., Inc. v. Advanced Micro Devices, Inc., IPR2015-00329,
Paper 13 at 13 (PTAB July 10, 2015) (holding that date printed on
face of reference did not establish that it was published on that
date)
• Because institution decisions must be based on information in the
petition, deficiencies cannot be remedied later. Actavis, Inc. v.
Research Corp. Techs., Inc., IPR2014-01126, Paper 22 at 13
(PTAB Jan. 9, 2015) (citing 35 U.S.C. § 314(a))
17 17
Patent Owner Preliminary Response
• Reasons to file:
– The Board’s discretion to deny “follow-on” petitions
• Conopco, Inc. dba Unilever v. The Proctor & Gamble Co.,
IPR2014-00628, Paper 23 at 4-6 (March 20, 2013)
• Allowing petitioners to strategically unveil the best prior art and
arguments in serial petitions would tax Board resources and force
patent owners to defend multiple attacks
– No right of appeal of institution decisions
• 35 U.S.C. §319 - A party dissatisfied with a final written decision
may appeal
• St. Jude Medical, Cardiology Division, Inc. v. Volcano
Corporation, 749 F.3d 1373 (Fed. Cir. 2014)
18 18
Patent Owner Preliminary Response
• Reasons to consider not filing:
– High institution rate (~68%)
– No expert support allowed in Patent Owner preliminary
response
– Claim construction not final in institution decision
– Gives petitioner 5+month lead on your arguments
– Depose Petitioner’s expert without revealing theory of
case
19 19
Experts
• Consider testifying and consulting experts
• Deposition testimony is key
– Good witness is key due to role of depositions
• Retain experts early (even if not filing patent owner
preliminary response)
– Technical experts and commercial success experts
– Identify and engage technical expert early to vet
arguments for preliminary response
– Confer with in-house scientists to identify expert
candidates
20 20
Institution Decision
• Timing of institution is panel-dependent
• Scheduling order will issue with Institution Decision
• 10 days from Institution - file objections to evidence in
Petition (e.g., hearsay, authentication)
PO Preliminary
Response
Decision on
Petition
no more than 3 months
• 37 C.F.R. § 42.108 and 35 U.S.C. § 314
• Institution is discretionary
• Standard: “reasonable likelihood”
21 21
Patent Owner Response
• Respond to grounds of unpatentability in institution
decision with arguments, technical literature, and expert
declarations
• Provide claim construction positions if disagree with
PTAB
• Strengthen evidence of unexpected results with expert
declarations
• Establish commercial success and long-felt need with
expert declarations
• Antedate prior art if possible
22 22
Secondary Considerations
Obviousness is resolved based on factual determinations
including:
(1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and
the prior art;
(3) the level of skill in the art; and
(4) where in evidence, so-called secondary considerations.
See, e.g. IPR 2013-00004, Final Decision at 14 (citing
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).
Applied by PTAB in IPRs and CBMs:
23 23
Commercial Success
“Commercial success involves establishing success in the
marketplace of a product encompassed by the claims and a
nexus between the commercial product and the claimed
invention.”
(IPR2012-00006, Final Decision at 34; IPR2013-00097, Final
Decision at 45)
What is commercial success?
24 24
Commercial Success
“Commercial success is relevant because the law presumes
an idea would successfully have been brought to market
sooner, in response to market forces, had the idea been
obvious to persons skilled in the art.”
Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 395 F.3d
1364, 1376–77 (Fed. Cir. 2005)
Theory:
25 25
Legal Elements of Commercial Success
Commercial Success: patented product or process
has a substantial share of a definable market. See
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
Nexus: a legally and factually sufficient connection
between the success and the patented invention.
Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387 (Fed. Cir. 1988).
To date, the Board has rejected commercial success
arguments in almost every case in which the issue
was raised
26 26
Burden of Proof at PTAB
Original Claims:
In an IPR, the Petitioner has the burden to prove a
proposition of unpatentability by a preponderance of the
evidence. 35 U.S.C. § 316(e)
Motion to Amend:
For a motion to amend, the Patent Owner has the burden
to show entitlement to the relief requested. 37 C.F.R. §
42.20(c)
27 27
PTAB Timing
Patent Owners:
Argue commercial success in Preliminary Response?
No expert declarations allowed
Gives petitioner head start on attack
Patent Owner Response: only 3 months or less to
respond after institution
Start early: Consider commercial success soon after
receiving petition (before institution)
What experts needed?
What analysis needed to show market share and nexus?
Discovery needed? (own documents? public documents?
discovery from petitioner?)
28 28
Termination
• Termination of IPR proceedings
– 37 C.F.R. § 42.74(a) – The Board is not a party to settlement
and may independently determine any question of
patentability
– Board considers whether issues have been fully briefed (IPR
2013-00016)
• Appeal
– If party does not make, use, or sell the patented invention
there may be no standing to appeal inter partes
reexamination decision (Consumer Watchdog v. Wisconsin
Alumni Research Found., 753 F.3d 1258 (Fed. Cir. 2014))
29 29
Appeal
• Standard of Review:
– Factual findings are reviewed under the substantial evidence
standard of review
– Legal conclusions are reviewed de novo
– If you are successful at PTAB: focus on the facts and substantial
evidence supporting the Board’s final decision
– If you are unsuccessful at the PTAB: focus on the harmful legal
error in the Board’s final decision
• Affirmance rate
– Historically reverses less than 15% of cases originating from the PTO
– Rule 36 judgment is likely (from Feb 2015 – June 2015, eight out of ten
affirmances of IPRs/CBMs were Rule 36 judgments)
30 30
Speaker Information
Mike Flibbert is a partner is Finnegan’s Washington, DC office and chairs the firm’s chemical practice group. He represents clients in patent disputes before federal district courts and the Federal Circuit and also serves as lead counsel in IPR and other contested proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. He lectures frequently in the United States and abroad on patent law topics, including the America Invents Act (AIA).
31 31
Disclaimer
These materials have been prepared solely for educational and
entertainment purposes to contribute to the understanding of U.S.
intellectual property law. These materials reflect only the personal views of
the authors and are not individualized legal advice. It is understood that
each case is fact specific, and that the appropriate solution in any case will
vary. Therefore, these materials may or may not be relevant to any
particular situation. Thus, the authors, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han
Foreign Legal Affairs Law Firm) cannot be bound either philosophically or
as representatives of their various present and future clients to the
comments expressed in these materials. The presentation of these
materials does not establish any form of attorney-client relationship with
these authors. While every attempt was made to ensure that these
materials are accurate, errors or omissions may be contained therein, for
which any liability is disclaimed.
Commercial Success at the PTAB Strafford CLE Webinar
Maureen Queler practices all aspects of patent-related work in the chemical and pharmaceutical areas, including client counseling, patent prosecution, post-grant proceedings, and U.S. district court and appellate litigation. She represents clients in IPR and other contested proceedings before the PTAB. She also has an active patent prosecution and counseling practice, preparing and prosecuting U.S. patent applications on behalf of domestic and foreign clients.
76 76
Disclaimer
These materials have been prepared solely for educational and
entertainment purposes to contribute to the understanding of U.S.
intellectual property law. These materials reflect only the personal views of
the authors and are not individualized legal advice. It is understood that
each case is fact specific, and that the appropriate solution in any case will
vary. Therefore, these materials may or may not be relevant to any
particular situation. Thus, the authors, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han
Foreign Legal Affairs Law Firm) cannot be bound either philosophically or
as representatives of their various present and future clients to the
comments expressed in these materials. The presentation of these
materials does not establish any form of attorney-client relationship with
these authors. While every attempt was made to ensure that these
materials are accurate, errors or omissions may be contained therein, for