defending patents in ipr proceedings: best practices to...
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Defending Patents in IPR Proceedings: Best
Practices to Mitigate Risks of Claim Cancellation Leveraging Preliminary Responses, Using Experts, Filing Motions
to Amend and Substitute Claims, Evaluating Secondary Considerations
Today’s faculty features:
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TUESDAY, SEPTEMBER 20, 2016
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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FOR LIVE EVENT ONLY
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Strafford Webinar September 20, 2016
Michael J. Flibbert Maureen Queler
Defending Patents in IPR
Proceedings
michael.flibbert@finnegan.com maureen.queler@finnegan.com
5 5
Petition Filed
PO Preliminary
Response
Decision on
Petition
PO Response & Motion to Amend
Claims
Petitioner Reply to PO
Response & Opposition
to Amendment
PO Reply to Opposition
to Amendment
Oral Hearing
Final Written Decision
3 months **no more than
3 months
3 months 3 months 1 month Hearing Set
**No more than 12 months
IPR Overview
PO
Discovery
Period
Petitioner
Discovery
Period
PO
Discovery
Period
Observations
&
Motions to
Exclude
**Statutory time period
6 6
IPR Statistics- Technology Breakdown FY 2016
Data current as of 7/31/2016:
http://www.uspto.gov/sites/default/files/documents/20
16-07-31%20PTAB.pdf
7 7
IPR Statistics- Institution Rate (FY 2014 – 2016)
64% 6%
30%
Instituted
Joinder
Denied
Data current as of 7/31/2016: http://www.uspto.gov/sites/default/files/documents/2016-07-31%20PTAB.pdf
8 8
IPR Statistics- Institution Rate (FY 2014 – 2016)
74.77%
68.28%
67.74%
64.00%
66.00%
68.00%
70.00%
72.00%
74.00%
76.00%
2014 2015 2016
Perc
en
tag
e
Year
Percentage of IPR Petitions Instituted or Joined
Data current as of 7/31/2016: http://www.uspto.gov/sites/default/files/documents/2016-07-31%20PTAB.pdf
9 9
IPR Statistics- Institution Rate, by Technology
Data current as of 7/31/2016: http://www.uspto.gov/sites/default/files/documents/2016-07-31%20PTAB.pdf
10 10
IPR Statistics- Outcome
*http://www.aiablog.com/claim-and-case-disposition/
11 11
IPR Statistics- Substitute Claim Outcome
*http://www.aiablog.com/claim-and-case-disposition/
12 12
Patent Owner Preliminary Response
Petition Filed
PO Preliminary
Response
3 months
• 37 C.F.R. § 42.107
• Respond to proposed grounds of
unpatentability in Petition
• Under amended rules, Patent Owner may now submit
testimonial evidence with the preliminary response
• A genuine issue of material fact created by Patent
Owner’s submission of testimonial evidence will be
viewed in the light most favorable to the petitioner solely
for purposes of deciding whether to institute an inter
partes review
• No deposition of any experts or declarants at this stage
13 13
Patent Owner Preliminary Response
• Response optional: “patent owner may file a preliminary
response”
Data current as of 7/31/2016: http://www.uspto.gov/sites/default/files/documents/2016-07-31%20PTAB.pdf
14 14
Patent Owner Preliminary Response
• Reasons to file
• Statutory time bar: 35 U.S.C. §315(b)
− Time bar applies even if 1 day late (IPR2015-01630)
− Time bar applies even if original complaint consolidated with later-filed
action (IPR2015-01630 and IPR2014-00319)
• Key date: when was complaint effectively served under federal and
local rules?
− Time applies even if there is a subsequent amendment in reexamination
– statute refers to the patent, not the claims (IPR2013-00315)
− Time bar applies if complaint is dismissed WITH prejudice (IPR2013-
00168)
− Time bar does not apply if complaint is dismissed WITHOUT prejudice
(IPR2013-00312; see also IPR2012-00004)
− Time bar includes counterclaims for infringement (IPR2013-00258)
15 15
Patent Owner Preliminary Response
• Reasons to file
• Narrow the grounds of unpatentability
− Narrow based on the grounds being redundant
− Remove improper anticipation grounds
• Incorrect or omitted claim construction
− Symantec Corp. v. RPost Communications Ltd., IPR2014-00357 (claims
not anticipated because proposed construction was overly broad)
• Missing claim elements or analysis
− 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
− 37 C.F.R. § 42.65(a): expert testimony that does not disclose underlying
facts is entitled to little or no weight (IPR2013-00054, Paper 16)
16 16
Patent Owner Preliminary Response
• Reasons to file
• Failure to address reasonable expectation of success
− BioGatekeeper, Inc. v. Kyoto Univ., IPR2014-01286 (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
− Only fatal if Petitioner needs benefit of the original petition filing
date to avoid a time bar under 35 U.S.C. §315(b); otherwise can
amend petition or refile
• Failure to address prosecution history evidence of
unexpected results
17 17
Patent Owner Preliminary Response
• Reasons to file
• Conclusory / unsupported expert declaration
− Kinetic Techs., Inc. v. Skywork Solutions, Inc., IPR 2014-00529,
(“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,
(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)
18 18
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
− LG Elecs., Inc. v. Advanced Micro Devices, Inc., IPR2015-00329,
(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 (citing 35 U.S.C. §
314(a))
19 19
Patent Owner Preliminary Response
• Reasons to file
• The Board’s discretion to deny “follow-on” petitions
− 35 U.S.C. § 325 (d): “same or substantially the same prior art or
arguments previously were presented to the Office”
− Very panel and case specific
− Conopco, Inc. dba Unilever v. The Proctor & Gamble Co.,
IPR2014-00628: 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
− Praxair Distribution, Inc. v. INO Therapeutics, LLC., IPR2016-
00781: IPR denied because new references in the second IPR
were “prior art which a skilled searcher conducting a diligent
search reasonably could have been expected to discover.”
20 20
Patent Owner Preliminary Response
• Reasons to consider not filing
• High institution rate (~64%)
• Issues of material fact resolved in favor of petitioner
• Claim construction not final in institution decision
• Gives petitioner 5+ month lead on your arguments
• Gives Patent Owner ability to depose Petitioner’s expert
without revealing theory of case
• Highly fact / expert driven obviousness issues
21 21
Experts
• Consider testifying and consulting experts
• Cross-examination testimony is key
• Good witness is key due to role of depositions
• Retain experts early (even if not filing patent owner
preliminary response or not filing expert declaration
with 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
22 22
Institution Decision
• Timing of institution is panel-dependent but no more 3
months
• Scheduling order will issue with Institution Decision
• 10 business 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”
23 23
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, long-felt need, or other
secondary considerations with expert declarations
• Antedate prior art if possible
24 24
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)
25 25
Appeal
• No right of appeal of institution decisions
• 35 U.S.C. §314 (d) bars challenge to the PTAB’s decision to institute
an IPR (Cuozzo Speed Technologies v. Lee, 579 U.S. ___ (2016)
• 35 U.S.C. § 319 - A party dissatisfied with a final written decision
may appeal
• Standing
• If party does not make, use, or sell the patented invention, it may
lack standing to appeal inter partes reexamination decision
(Consumer Watchdog v. Wisconsin Alumni Research Found., 753
F.3d 1258 (Fed. Cir. 2014))
26 26
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 possible (approximately 54% of CAFC
decisions in appeals from IPRs were Rule 36 judgments)
27 27
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 (citing Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966))
Applied by PTAB in IPRs and CBMs
28 28
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; IPR2013-00097)
What is commercial success?
29 29
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
30 30
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
31 31
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 currently has
the burden to show entitlement to the relief requested. 37
C.F.R. § 42.20(c)
• In re Aqua Products, Inc. - Federal Circuit granted
rehearing en banc to consider who bears the burden of
persuasion and production regarding patentability of
amended claims
32 32
PTAB Timing
Patent Owners
• Argue commercial success in Preliminary Response?
• 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?)
Commercial Success at the PTAB
2016 Update
Strafford CLE Webinar (Defending Patents in IPR Proceedings)
September 20, 2016
John C. Jarosz
34 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
Outline
1. Outcomes
2. Economic Considerations
a. Marketplace Success
b. Causal Nexus
35 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
Disposition of IPR Petitions Completed to Date (7/31/2015) Disposition of IPR Petitions Completed to Date (7/31/2015)
Disposition of IPR Petitions Completed to Date (7/31/2015)
36 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
Disposition of IPR Petitions Completed to Date (7/31/2016)
Disposition of IPR Petitions Completed to Date (7/31/2016)
37 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
Disposition of CBM Petitions Completed to Date (7/31/2015)
38 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
Disposition of CBM Petitions Completed to Date (7/31/2016)
Disposition of CBM Petitions Completed to Date (7/31/2016)
39 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
IPR/CBM COMMERCIAL SUCCESS WRITTEN DECISIONS (ALL)
PUBLISHED AS OF AUGUST 22, 2016
Year Cases Discussion of
Commercial Success
Adequate Proof of
Commercial Success
# % of Cases # % of Cases
2012 0 0 - 0 -
2013 0 0 - 0 -
2014 43 36 84% 1¹ 2%
2015 85 74 87% 1² 1%
2016 45 35 78% 0 0%
Total 173 145 84% 2 1%
Notes:
¹ Intri-PlexTechnologies, Inc. and MMI Holdings, Ltd. v. Saint-Gobain Performance Plastics Rencol Limited, IPR2014-00309, March 23, 2014
² Phigenix, Inc. v. Immunogen, Inc., IPR2014-00676, October 27, 2015
40 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
IPR/CBM COMMERCIAL SUCCESS CONSIDERATIONS (ALL)
PUBLISHED AS OF AUGUST 22, 2016
Year Inadequate Proof of
Commercial Success No Marketplace Success No Causal Nexus
Total # % of
Total
No Attempt
to Prove
Attempted Proof Unconvincing
Proof #
% of
Total
No Attempt
to Prove
Attempted Proof Unconvincing
Proof Expert
Declaration
Fact
Declaration Unknown
Expert
Declaration
Fact
Declaration Unknown
2012 0 0 - 0 - 0 0 0 0 - 0 - 0 - 0 0 0 0 -
2013 0 0 - 0 - 0 0 0 0 - 0 - 0 - 0 0 0 0 -
2014 35 15 43% 9 60% 0 6 0 6 40% 32 91% 8 25% 2 22 0 24 75%
2015 73 28 38% 18 64% 2 1 7 10 36% 73 100% 21 29% 21 11 20 52 71%
2016 35 15 43% 4 27% 2 7 2 11 73% 34 97% 3 9% 2 6 23 31 91%
Total 143 58 41% 31 53% 4 14 9 27 47% 139 97% 32 23% 25 39 43 107 77%
41 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
IPR/CBM COMMERCIAL SUCCESS WRITTEN DECISIONS (CONDENSED)¹
PUBLISHED AS OF AUGUST 22, 2016
Year Cases Discussion of
Commercial Success
Adequate Proof of
Commercial Success
# % of Cases # % of Cases
2012 0 0 - 0 -
2013 0 0 - 0 -
2014 30 23 77% 1² 3%
2015 45 35 78% 1³ 2%
2016 31 24 77% 0 0%
Total 106 82 77% 2 2%
Notes:
¹ Cases with the same parties and same products are treated as one case.
² Intri-PlexTechnologies, Inc. and MMI Holdings, Ltd. v. Saint-Gobain Performance Plastics Rencol Limited, IPR2014-00309, March 23, 2014
³ Phigenix, Inc. v. Immunogen, Inc., IPR2014-00676, October 27, 2015
42 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
IPR/CBM COMMERCIAL SUCCESS CONSIDERATIONS (CONDENSED)¹
PUBLISHED AS OF AUGUST 22, 2016
Year Inadequate Proof of
Commercial Success No Marketplace Success No Causal Nexus
Total # % of
Total
No Attempt
to Prove
Attempted Proof Unconvincing
Proof #
% of
Total
No Attempt
to Prove
Attempted Proof Unconvincing
Proof Expert
Declaration
Fact
Declaration Unknown
Expert
Declaration
Fact
Declaration Unknown
2012 0 0 - 0 - 0 0 0 0 - 0 - 0 - 0 0 0 0 -
2013 0 0 - 0 - 0 0 0 0 - 0 - 0 - 0 0 0 0 -
2014 22 9 41% 6 67% 0 3 0 3 33% 20 91% 5 25% 2 13 0 15 75%
2015 34 14 41% 7 50% 2 1 4 7 50% 34 100% 8 24% 11 4 11 26 76%
2016 24 12 50% 4 33% 1 5 2 8 67% 23 96% 3 13% 1 4 15 20 87%
Total 80 35 44% 17 49% 3 9 6 18 51% 77 96% 16 21% 14 21 26 61 79%
Notes:
¹ Cases with the same parties and same products are treated as one case.
43 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
Commercial Success – Economic Considerations
1) Is the product that embodies the patented invention a marketplace success?
2) Is the success of the product due to the patent (causal nexus)?
44 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
1) Product Success
a) Absolute Performance
b) Relative Performance
45 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
a) Absolute Performance
• Shipments
• Revenues
• Prices
• Costs
• Profits
46 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
b) Relative Performance
• Definition of market/competition
a) Product
b) Geographic
• Significance of market share
a) Over time
b) Versus Benchmark
47 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
a) Absolute Performance
48 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
a) Absolute Performance
Refill
Pe
rcen
tage
s
49 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
b) Relative Performance
Product 1
Product 2
Product 3
50 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
b) Relative Performance
Brand Product 1
Generic Product
Brand Product 2
51 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
b) Relative Performance
Shipments
Product 1
Product 2
Product 3
Product 4
Product 5
Product 6
52 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
2) Causal Nexus
a) Features/Advantages of Patent (Versus Prior Art)
b) Importance of Patented Features/Advantages
c) Importance of Non-Patented Features/Advantages
53 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
2) Causal Nexus
Qualtrics Labs Inc. V. OpinionLab Inc., IPR2014-00421
“To show how commercial success supports non-obviousness,
however, Patent Owner must prove that the sales were a direct result of
the unique characteristics of the invention, and not a result of economic
and commercial factors unrelated to the quality of the patented subject
matter. Patent Owner has not so shown. … Patent Owner … does not
attempt to tie any of these features to the alleged commercial success.”
54 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
a) Features/Advantages of Patent
• Patent Claims
• Prior Art
• Technical Opinion
55 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
b) Importance of Patented Features/Advantages
• Internal Marketing Materials
• External Promotional Materials
• Industry Praise
• Company Testimony/Declarations
• Customer Testimony/Declarations
• Revealed Preferences
Party Actions
Licenses
Copying
• Consumer Studies/Surveys
56 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
b) Importance of Patented Features/Advantages
57 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
b) Importance of Patented Features/Advantages
58 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
b) Importance of Patented Features/Advantages
59 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
c) Importance of Non-Patented Features/Advantages
• Product Features
• Non-Product Features
Price
Promotion
Brand Name
Custom
60 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
c) Importance of Non-Patented Features/Advantages
61 STRAFFORD CLE WEBINAR SERIES – JOHN JAROSZ ■ SEPTEMBER 20, 2016
Summary
• Commercial Success argument rarely prevails at PTAB
• Patent Owners taking burden somewhat more seriously
• Most failures due to inadequate proof of causal nexus
62 62
Routine Discovery
Routine Discovery
• Exhibits cited in paper or testimony
• Inconsistent positions (file with document with inconsistency)
(e.g., claim constructions from litigation)
• Cross-examination of declarant
63 63
Additional Discovery
Additional Discovery
• Interest of justice standard. See 35 U.S.C.§316(a)(5)(B)
• Garmin factors (IPR2012-00001, Paper 20 at 2-3)
(1) more than possibility that useful information will be
discovered;
(2) not seeking litigation positions;
(3) information not available through other means;
(4) easily understandable instructions; and
(5) not overly burdensome to answer.
64 64
Secondary Considerations Discovery
Not Part of Routine Discovery • Petitioner need not produce evidence of commercial success as
relevant information inconsistent with positions advanced in Petition
(IPR2013-00333, Paper 30)
• Patent Owner can readily introduce evidence of its own commercial
success (IPR2013-00333, Paper 30)
When would Patent Owner need additional
discovery?
• Petitioner is an alleged infringer whose sales would show
commercial success (IPR2014-00367)
• Patent Owner’s claimed invention is a component of Petitioner’s
product (IPR2013-00004)
65 65
First Garmin Factor
(1) more than possibility that useful information will be
discovered
• “favorable in substantive value to a contention of the
moving party”
• Commercial Success
− As practical matter, need well-developed commercial success
position to obtain any discovery
• To obtain sales data from Petitioner, Patent Owner has to
show some evidence of significant sales in relevant market
(IPR2014-00367)
• To obtain evidence regarding Petitioner’s product, Patent
Owner has to show some evidence that product met claims
(IPR2014-00367)
66 66
First Garmin Factor
(1) more than possibility that useful information will be
discovered
• Real Party-in-Interest
− Who has funding and control of IPR petition?
− Threshold amount of evidence or reasoning needed to show that
discovery is in the interests of justice.
• Evidence of existing indemnity agreement?
• Evidence from district court of relationship between non-
party and Petitioner?
67 67
Evidence
• The Federal Rules of Evidence apply to IPR proceedings
(37 C.F.R. § 42.62)
• Grounds for evidentiary objections
− Lack of Authentication (FRE 901): proponent must produce
evidence sufficient to support a finding that the item is what the
proponent claims it is
− Hearsay (FRE 801-803): prohibits out-of-court statements from
being offered to prove the truth of the matter asserted
• Litigation v. IPR: fewer depositions in IPR proceedings;
may cause more authentication/hearsay disputes
68 68
Evidence-Considerations
• What evidence are you submitting?
− lab notebooks, sales data, industry praise, web page, journal
article
• Who can authenticate that evidence?
− Any self-authenticating evidence? (FRE 902) (periodicals,
newspapers, public records)
− Ancient document?
− Do you have a declarant with personal knowledge?
− Wayback Machine affidavit
• Any hearsay statements within that evidence?
− Are they being relied upon for the truth of the matter asserted?
− Can you submit a declaration from the speaker?
69 69
Evidence-Commercial Success
• Market share data:
− Declaration by custodian or person that generated data to
authenticate the data
− Declaration by expert analyzing that data
− Can expert analyzing the data do both?
• Statements establishing nexus between product and claims
− Could be hearsay unless submitted as part of declaration
• Industry Praise or Long-Felt Need
− An authentic document (e.g., newspaper) may still have hearsay
issues (out-of-court statement by physician in document praising
drug)
70 70
Evidence-Antedating
Authentication v. Corroboration
• Authentication: Witness having personal knowledge of the
document can be sufficient to support document’s authenticity. FRE
901(a)
• Corroboration: proof of conception must be made by evidence
corroborating inventor’s testimony. Coleman v. Dines, 754 F.2d
353, 359 (Fed. Cir. 1985).
•Inventor cannot authenticate documents intended to corroborate
testimony. Avoids “circular” situations. Chen v. Bouchard, 347 F.3d 1299,
1308 (Fed. Cir. 2003); IPR2013-00578 (Paper 52)
Hearsay v. Corroboration
•Do statements only have corroborating value if they are true? Then they
are hearsay. IPR2013-00578 (Paper 52)
71 71
Evidentiary Objections
37 C.F.R. § 42.64
(b) Other evidence. For evidence other than deposition evidence:
(1) Objection. Any objection to evidence submitted during a
preliminary proceeding must be filed within ten business days of
the institution of the trial. Once a trial has been instituted, any
objection must be filed within five business days of service of
evidence to which the objection is directed. The objection must
identify the grounds for the objection with sufficient particularity to
allow correction in the form of supplemental evidence.
72 72
Schedule of Proceedings
Objections to Petition Evidence (10 days) Objections to Evidence (5 days)
73 73
Evidentiary Objections / Motion to Exclude
• Board encourages parties to try to work through issues
• Motion to exclude: set time in schedule, prior
authorization not necessary
• Must have basis for objections in Federal Rules of
Evidence
• Not for credibility, weight of expert testimony, or outside
of scope
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Printed Publication
• Distinct sufficiency of evidence and authentication issues
• Sufficiency: did the Patent Owner submit sufficient evidence
to show that this prior art was a printed publication before
the patent’s critical date?
– Raise this issue in substantive papers (Preliminary Response)
• Authentication: is there evidence that this document is what
it purports to be?
– Raise this issue in objections / motion to exclude
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Patent Owner’s Motion to Amend
• Conference call with the Board is required before filing
No need to identify full claim set
Outline proposed claim substitutions, acknowledge guidelines, ask
for guidance as necessary
• Exemplary Guidelines:
IPR2012-00005, Paper 27 (Nichia)
IPR2013-00027, Paper 26 (Idle Free)
IPR2013-00124, Paper 12 (Int’l Flavors)
IPR2014-00441, Paper 19 (Corning Optical)
IPR2015-00040, Paper 42 (MasterImage)
• 37 C.F.R. § 42.121: A patent owner may file one motion to
amend a patent, but only after conferring with the Board.
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Patent Owner’s Motion to Amend
• To date, only seven
motions to amend have
been granted
• Finnegan achieved grant
of the fourth Motion to
Amend ever to be
granted by the PTAB.
(REG v. Neste Oil,
IPR2014-00192)
• CAFC set to decide
issues of burden of
demonstrating
patentability of substitute
claims en banc in In re:
Aqua Products https://www.uspto.gov/sites/default/files/documents/2016-04-
30%20PTAB%20MTA%20study.pdf
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Patent Owner’s Motion to Amend
• Distinguish over prior art
• Idle Free Systems (IPR2012-00027 Paper 26): patent owner to
show patentable distinction over the prior art of record and also
prior art known to the patent owner
• MasterImage 3D, Inc. (IPR2015-00040 Paper 42)
Prior art of record:
• any material art in the prosecution history of the patent;
• any material art of record in the current proceeding, including art
asserted in grounds on which the Board did not institute review;
and
• any material art of record in any other proceeding before the
Office involving the patent.
Prior art known: material prior art made of record pursuant to
duty of candor and good faith. 37 C.F.R § 42.11.
78 78
Patent Owner’s Motion to Amend
• Distinguish over prior art
• Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016): holding
that Nike’s statement that proposed claims were patentable over
prior art known to it but not part of the record met requirement
of MasterImage
• Veritas Techs. LLC v. Veeam Software Corp.: no requirement to
discuss the patentability of each added claim limitation
separately- in combination is sufficient
• Shinn Fu Co. of America v. The Tire Hanger Corp., IPR2015-
00208: Patent Owner does not need to prove patentability over
every piece of art known to a skilled artisan, but is required to
“explain why the claims are patentable over the prior art.”
Grouping prior art references together is allowed
79 79
Patent Owner’s Motion to Amend
• Identify section 112 written description support
• Establish that proposed amended claims are not broader than
original
• Provide claim construction support
• Consider intervening rights and patent term extension
implications
80 80
Speaker Information
Mike Flibbert is a partner is Finnegan’s Washington, DC office and former chair of 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).
81 81
Speaker Information
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.
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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.
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