defending patents in ipr proceedings: best practices to...

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

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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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Strafford Webinar September 20, 2016

Michael J. Flibbert Maureen Queler

Defending Patents in IPR

Proceedings

[email protected] [email protected]

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


9 9

IPR Statistics- Institution Rate, by Technology


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


• Response optional: “patent owner may file a preliminary

response”


14 14


• 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


• 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


• 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


• 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


• 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


• 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


• 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


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)


Disposition of CBM Petitions Completed to Date (7/31/2015)


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


IPR/CBM COMMERCIAL SUCCESS CONSIDERATIONS (ALL)


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


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%


IPR/CBM COMMERCIAL SUCCESS WRITTEN DECISIONS (CONDENSED)¹


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


IPR/CBM COMMERCIAL SUCCESS CONSIDERATIONS (CONDENSED)¹


Year Inadequate Proof of

Commercial Success No Marketplace Success No Causal Nexus

Total # % of

Total

No Attempt

to Prove


Proof #

% of

Total

No Attempt

to Prove


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.


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)?


1) Product Success

a) Absolute Performance

b) Relative Performance



• Shipments

• Revenues

• Prices

• Costs

• Profits



• Definition of market/competition

a) Product

b) Geographic

• Significance of market share

a) Over time

b) Versus Benchmark



Refill

Pe

rcen

tage

s



Product 1

Product 2

Product 3



Brand Product 1

Generic Product

Brand Product 2



Shipments

Product 1

Product 2

Product 3

Product 4

Product 5

Product 6


2) Causal Nexus

a) Features/Advantages of Patent (Versus Prior Art)

b) Importance of Patented Features/Advantages

c) Importance of Non-Patented Features/Advantages


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.”


a) Features/Advantages of Patent

• Patent Claims

• Prior Art

• Technical Opinion



• Internal Marketing Materials

• External Promotional Materials

• Industry Praise

• Company Testimony/Declarations

• Customer Testimony/Declarations

• Revealed Preferences

Party Actions

Licenses

Copying

• Consumer Studies/Surveys



• Product Features

• Non-Product Features

Price

Promotion

Brand Name

Custom


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


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


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

74 74

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

75 75

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.

76 76


• 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

77 77


• 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


• 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


• 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.

82 82

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

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