pros and cons: ptab vs. district courts

Renaissance IP Law Group

PTAB vs. District Courts: Pros & Cons

Ma#hew C. Phillips Kevin B. Laurence

Renaissance IP Law Group LLP

February 11, 2016

Patexia Webinar

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Agenda

•  Tools for Challenging Patent Validity •  Review of AIA Trial Procedures •  AIA Trial StaMsMcs •  Choosing a Forum to Challenge Validity

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Tools for Challenging Patent Validity

3


Tools for Challenging US Patents (Pre-‐AIA Patents)

Other Basis (§§ 101, 112)

Prior Art (§§ 102, 103)

Inter Partes Review

Ex Parte Reexam LiHgaHon

Printed PublicaMon

Charged with Infringement of Bus. Meth. Pat.

Covered Business Method Patent

Review

at USPTO 4


Tools for Patent Challengers (AIA FITF Patents UnHl 9/16/20)

Inter Partes Review

Outside IniMal 9-‐Mo. Window

Other Basis (§§ 101,112)

Prior Art (§§ 102, 103)


Printed PublicaMon

Covered Business Method Patent

Review

Post-‐Grant Review

Inside IniMal 9-‐Mo. Window

Charged with Infringement of Bus. Meth. Pat.


at USPTO 5


Tools for Challenging US Patents (AIA FITF Patents ARer 9/16/20)

Inter Partes Review


Other Basis (§§ 101, 112)

Prior Art (§§ 102, 103)


Printed PublicaMon

Post-‐Grant Review

Inside IniMal 9-‐Mo. Window

at USPTO 6


Review of AIA Trial Procedure

7


Full Timeline for Review Proceeding

≤ 6 months

~2.5 years

Prior to Trial ≤ 12 months

Trial ~13 months

Rehearing & Appeal

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Pre-‐Trial Proceedings

Prior to Trial Trial Rehearing & Appeal

NoMce of Filing Date

Review?

YES

PeMMon

3 mo. NO

1-‐2 wks.

Non-‐InsMtuMon Decision

Preliminary Response

up to 3 mo.

InsMtuMon Decision

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IniMal Conference Call

Final Wri#en Decision

InsMtuMon Decision (Order)

Appeal

CerMficate

Se#lement Agreement

Oral Hearing

Patent Owner Discovery

Appeal

Procedure for Trial (Without MoHon to Amend)

PeMMoner Discovery

MoMons

Reply Response

?

DD1 DD2

DD4-DD6 DD7

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Trial Timeline (Current Typical)

Owner Discovery Period

PeMMoner Discovery Period

1 2 3

Owner Discovery Period

7

MoMons to Exclude Evidence, Etc.

(DD4-‐DD6)

1 mo.

4 5 6

2 mos. 2 mos.

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AIA Trial StaHsHcs

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Review PeHHon Filings (as of Dec. 31, 2015)

1

10

100

1000

10000

IPR CBM PGR IPR CBM PGR IPR CBM PGR IPR CBM PGR IPR CBM PGR

FY 2013 FY 2014 FY 2015 FY 2016 FY 2012

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Review PeHHon Filings by Technology (FY2014-‐FY2016 through Dec. 31, 2015)

Electrical/ Computer

62%

Mechanical & Bus. Methods

23%

Chemical 6%

Bio/Pharma 9%

Design 0%

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Trial InsHtuHon Rate (as of Dec. 16, 2015)

0.0%

10.0%

20.0%

30.0%

40.0%

50.0%

60.0%

70.0%

80.0%

90.0%

100.0%

IPR CBM PGR IPR CBM PGR IPR CBM PGR IPR CBM PGR

FY 2013 FY 2014 FY 2015 FY 2016

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IPR Survival Rate (DisposiHon of Challenged Claims)

(as of Dec. 31, 2015)

Not Subject to Trial 57%

Sebled 13%

Canceled or Disclaimed by Patent Owner

5%

Found Unpatentable

21%

Found Patentable

4%

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IPR Survival Rate (DisposiHon of Claims Subject to Trial)

(as of Dec. 31, 2015)

Sebled 31%

Canceled or Disclaimed by Patent Owner

11%

Found Unpatentable

49%

Found Patentable

9%

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IPR Survival Rate (DisposiHon by FWD Only)

(as of Dec. 31, 2015)

All Claims Unpatentable

72%

Some Claims Unpatentable

15%

No Claims Unpatentable

13%

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Choosing a Forum for Challenging Validity

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Challenge in Court or PTAB? •  Assuming Both are Available for Your Validity Challenge •  PotenMal Differences

–  Nature of decision maker –  Claim construcMon/interpretaMon –  EvidenMary burdens –  Nature of supporMng evidence –  Discovery opportuniMes and burdens –  ParMcipaMon rights –  Claims frozen or fluid –  Number of arguments that can pracMcally be made –  Effect of overall equiMes –  Costs –  Timing –  Standing requirements –  Anonymity

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•  Decision Maker (PTAB or Court) –  Comfort zone for invalidaMng duly granted patent claims

•  Comfort reaching a conclusion different from the original examiner? •  Comfort finding claims obvious?

–  Different technical acumen •  How complex are your facts? •  Is the conclusion apparent once the facts are “properly” understood?

–  Different predilecMon or facility with legal doctrines •  Secondary consideraMons of nonobviousness •  Priority enMtlement •  Inherent disclosure

Challenge in Court or PTAB?

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ConvenHonal Wisdom (Generally) in LiHgaHon and Review Proceedings

AnHcipaHon Obviousness

LiMgaMon

Review Proceeding

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Best Bases for Aback at PTAB

IPR 103 > 102

PGR

PGR 101 > 103 > 102

CBM

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•  Claim ConstrucMon/InterpretaMon –  PTAB uses broadest reasonable interpretaMon (“BRI”) –  Courts

•  Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cri. 2005) (en banc) •  More likely narrow •  Less predictable

–  Is the prior art within the broadest reasonable meaning of the claims yet different from the disclosed embodiment(s)?


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•  EvidenMary Burdens –  Preponderance standard in PTAB –  Clear-‐and-‐convincing standard in court –  Ask yourself: Are the issues so close that the evidenMary burden might make a difference?

•  Is the prior art arguably ambiguous in its disclosure of a claim limitaMon?

•  Is the prior art status of the printed publicaMon a close quesMon?

•  Does the outcome turn on disputed, equally reasonable and supported expert opinions?


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•  Nature of SupporMng Evidence –  Federal Rules of Evidence apply in both court & PTAB

•  Rare for PTAB to exclude evidence –  At PTAB:

•  Evidence typically must be “on the paper” –  Documents –  DeclaraMons –  DeposiMon transcripts

•  Rare excepMons for live tesMmony at oral hearing in AIA trial

–  Courts permit all types of evidence, incl. live tesMmony –  Do you have a great witness to bring your posiMons to life?


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•  Discovery OpportuniMes and Burdens –  In court, discovery is wide ranging –  In PTAB, discovery is very limited

•  DeposiMons of declarants •  AddiMonal discovery is rarely granted

–  Ask yourself: •  Do you need any discovery from the patent owner to prove your invalidity case?

•  Might the patent owner benefit from discovery from you (e.g., to prove secondary consideraMons of non-‐obviousness based on your alleged infringement)?


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•  ParMcipaMon Rights –  Full parMcipaMon rights in court –  Full parMcipaMon rights in PTAB

•  PeMMon •  Depose patent owner’s declarants •  Reply to patent owner’s response •  Oral argument

–  ReexaminaMon, however, typically offers no parMcipaMon rights aner filing of request


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•  Claims Frozen or Fluid –  Claims are frozen in court –  Claims are fluid in reexaminaMon –  Claims are essen4ally frozen in review

•  MoMons to amend are rarely sought •  MoMons to amend are rarely granted •  Reissue and reexaminaMon are other opMons •  Any amendment must be narrowing (except in broadening reissue) •  Almost all amendments trigger intervening rights

–  Does the specificaMon support a limitaMon absent from the prior art but present in the accused device?


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•  Number of Arguments –  Limits in court

•  Page limits •  Time limits •  PracMcal limits on judge’s paMence & indulgence

–  Limits in AIA trials •  Page limits •  Redundancy doctrine •  Best to focus on a few (1-‐3) well developed challenge grounds

–  A mulMplicitous approach is be#er suited for reexaminaMon


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•  Effect of EquiMes –  Court

•  Lines between issues can be blurry •  Decision maker “takes it all in” •  Juries can be especially influenced by overall equity •  Juries seem to be especially moved by inventors

–  PTAB •  Bigger picture does not usually come through •  Perhaps some insMtuMonal bias against NPEs?


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•  Timing –  One-‐year bar for IPR

•  Must file IPR peMMon before 1-‐year anniversary of service of infringement complaint •  No such bar for CBM or PGR

–  No AIA trial possible aner DJ acMon for invalidity –  Stay

•  Court may stay liMgaMon pending AIA trial •  Special, more liberal stay statute for CBMs

–  Estoppel •  FWD in AIA trial triggers estoppel against peMMoner •  IPR & PGR: Scope of estoppel in court is validity challenges “raised or reasonably

could have been raised.” •  CBM: Scope of estoppel in court is just validity challenges “raised.” •  Don’t agonize over estoppel. Raise your validity challenges in the forum where they

are most likely to succeed (PTAB).


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•  Costs –  Differ by order(s) of magnitude –  LiMgaMon >> Review > ReexaminaMon

•  Standing –  No standing requirement to file review peMMon or reexaminaMon request

–  But beware of standing on appeal •  Anonymity

–  Not possible for liMgaMon or AIA trial –  Possible for reexaminaMon


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Factor Court PTAB

Decision maker

Claim interp./constr.

EvidenMary burden

SupporMng evid.

Discovery

ParMcipaMon rights

No. of arguments

Claim fluidity

Effect of equiMes

Cost

Timing

Standing

Anonymity


Thank You!

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Kevin B. Laurence Patent Attorney

Direct: (703) 448-8787 [email protected]

1940 Duke St., Suite 200

Alexandria, VA 22314 Fax: (503) 517-9919