Understanding the Final Post- Understanding the Final Post Grant - - PowerPoint PPT Presentation

▶
understanding the final post understanding the final post
SMART_READER_LITE
LIVE PREVIEW

Understanding the Final Post- Understanding the Final Post Grant - - PowerPoint PPT Presentation

Jan 23, 2024 104 likes •455 views

Understanding the Final Post- Understanding the Final Post Grant Rules and Regulations September 2012 Presenters Presenters: Joseph Mahoney jmahoney@mayerbrown.com Sharon Israel sisrael@mayerbrown.com K l F i Kyle Friesen

slide-1
SLIDE 1

Understanding the Final Post- Understanding the Final Post Grant Rules and Regulations

Presenters

September 2012

Presenters:

Joseph Mahoney

jmahoney@mayerbrown.com

Sharon Israel

sisrael@mayerbrown.com

K l F i

Mayer Brown is a global legal services provider comprising legal practices that are separate entities (the "Mayer Brown Practices"). The Mayer Brown Practices are: Mayer Brown LLP and Mayer Brown Europe‐Brussels LLP both limited liability partnerships established in Illinois USA; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales (authorized and regulated by the Solicitors Regulation Authority and registered in England and Wales number OC 303359); Mayer Brown, a SELAS established in France; Mayer Brown JSM, a Hong Kong partnership and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.

Kyle Friesen

kfriesen@mayerbrown.com

slide-2
SLIDE 2

Speakers

Sharon Israel Kyle Friesen Joseph Mahoney Sharon Israel Houston, TX +1 713 238 2630 sisrael@mayerbrown.com Kyle Friesen Houston, TX

+1 713 238 2691

kfriesen@mayerbrown.com Joseph Mahoney Chicago, IL

+1 312 701 8979

jmahoney@mayerbrown.com

slide-3
SLIDE 3

Introduction to Post-grant Proceedings

Relevant Statutes & Rules

  • Title 35 ‐ America Invents Act

– Replaces §§ 311‐319 (Inter partes) – Adds §§ 321‐329 (Post‐grant) – America Invents Act § 18 (Covered Business Method)

  • 37 CFR – PTO rules

– Part 42 – trial rules (1 et seq), inter partes rules (100 et seq), post‐grant l (200 t ) d b i th d l (300 t ) rules (200 et seq), covered business method rules (300 et seq)

– Web resources: http://www.uspto.gov/ip/boards/bpai/index.jsp; https://ptabtrials.uspto.gov/ p //p p g /

Post‐Grant Intellect 3

slide-4
SLIDE 4

Introduction to Post-grant Proceedings – Overview of Inter Partes & Post-Grant Reviews Who?

Anyone (except the patent owner)

When?

Inter Partes Review P t G t R i Inter Partes Review 9 months after issue or reissue Post‐Grant Review Before 9 months after issue or reissue issue or reissue For reissue: new and amended claims only and amended claims only

Post‐Grant Intellect 4

slide-5
SLIDE 5

Introduction to Post-grant Proceedings – Overview of Inter Partes & Post-Grant Reviews What?

Inter Partes Review Any patents Post‐Grant Review Patents with eff. filing date y p Patents and printed publications Patents with eff. filing date after March 16, 2013 Any grounds of invalidity (§§ 101, 102, 103, 112, etc.) Amendments and substitute claims permitted Amendments and substitute claims permitted Burden of Proof: Preponderance of the evidence S ttl t ll d Settlement allowed

Post‐Grant Intellect 5

slide-6
SLIDE 6

Introduction to Post-grant Proceedings – Overview of Covered Business Method Review

Covered patent claims: “ th d di t f f i d t “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration,

  • r management of a financial product or service,” but not

“technological inventions” Technological Inventions:

  • case‐by‐case determination
  • “claimed subject matter as a whole recites a technological feature

that is novel and unobvious over the prior art” and

  • “solves a technical problem using a technical solution”

Post‐Grant Intellect 6

slide-7
SLIDE 7

Introduction to Post-grant Proceedings – Overview of Covered Business Method Review

Standing: Sued for infringement or “charged” with infringement (DJ jurisdiction standard applied per 37 CFR § 42.302(a)) (DJ jurisdiction standard applied per 37 CFR § 42.302(a)) Different from PGR:

  • No nine month filing period
  • No nine month filing period
  • Any ground of unpatentability, BUT limited prior art for 102/103

challenges allowed g

  • No “reasonably could have raised” estoppel
  • stay provision (includes interlocutory appeal by right)

stay provision (includes interlocutory appeal by right) Sunset: Sept. 16, 2012 – Sept. 16, 2020

Post‐Grant Intellect 7

slide-8
SLIDE 8

Introduction to Post-grant Proceedings – Fees

Num ber of Claim s IPR Filing Fee PGR Filing Fee ≤ 20 $27,200 $35,800 Each add’l $600 $800

$180,000 $120 000 $140,000 $160,000 , $60 000 $80,000 $100,000 $120,000 PGR‐Proposed PGR‐Final IPR‐Proposed IPR‐Final $20,000 $40,000 $60,000 a Post‐Grant Intellect $0 20 25 30 35 40 45 50 55 60 65 70 75 80 8

slide-9
SLIDE 9

Introduction to Post-grant Proceedings – Proposed Changes to Fees g

77 FR 55028, 55069 S d f O i i & d i i i i

  • Staged fees – On petition & on decision to institute
  • Overall decrease in total – subsidized proceeding

Event IPR Filing Fee PGR Filing Fee Request $9 000 $12 000 Request $9,000 $12,000 Each claim > 20 in Request $200 $250 Trial Instituted $14,000 $18,000 Each claim > 15 in Trial $400 $550 Each claim > 15 in Trial $400 $550

Post‐Grant Intellect 9

slide-10
SLIDE 10

Introduction to Post-grant Proceedings – Life cycle

“Source: Office Patent Trial Practice Guide, 77 FR 48756, 48757 (Aug. 14, Source: Office Patent Trial Practice Guide, 77 FR 48756, 48757 (Aug. 14, 2012)”

Post‐Grant Intellect 10

slide-11
SLIDE 11

Beginning a PTO Trial – Petition, Response & Decision to Institute Petition

P i A t & Oth D t R l P t i I t t

  • Prior Art & Other Documents
  • Declarations
  • Real Party in Interest
  • Motion to Seal (if necessary)
  • Page Limit: 80 pages (Post‐Grant) or 60 pages (Inter Partes)
  • Claim construction

Preliminary Response

“Reasons why … review should not be instituted” Reasons why … review should not be instituted Evidence allowed, but testimony needs authorization Page Limit: Same as Petition Page Limit: Same as Petition

Post‐Grant Intellect 11

slide-12
SLIDE 12

Beginning a PTO Trial – Petition, Response & Decision to Institute

Decision Decision

I t P t R i P G R i Inter Partes Review Reasonable likelihood to prevail on one claim Post‐Grant Review More likely than not to prevail on one claim to prevail on one claim to prevail on one claim Not appealable but decision declining to institute Not appealable, but decision declining to institute may be subject to motion for rehearing

Post‐Grant Intellect 12

slide-13
SLIDE 13

Conduct of a PTAB Proceeding

P li i Preliminary Issues

  • Case schedule determined by order after decision to institute
  • Case schedule determined by order after decision to institute
  • Protective order – separate for each Motion to Seal
  • Objections to Petition evidence due within 10 days of decision

to institute

  • Initial Disclosures –
  • Agreed disclosures filed with Preliminary Response, or

g y p

  • Disclosures sought by motion

Post‐Grant Intellect 13

slide-14
SLIDE 14

Conduct of a PTAB Proceeding

P O Patent Owner Discovery

Discovery Allowed

  • “Mandatory” Initial Disclosures
  • Exhibits & Depositions of Declarants
  • Relevant Information “inconsistent with a position advanced” by a party
  • “Inventors, corporate officers, and persons involved in preparation or filing”
  • Served with the paper in which the position is advanced
  • On motion – “good cause” & “directly related to factual assertions” (PGR) v.

“interests of justice” (IPR)

Post‐Grant Intellect

interests of justice (IPR)

  • Evidence uniquely in the possession of party raising issue

14

slide-15
SLIDE 15

Conduct of a PTAB Proceeding

P O Patent Owner Response & Amendments

M i A d R t P titi Motion to Amend

  • Amend, cancel, or substitute

(“reasonable number”)

  • Identify support in spec

Response to Petition

  • Affirmative evidence of patentability
  • Rebuttal relying on cross‐

examination

  • Identify support in spec
  • Should “clearly state the

patentably distinct features”

  • No broadening or new matter

examination No broadening or new matter

Post‐Grant Intellect 15

slide-16
SLIDE 16

Conduct of a PTAB Proceeding

P i i Petitioner Discovery

O M i A d O P t t ’ R On Motion to Amend

  • Same discovery allowed
  • Challenge support

On Patentee’s Response

  • Same discovery allowed
  • Secondary Considerations
  • Challenge “patentably

distinct”

Post‐Grant Intellect 16

slide-17
SLIDE 17

Conduct of a PTAB Proceeding

P i i Petitioner Reply & Opp.

O A d R l ISO P titi

  • Opp. to Amendments
  • Expert testimony on new or

amended claims

  • Rebuttal relying on cross

Reply ISO Petition

  • Affirmative evidence, e.g., rebutting

secondary considerations

  • Rebuttal relying on cross
  • Rebuttal relying on cross‐

examination

  • Rebuttal relying on cross‐

examination

Post‐Grant Intellect 17

slide-18
SLIDE 18

Conduct of a PTAB Proceeding

P O Patent Owner Discovery & Reply

O P titi ’ O iti O P titi ’ R l On Petitioner’s Opposition

  • Same scope of discovery
  • Opportunity to file a Reply

ISO A d

On Petitioner’s Reply

  • Same scope of discovery
  • “Motion for observation”

ISO Amendments

Post‐Grant Intellect 18

slide-19
SLIDE 19

Conduct of a PTAB Proceeding

P H i Pre‐Hearing Motions

Evidentiary Motions – Federal Rules Request for Oral Argument Evidentiary Motions – Federal Rules

  • f Evidence Apply
  • Daubert motions – APJ’s expect data,

tests, methods, etc.

Request for Oral Argument Motions for Rehearing

, ,

  • Other motions to exclude evidence as

inadmissible

  • Taking official notice

No Final Briefing

Post‐Grant Intellect 19

slide-20
SLIDE 20

Conduct of a PTAB Proceeding

H i & Hearing & Final Decision

Possible Exceptions for Live No Live Witnesses Possible Exceptions for Live Testimony (Credibility, Interpreter) Twelve months to Decision No Live Witnesses No New Evidence from Institution not Petition No New Arguments

Post‐Grant Intellect 20

slide-21
SLIDE 21

Notable Differences Between Proposed Rules and Final Rules

  • Discovery –
  • Initial Disclosures;
  • E‐Discovery Order;
  • “Inconsistent Information” Not Limited to Non cumulative Information
  • Inconsistent Information Not Limited to Non‐cumulative Information
  • Patent Owner Estoppel Narrowed

S h d l d P Li it E d d

  • Schedules and Page Limits Expanded
  • Supplemental Information – Same Rules for Both Sides
  • Fees

21 Post‐Grant Intellect

slide-22
SLIDE 22

Discovery Under the Final Rules

  • Mandatory Disclosures

– By Agreement – 2 Options – Or By Motion

  • Timing – automatic on institution based on discovery of

information identified in initial disclosures information identified in initial disclosures

  • Privileges Apply As a Limit on Discovery

Additi l Di

  • Additional Discovery

– Agreed I t t f J ti (IPR)/G d C (PGR) – Interests of Justice (IPR)/Good Cause (PGR)

  • Burden on Party Seeking Discovery

D iti B P d

  • Depositions – Be Prepared

Post‐Grant Intellect 22

slide-23
SLIDE 23

Inter Partes and Post-Grant Review Advantages and Disadvantages g

Advantages Disadvantages Lower Burden of Proof Estoppel Possible stay of later filed litigation Limits on petition Possible intervening rights Front‐loaded costs “Broadest Reasonable Construction” Limited Prior Art (IPR only) Cheaper, More Focused Discovery Potential for New Claims Decision by 3‐APJ Panel Decision to Institute not Appealable Decision by 3 APJ Panel Decision to Institute not Appealable

Post‐Grant Intellect 23

slide-24
SLIDE 24

Petitioner’s Disadvantages Can Be Patent Owner’s Opportunities pp

  • Estoppel applies to privies
  • Selection of claims challenged provides intelligence
  • Amend claims to strengthen patent
  • Amendments to incorporate “District Court”‐style

construction

24 Post‐Grant Intellect

slide-25
SLIDE 25

Strategic Considerations – Petitioner Estoppel 35 U.S.C. §§ 315(e)(2), 325(e)(2): “The petitioner … or the real party in interest

  • r privy of the petitioner
  • r privy of the petitioner …

may not assert … that the claim is invalid on any ground that the petitioner raised

  • r reasonably could have raised.”

Post‐Grant Intellect 25

slide-26
SLIDE 26

Strategic Considerations – Patent Owner Estoppel 37 CFR § 42.73(d)(3) A patent applicant or owner is precluded from taking A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim; or (ii) An amendment of a specification or a drawing that was denied during the trial proceeding, but this pro ision does not appl to an application or this provision does not apply to an application or patent that has a different written description.

Post‐Grant Intellect 26

slide-27
SLIDE 27

Strategic Considerations - Procedure for Amendments 37 CFR §§ 42.121 & 42.221

  • Motion to Amend – limited to one, absent authorization
  • Filed at the time of the Patent Owner’s Response
  • “Reasonable number” of substitute claims (1‐to‐1 is presumed

reasonable)

  • Must identify support for claims in the disclosure, including the

disclosure of any priority application or patent N b d i d t

  • No broadening amendments
  • Must respond to ground of unpatentability

Post‐Grant Intellect 27

slide-28
SLIDE 28

Strategic Considerations - Procedure for Amendments Practice Guide (77 FR 48766‐67)

  • No ruling on amendments prior to final ruling but motion
  • No ruling on amendments prior to final ruling, but motion

to amend may be denied without prejudice if original claims are upheld

  • Additional motions to amend to further settlement

generally allowed

  • Amendments to address claim construction issues

– May request determination that claims are substantially y q y identical under 35 U.S.C. § 252

Post‐Grant Intellect 28

slide-29
SLIDE 29

Strategic Questions - Estoppel Hypothetical: Company A is sued for patent infringement by Company B 6 months after the patent issues by Company B – 6 months after the patent issues.

  • Company A has what it believes is strong prior art.

h ld f l f ? – Should Company A file a petition for PGR? – Does the calculus change if Company A instead has what it believes is a strong 112 challenge?

  • Petition is accepted.

– Should Company B amend its claims? – If amended claims survive, is A estopped from challenging the validity

  • f those amended claims in the district court action?

Post‐Grant Intellect 29

slide-30
SLIDE 30

Strategic Questions – Other Issues Freedom‐to‐Operate: Many companies rely on FTO opinions as the basis for entering the market rather than pursuing current reexam proceedings due to their disadvantages Will the new proceedings due to their disadvantages. Will the new proceedings alter this view and be used more to gain clarity regarding FTO? Settlement: Settlement: Is the ability to settle IPR/PGR a significant advantage?

Post‐Grant Intellect 30

slide-31
SLIDE 31

When Considering Filing a Petition for Review ... Know the Business Context

  • What current and future products face risk from the

p patent at issue?

  • What R&D interests are implicated?
  • Who are the competitors?

Know the Legal Context Know the Legal Context

  • What are the current infringement risks?
  • What are your other defenses?
  • What are your other defenses?
  • Who is the better audience (PTO or jury)?

Post‐Grant Intellect 31

slide-32
SLIDE 32

When Defending Against Petition for Review … Quick Reaction Is Important

  • Considerations Regarding Counsel

– Lead counsel (patent attorney): in‐house or outside – Pro hac vice litigation counsel (e.g., assist with discovery)

  • Considerations Regarding Experts

– Retained expert or employee(s)? Retained expert or employee(s)? – Inventor still employed/available?

  • Other considerations:

Other considerations:

– Disclaiming claims? – Advising Business Side About Risk Advising Business Side About Risk

Post‐Grant Intellect 32

slide-33
SLIDE 33

Strategies for Dealing with Patent Infringement Risk New Patent…

  • Pre‐issuance submission of prior art
  • Post‐grant review
  • Ex parte reexam
  • Inter partes review

p

  • Declaratory Judgment action
  • Wait and see
  • Wait and see

33 Post‐Grant Intellect

slide-34
SLIDE 34

Questions?

Contact Information

  • Joseph Mahoney

jmahoney@mayerbrown.com

  • Sharon Israel

sisrael@mayerbrown.com

  • Kyle Friesen

kfriesen@mayerbrown.com

Post‐Grant Intellect 34