PTAB TRIALS OVERVIEW 2019 Birch, Stewart, Kolasch and

PTAB TRIALS OVERVIEW 2019 Birch, Stewart, Kolasch and

PTAB TRIALS OVERVIEW 2019 Birch, Stewart, Kolasch and Birch, LLP 1 How Does A Third Party Modify a Patent After Issuance? AIA Trials (Congress had goal of less patent litigation): Inter Partes Review (IPR) (replaced inter partes reexamination on 09/16/12) Post-Grant Review (PGR) (09/16/12; but FITF patents only)

Post-Grant validity review of Covered Business Method patents (CBM) (09/16/12, but ends 09/16/20) 2019 Birch, Stewart, Kolasch and Birch, LLP 2 Advantages & Disadvantages Versus Litigation 2019 Birch, Stewart, Kolasch and Birch, LLP 3

Advantages to Third Party Petitioner A stay is possible in earlier filed litigation case Depends on district & particular judge The Patent Owner can create prosecution history disclaimer or estoppel while addressing the PTABs or Examiners grounds of rejections e.g., Patent Owner comments on prior art or claim construction. See, e.g., Digital Image Corp. v. Ubisoft Entertainment, SA, 13-cv-00353 (D. Del. Apr. 8, 2019). Accused infringer should mine the patent owners

statements from an IPR or PGR for admissions and disclaimers that can be used in the district court litigation. Estoppel prevents future litigation 2019 Birch, Stewart, Kolasch and Birch, LLP 4 Disadvantages to Third Party Petitioner Cannot resolve all patentability issues (limited grounds of challenge in IPRs, PGRs, etc.) Cannot resolve infringement issues Possibility of the PTO issuing a certificate which affirms that the patent claims are patentable over the submitted prior art/issues so as to enhance the

validity of the attacked patent claims 2019 Birch, Stewart, Kolasch and Birch, LLP 5 Costs for AIA Proceedings Costs too much? 2019 Birch, Stewart, Kolasch and Birch, LLP 6 Costs USPTO Fees for IPR

For 20 or less claims requested $15,500 (every claim being requested over 20 claims: $300) https:// www.uspto.gov/learning-and-resources/fees-and-paymen t/uspto-fee-schedule#PTAB%20Fees Institution fee: $15,000 for up to 15 claims every claim being reviewed over 15 claims: $600 Total: $30,500 2019 Birch, Stewart, Kolasch and Birch, LLP 7

Costs USPTO Fees for Post-Grant Reviews Covered business method patent or PGR request for 20 or fewer claims - $16,000 every claim requested over 20 claims: $375 Institution fee: $22,000 for up to 15 claims every claim being reviewed over 15 claims: $825 Total: $36,000 2019 Birch, Stewart, Kolasch and Birch, LLP 8

Patent Trial & Appeal Board Hierarchy 2019 Birch, Stewart, Kolasch and Birch, LLP 9 PTAB Organization (hierarchy): 2019 Birch, Stewart, Kolasch and Birch, LLP 10

PTAB Organization (hierarchy) (contd): As of May 2018: Director: Andrei Iancu Deputy Director: Laura A. Peter Commissioner for Patents: Drew Hirshfield Commissioner for Trademarks: Mary Boney Denison

Chief Judge at PTAB: Scott R. Boalick https://www.uspto.gov/about-us/executive-biographies 2019 Birch, Stewart, Kolasch and Birch, LLP 11 AIA PTAB statistics https://www.uspto.gov/patents-application-process/pat ent-trial-and-appeal-board/statistics 2019 Birch, Stewart, Kolasch and Birch, LLP 12

From USPTO: Preissuance Submissions (Data from Sept 16, 2013 to March 27, 2015) http://www.uspto.gov/patent/laws-and-regulations/america-invents-act-aia/aiastatistics 2019 Birch, Stewart, Kolasch and Birch, LLP 13 Petition filed Petitioner Opposition

Institution Decision PO Prel. Response PO Response/ Motion to Amend FWD

Oral Hearing Stage of Trial First Phase 2019 Birch, Stewart, Kolasch and Birch, LLP 14 AIA Trial Filings 2019 Birch, Stewart, Kolasch and Birch, LLP

15 From USPTO: IPR Petitions by Month IPR filings have been steady and relatively high the past year. 2019 Birch, Stewart, Kolasch and Birch, LLP 16 From USPTO: PGR Petitions by Month (02/01/18 to 02/01/19)

The number of PGR petition filings is still relatively low. 2019 Birch, Stewart, Kolasch and Birch, LLP 17 From USPTO: CBM Petitions by Month (02/01/18 to 02/01/19) The number of CBM filings are decreasing (in fact 0 in some months).

2019 Birch, Stewart, Kolasch and Birch, LLP 18 AIA Trial Filings by Tech 2019 Birch, Stewart, Kolasch and Birch, LLP 19 Petition filed Petitioner

Opposition Institution Decision PO Prel. Response PO Response/ Motion to Amend FWD

Oral Hearing Stage of Trial Second Phase 2019 Birch, Stewart, Kolasch and Birch, LLP 20 Institution Rates 2019 Birch, Stewart, Kolasch and Birch, LLP

21 Institution Rates by Tech 2019 Birch, Stewart, Kolasch and Birch, LLP 22 Trial Outcomes by Tech (March 2017 Statistics) 2019 Birch, Stewart, Kolasch and Birch, LLP 23

Settlement at Petition Phase 2019 Birch, Stewart, Kolasch and Birch, LLP 24 Settlement at Trial Phase 2019 Birch, Stewart, Kolasch and Birch, LLP 25 Petition

filed Petitioner Opposition Institution Decision PO Prel. Response PO Response/ Motion to

Amend FWD Oral Hearing Stage of Trial Second Phase 2019 Birch, Stewart, Kolasch and Birch, LLP 26

From Filing to FWD 2019 Birch, Stewart, Kolasch and Birch, LLP 27 Post-Grant Statistics (02/28/18) IPR filings are high and steady. Electrical/Computer has the most filings: Almost 62% of the IPR and CBM petitions filed are in the electrical/computer arts. 18% in mechanical; 13% are in the biotech/pharma; 7% in chemical.

Patent owners file a preliminary response the majority of the time for all IPRs and PGRs. Institution rate has been decreasing. 2019 Birch, Stewart, Kolasch and Birch, LLP 28 PGR v. IPR Similarities & Differences 2019 Birch, Stewart, Kolasch and Birch, LLP 29

PGR & IPR The petitioner has the burden of proving a proposition of unpatentability (i.e., obviousness in view of references A and B) by a preponderance of the evidence >50% 2019 Birch, Stewart, Kolasch and Birch, LLP 30 Some Differences Between Inter Partes Review & Post Grant Review IPR: all patents qualify

PGR: only patents subject to new FITF or 102/103 (so on or after March 16, 2013, but even later than this date) Slow ramp up in use likely 2019 Birch, Stewart, Kolasch and Birch, LLP 31 PGR for CBM Which patent qualifies? Patents that qualify: a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial

product or service, except that the term does not include patents for technological inventions 2019 Birch, Stewart, Kolasch and Birch, LLP 32 PGR for CBM Which patent qualifies? Technological invention definition: whether the claimed subject matter as a whole recites technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution Do many patents fall within these definitions? Many patents

include claims that could encompass financial applications. 2019 Birch, Stewart, Kolasch and Birch, LLP 33 PGR for CBM Which patent qualifies? Fairchild Semiconductor Corp. v. In-Depth Test LLC, CBM2015-00060, Paper 11 (PTAB Aug. 3, 2015) The 373 patent claims recite systems for testing components (claims 17) and for analyzing semiconductor test data (claims 814), and methods for testing semiconductors (claims 1520). Petitioner does not cite toand we do not findany language in claims 120 constituting or otherwise describing lower repair costs, reduced variability, product

quality, or cost saving activities, let alone any specific financial product or service or finance-related activity. Nor does Petitioner cite toand, again, we do not find any language in the specification of the 373 patent relating to a financial product or service. The 373 patent does not qualify as a covered business method patent under 18(d)(1) of the AIA. 2019 Birch, Stewart, Kolasch and Birch, LLP 34 PGR for CBM Who can file Only the real party in interest (third party requester)

or privy that has been sued or charged with infringement can file for this transitional proceeding 2019 Birch, Stewart, Kolasch and Birch, LLP 35 Differences Between IPR & PGR (contd) IPR: for pre-AIA patents, no wait. But for AIA patents, file the later of: 9 months after grant (immediately for reissue under H.R. 6621), or After termination of any PGR (see 311(c)).

PGR: (exactly) 9 months or earlier of patent grant (see 321(c)) Of reissue grant too, so long as not requesting cancellation of claim same as/narrower than claim in original patent. Shorter window than IPR DISADVANTAGE: How many issues are sufficiently defined or matured within 9 months? 2019 Birch, Stewart, Kolasch and Birch, LLP 36

Another IPR Deadline if Sued for Infringement As amended, 35 U.S.C. 315(b) provides that an IPR may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party-in-interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. 2019 Birch, Stewart, Kolasch and Birch, LLP 37 Differences Between IPR & PGR (contd)

PGR for CBM: charged with infringement, and file between 2012-2020 sunset provision 2019 Birch, Stewart, Kolasch and Birch, LLP 38 Lead Counsel before PTAB Before 3-panel judge of PTAB. Lead counsel must be practitioner registered with USPTO. PTAB may recognize pro hac vice (secondary) counsel as limited representation upon showing of good cause.

For example, non-registered attorney is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding. 2019 Birch, Stewart, Kolasch and Birch, LLP 39 The PTAB Decision The final written decision by the PTAB within one year of institution (granting) of IPR or PGR Any extension (up to 6 months) will be rare, such as joinder.

Rehearing before PTAB possible. 2019 Birch, Stewart, Kolasch and Birch, LLP 40 Differences Between IPR & PGR (contd) IPR: Must be prior art issues ( 102/103) in the form of patents or printed publications Cannot be based on prior public use or sale, lack of written description, etc. PGR: any unpatentability issues except for lack of

compliance with the best mode requirement ( 112, first paragraph) 2019 Birch, Stewart, Kolasch and Birch, LLP 41 Differences Between IPR & PGR (contd) PGR for CBM: like regular PGR, for prior art, can include non-published evidence or prior knowledge or use; excludes 102(e) prior art. Latest proposed PATENT ACT may change this.

2019 Birch, Stewart, Kolasch and Birch, LLP 42 Differences Between IPR & PGR (contd) IPR & PGR: limited discovery essentially limited to depositions of affiant or declarant of either party 2019 Birch, Stewart, Kolasch and Birch, LLP 43

Differences Between IPR & PGR (contd) PGR: Not as limited as IPR; some discovery related to factual assertions advanced by either party typically, such a factual assertion is by the affiant or declarant but given the possible issues that can be raised in PGR, more discovery may be allowed to determine if there is an on-sale bar, prior use, etc. 2019 Birch, Stewart, Kolasch and Birch, LLP 44

Differences Between IPR & PGR (contd) IPR and PGR: settlement possible Settlement agreement can be kept confidential No estoppel with settlement Discussed in more detail in later lecture 2019 Birch, Stewart, Kolasch and Birch, LLP 45 Threshold Standards A Comparison 2019 Birch, Stewart, Kolasch and Birch, LLP

46 Have to Meet Threshold Standard to Even Start Proceeding Ex Parte Reexam: Substantial New Question of Patentability (SNQ) Supplemental Examination: SNQ Inter Partes Reexam: SNQ before 09/16/2011; reasonable likelihood that the petitioner would prevail up until 09/15/2012 Inter Partes Review: reasonable likelihood Post-Grant Review: more likely than not at least one claim is unpatentable

2019 Birch, Stewart, Kolasch and Birch, LLP 47 Different Threshold Standards SNQ: A reasonable examiner would consider the teaching to be important in deciding whether or not at least one claim of the patent is patentable. Relatively low standard, and thus most ex parte reexam (and previous inter partes) requests are granted. 2019 Birch, Stewart, Kolasch and Birch, LLP 48

Different Threshold Standards (contd) With SNQ standard, 92% ex parte and 93% of inter partes requests are granted as of Sept. 30, 2014. Lower than prima facie case of unpatentability. Though request initially granted, sometimes patentability of claims are confirmed without a first Office Action rejecting claims. 2019 Birch, Stewart, Kolasch and Birch, LLP 49

Different Threshold Standards (contd) reasonable likelihood used for IPR: elevated standard over SNQ, but unclear. IPR standard intended to be higher than SNQ. Requires petitioner to present information that creates serious doubts about the patents validity. 2019 Birch, Stewart, Kolasch and Birch, LLP 50 Different Threshold Standards (contd)

IPRs reasonable likelihood threshold Satisfaction of this threshold standard depends on the petition for review and patent owners response and any submitted evidence to the petition. This test is used for evaluating whether a party is entitled to a preliminary injunction, and effectively requires petitioner to present a prima facie case of justifying a rejection of the claims in the patent. = prima facie case 2019 Birch, Stewart, Kolasch and Birch, LLP 51

Different Threshold Standards (contd) more likely than not: Legislative history shows PGR standard is slightly higher than IPR standard due to some of the issues that can be raised in PGR, such as enablement and 101 invention issues, that may require development through discovery. 157 Cong. Rec. S1375 (March 8, 2011, Sen. Kyl) 2019 Birch, Stewart, Kolasch and Birch, LLP 52

Different Threshold Standards (contd) PGRs more likely than not threshold Why higher than IPR standard? Will ensure the petitioner raising unpatentability issues present a complete case at the onset, and not merely relying upon obtaining info in discovery during PGR in order to satisfy the ultimate burden of showing invalidity (unpatentability) by a preponderance of the evidence. 2019 Birch, Stewart, Kolasch and Birch, LLP 53

Different Threshold Standards (contd) If a PGR or IPR petition is timely led, the Patent Owner has the right to le a preliminary response (within 3 months of the petition) to the petition, and any evidence, that sets forth reasons why no PGR/IPR should be instituted based upon the failure of the petition to meet any of the requirements listed above. 2019 Birch, Stewart, Kolasch and Birch, LLP 54

Different Threshold Standards (contd) But remember that once proceeding is started, it is prima facie case of unpatentability by preponderance of the evidence standard (>50%) 2019 Birch, Stewart, Kolasch and Birch, LLP 55 Relativity Summary (not to scale):

High beyond a shadow of a doubt beyond a reasonable doubt clear & convincing (invalidity in court) more likely than not (PGR) reasonable likelihood that petitioner will prevail (IPR) SNQP (ex parte reexam and supplemental exam) Low

2019 Birch, Stewart, Kolasch and Birch, LLP 56 PROCEDURE IN AN AIA TRIAL Timelines and Particulars 2019 Birch, Stewart, Kolasch and Birch, LLP 57 Inter Partes Review (IPR) Final USPTO Rules - Federal Register, Vol. 77,

No. 157, August 14, 2012 37 C.F.R. 42.100 42.123 Rules of Practice before PTAB - Federal Register, Vol. 77, No. 27, February 9, 2012 Further Rule Changes - Federal Register, Vol. 80, No. 96, May 19, 2015; Vol. 81, No. 63, April 1, 2016; Vol. 81, No. 81, April 27, 2016 2019 Birch, Stewart, Kolasch and Birch, LLP 58 Procedure for IPR: Summary of Timeline

TIMELINE: Petition filed attacking patent Patent Owner (PO) Preliminary PTAB Decision Response on Petition 3 months 01/01/2013

3 months 04/01/2013 Petitioner Reply to PO Response PO Response & Opposition to & Motion to Amendment Amend Claims 3 months 07/01/2013

10/01/2013 PO Discovery Period PO Reply to Opposition to Amendment 3 months Oral Hearing (on request) before PTAB

01/01/2014 Petitioner Discovery Period Final Written Decision by PTAB 1 month Second PO 02/01/2014 Discovery Period 2019 Birch, Stewart, Kolasch and Birch, LLP

Sometime after all replies submitted 07/01/2014 (within one year of petition decision) 59 Second Phase First Phase Petition

filed Petitioner Opposition Institution Decision FWD Appeal PO Prel. Response

PO Response/ Motion to Amend Oral Hearing Stage of Trial First Phase 2019 Birch, Stewart, Kolasch and Birch, LLP 60

Procedure for IPR/PGR Petitioner: reasonable likelihood that petitioner will prevail with respect to unpatentability USPTO PTAB decides if threshold is met on a case-by-case basis (otherwise little guidance offered) 14,000 words (previously 60-page) limit for petition (18,700 words, previously 80-page, limit for PGR and CBM). Excluded: Table of Contents; Table of Authorities; Listing of Facts; Grounds for Standing; Service; Word Certification; Appendix for Exhibits. 2019 Birch, Stewart, Kolasch and Birch, LLP

61 Petition filed Petitioner Opposition Institution Decision FWD Appeal

PO Prel. Response PO Response/ Motion to Amend Oral Hearing Stage of Trial First Phase 2019 Birch, Stewart, Kolasch and Birch, LLP

62 62 Procedure for IPR/PGR (contd) If an IPR petition is timely led, the patent owner has the right to le a preliminary response (within 3 months of the petition) to the petition that sets forth reasons why no IPR should be instituted based upon the failure of the petition to meet any of the requirements listed above. Old rule: no testimonial evidence 2019 Birch, Stewart, Kolasch and Birch, LLP

63 PTAB 2016 Rules Patent Owner Pre-Institution Evidence Allows patent owners to include, with their opposition to a petition to institute a proceeding, new testimonial evidence such as an expert declaration. No right of cross-examination of a declarant exists before institution. Any factual dispute that is material to the institution decision will be resolved in favor of the petitioner solely for purposes of making a determination about whether to institute. This change responds to commentary raising concerns that patent

owners are disadvantaged by old rules that let petitioners evidence go unanswered before a trial is instituted. 2019 Birch, Stewart, Kolasch and Birch, LLP 64 Procedure for IPR/PGR (contd) The USPTO will determine whether to institute an IPR within three months after: (1) Receiving a preliminary response to the petition; or (2) if no such preliminary response is led, the last date on which such response may be led.

2019 Birch, Stewart, Kolasch and Birch, LLP 65 Petition filed Petitioner Opposition Institution Decision FWD

Appeal PO Prel. Response PO Response/ Motion to Amend Oral Hearing Stage of Trial Second Phase

2019 Birch, Stewart, Kolasch and Birch, LLP 66 Procedure for IPR/PGR: Patent Owner Motion During an IPR, the patent owner may file one motion to amend the patent in one or more of the following ways: (A) cancel any challenged patent claim; and (B) for each challenged claim, propose a reasonable number of substitute claims. Have to state the written description support for claim amendments/new claims. Presumption that one substitute claim per challenged

claim. 2019 Birch, Stewart, Kolasch and Birch, LLP 67 Procedure for IPR/PGR: Patent Owner Motion (contd) 35 U.S.C. 316(d)(2) provides that additional motions to amend the claims may be permitted upon the joint request of the petitioner and the patent owner to advance materially the settlement of a proceeding. A showing of good cause needed.

The patent owner is not allowed to enlarge the scope of the claims of the patent or introduce new matter. 2019 Birch, Stewart, Kolasch and Birch, LLP 68 Procedure for IPR/PGR: Patent Owner Motion (contd) One-to-one correspondence of claims. Example: the patent owner files motion to amend the 007 patent by:

Claim 1 (X + Y + Z) is canceled. Claim 2 is newly added (X + Y + Z). 2019 Birch, Stewart, Kolasch and Birch, LLP 69 Procedure for IPR/PGR: Petitioner Reply to Patent Owner Within 3 months, the third party petitioner can file opposition to patent owners response/motion. Must comply with content requirements for motions. Must identify material facts in dispute. Any material fact not specifically denied may be

considered admitted. 2019 Birch, Stewart, Kolasch and Birch, LLP 70 Procedure for IPR/PGR: Patent Owner Response to Petitioners Opposition to Motion to Amend Within 1 month, PO can file motion contesting petitioners motion/response. More limited discovery by PO prior to filing second motion is possible.

2019 Birch, Stewart, Kolasch and Birch, LLP 71 Procedure for IPR/PGR: Additional Motions Possible After PO filing motion contesting petitioners motion/response, the Petitioner can file a Motion for Observation & Motion to Exclude Evidence. PO can file Motion of Opposition responsive to Petitioners Motion(s). Petitioner can file Reply to POs Motion. 2019 Birch, Stewart, Kolasch and Birch, LLP

72 Petition filed Petitioner Opposition Institution Decision FWD

Appeal PO Prel. Response Discovery 2019 Birch, Stewart, Kolasch and Birch, LLP PO Response/ Motion to Amend Oral Hearing

Stage of Trial First and Second Phases 73 Discovery 35 U.S.C. 316(a)(5) & 326(a)(5) allows discovery. The five Garmin factors and the "interests of justice"/"good cause" standards. IPR2013-0001, Garmin v. Cuozzo, Paper No. 26, pp. 6-7, March 5, 2013.

IPR2013-00043, Corning Incor. v. DSM IP Assets B.V., Paper No. 27, pp. 2-7, June 21, 2013. Discovery can be agreed upon by parties without PTAB authorization. 2019 Birch, Stewart, Kolasch and Birch, LLP 74 IPR/PGR is a Motions Practice with Limited Discovery Motions are filed by both sides with alternating due dates. Limited discovery is generally:

If exhibit cited, can cross-examine witness If affidavit or declaration filed, then can depose witness Additional discovery possible; for IPR have to satisfy interests of justice standard (very high) Parties can agree to additional discovery among themselves 2019 Birch, Stewart, Kolasch and Birch, LLP 75 Types of Discovery in IPR/PGR Discovery is limited to: Limited discovery which is among parties themselves

at any time (42.51(a)). Routine discovery ( 41.51(b)) consists of information that is inconsistent with a position that a party has taken: Includes (i) serving copies of any exhibits cited in a paper or testimony; (ii) cross-examination of persons that have submitted affidavits/declarations; and (3) service of noncumulative information inconsistent with a position advanced by the party during the proceeding, concurrent with the filing of documents containing the inconsistency. 2019 Birch, Stewart, Kolasch and Birch, LLP 76

Types of Discovery in IPR/PGR (contd) Discovery is limited to: Additional Discovery: Production of Documents and Things: basically limited to providing copies of documents or access to things that are being relied on by a party ( 42.51(c)(2)); and All other discovery requires motion and satisfying the interests of justice standard ( 42.51(c)(1)). 2019 Birch, Stewart, Kolasch and Birch, LLP 77

IPR/PGR: Basically Limited Discovery IPR/PGR: witnesses submitting affidavits or declarations may be deposed: If exhibit cited, can cross-examine witness If affidavit or declaration filed, then can depose witness 2019 Birch, Stewart, Kolasch and Birch, LLP 78 Authorization for Additional Discovery Is Rare in IPR Additional discovery available if otherwise

necessary in the interests of justice. But will be rarely applied. In contrast, additional discovery is good cause in PGR (easier). 2019 Birch, Stewart, Kolasch and Birch, LLP 79 Limited Discovery Example Example: a patent owner may be granted additional discovery to challenge if the petitioner even has standing (i.e., the petitioner may have been a real party in interest or privy in a prior proceeding, and thus estopped from filing the IPR; thus, some

discovery is needed to ascertain if the petitioner has standing) 2019 Birch, Stewart, Kolasch and Birch, LLP 80 Very Limited Discovery (contd) The otherwise necessary in the interests of justice standard in IPR: In interferences, although compelled discovery has been a theoretical possibility for many years, it is very difficult to force an opponent to produce documents or provide information.

2019 Birch, Stewart, Kolasch and Birch, LLP 81 Petition filed Petitioner Opposition Institution Decision FWD

Appeal PO Prel. Response Joinder 2019 Birch, Stewart, Kolasch and Birch, LLP PO Response/ Motion to Amend Oral

Hearing Stage of Trial First and Second Phases 82 Joinder 35 U.S.C. 315(c) & 325(c) The Director, in his or her discretion, may join as a party to that IPR or PGR. IPR2013-00109, Microsoft v. Proxyconn, Paper No. 15, pp. 2-5, Feb. 25, 2013. IPR2014-00508, Target Corp v. Destination Maternity Corp., Paper Nos. 18 and 20, Sept. 25, 2014, & Paper

No. 28, Feb. 12, 2015 (expanded Board panels). 2019 Birch, Stewart, Kolasch and Birch, LLP 83 Joinder (contd) File 41.122(b) motion for joinder with second IPR petition. But see IPR2013-00495 for exception. 2019 Birch, Stewart, Kolasch and Birch, LLP 84

Petition filed Petitioner Opposition Institution Decision FWD Appeal PO Prel.

Response PO Response/ Motion to Amend Oral Hearing Stage of Trial Second Phase 2019 Birch, Stewart, Kolasch and Birch, LLP

85 Oral Hearing Petitioner has burden of proof by a preponderance of evidence Each party has 45 minutes Petitioner can reserve rebuttal (e.g., 10 or 15 minutes) 2019 Birch, Stewart, Kolasch and Birch, LLP 86 Oral Hearing (contd)

Does the oral hearing help? Use of demonstratives. Too many? What is persuasive or helpful. Likely will not present all anticipated arguments 2019 Birch, Stewart, Kolasch and Birch, LLP 87 Oral Hearing (contd) Arguing before judge: patent cases may be rare Oral argument may be both educational and persuading the

judge Arguing before PTAB: extensive background in patent law Not educational Can focus on complexities in patent law, such as particular obviousness rationale; inherent teaching of a reference; etc. 2019 Birch, Stewart, Kolasch and Birch, LLP 88 Petition filed

Petitioner Opposition Institution Decision FWD Appeal PO Prel. Response PO

Response/ Motion to Amend Oral Hearing Stage of Trial Second Phase 2019 Birch, Stewart, Kolasch and Birch, LLP 89 Procedure for IPR (contd)

The final written decision by the PTAB within one year of institution (granting) of inter partes review Any extension (up to 6 months) will be rare. Appeal to CAFC (only) Estoppel attaches with PTAB decision 2019 Birch, Stewart, Kolasch and Birch, LLP 90 Real Party In Interest Requirement Be Mindful of Concurrent or Potential

Litigation 2019 Birch, Stewart, Kolasch and Birch, LLP 91 Petition filed Petitioner Opposition Institution Decision

FWD Appeal PO Prel. Response PO Response/ Motion to Amend Oral Hearing

Stage of Trial First Phase 2019 Birch, Stewart, Kolasch and Birch, LLP 92 How is Real Party in Interest Determined? 35 U.S.C.312(a) and322(a) requires that all real parties in interest be identified. See also 37 C.F.R.42.8(b)(1) requirement to identify all RPIs in mandatory notices. Important to avoid harassment of patent owner.

Important for estoppel of later proceedings. No two bites at the apple Applies to district court, ITC, and other USPTO postgrant proceedings 2019 Birch, Stewart, Kolasch and Birch, LLP 93 The Real Party in Interest The person or entity whose rights are involved and stands to gain from the petition or proceeding (or lawsuit) even though the petitioner is someone else. Look at the relationship between the party and the proceeding (not between the parties).

IMPORTANT due to estoppel provisions. 2019 Birch, Stewart, Kolasch and Birch, LLP 94 How is Real Party in Interest Determined? (contd) The USPTO says no bright-line rule. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,75960 (Aug. 14, 2012). May be different for IPR, PGR, and CBM IPR/PGR party desiring review CBM statute dictates that party desiring review must

have been charged with infringement 2019 Birch, Stewart, Kolasch and Birch, LLP 95 Real Party in Interest Identification 35 U.S.C. 312(a)(2) & 322(a)(2): An IPR/PGR Petition requires identification of all real parties in interest. Federal Register, Vol. 77, No. 157, pp. 48759-60, August 14, 2012. IPR2012-00018 (& -19, -20, -23), Intellectual Ventures Management v. Xilinx, Inc., Paper No. 12, pp. 2-4, Jan. 24,

2013. IPR2014-00041 (& -43, -51, -54, -55), GEA Process Eng., Inc. v. Steuben Foods, Inc., Paper No. 135, pp. 22-26, Dec. 23, 2014. 2019 Birch, Stewart, Kolasch and Birch, LLP 96 Decision Real Party in Interest IPR2014-00041 (& -43, -51, -54, -55), GEA Process Eng., Inc. v. Steuben Foods, Inc., Paper No. 135, pp. 22-26, Dec. 23, 2014 Holding was that the nonparty that paid the petitioners legal fees for conduct of the inter partes

review to be an RPI the real parties in interest The Board considered key facts of how 100% of IPR expenses billed and paid by nonparty (though legal fees paid after petition was filed); nonparty and GEA are related companies with common parent company; Pillsbury represents GEA and nonparty in litigation and IPR. 2019 Birch, Stewart, Kolasch and Birch, LLP 97 Decision Real Party in Interest (contd) GEA Process Eng., Inc. v. Steuben Foods, Inc.

The Board relies on petitioners identification of the RPI to determine conflicts of interest for the Office, the credibility of evidence presented in a proceeding, and standing of a party that previously has filed a civil action involving a patent for which an [inter partes review] is requested. When an IPR Petition is dismissed, you lose your filing date! 2019 Birch, Stewart, Kolasch and Birch, LLP 98 RPI Requirement for AIA Proceedings Estoppel applies to all RPIs as well as to any

privies to the petitioner. One who is a partaker, or has any part or interest in the proceeding. Involved in a particular transaction that results in a union, connection, or direct relationship with another. 2019 Birch, Stewart, Kolasch and Birch, LLP 99 Petition filed Petitioner

Opposition Institution Decision FWD Appeal PO Prel. Response PO Response/ Motion to

Amend Oral Hearing PTAB Trial ends with FWD 2019 Birch, Stewart, Kolasch and Birch, LLP 100 Estoppel 35 U.S.C. 315(e) & 325(e): (e) Estoppel.

(1)Proceedings before the office. The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review. (2)Civil actions and other proceedings. The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.

2019 Birch, Stewart, Kolasch and Birch, LLP 101 Different Estoppels Ex parte reexam: no estoppel Inter partes reexam: raised or could have raised PGR for CBM: issues actually raised IPR and PGR: raised or reasonably could have

raised during the review Better estoppel versus inter partes reexam 2019 Birch, Stewart, Kolasch and Birch, LLP 102 Raised or Could Have Raised in PGR and IPR Old standard: raised or could have raised: Newly discovered prior art not being subject to estoppel provision. This is a big disincentive for TPR to file inter partes

reexam (how do you define could have raised?). 2019 Birch, Stewart, Kolasch and Birch, LLP 103 Estoppel (after the FWD) IPR or PGR: cannot later raise issues that were raised or reasonably could have [been] raised during the post-grant proceeding. Better estoppel versus inter partes reexam (no reasonably language). Newly discovered prior art/issue not being subject to estoppel provision.

2019 Birch, Stewart, Kolasch and Birch, LLP 104 Estoppel (contd) Estoppel applies to those claims reviewed after institution (not before), and does not apply to the patent (which may have claims not being reviewed in the IPR). No estoppel for claims not instituted. 2019 Birch, Stewart, Kolasch and Birch, LLP

105 An Example of IPR Estoppel Company X raises the issue that Company Zs patent is unpatentable due to a combination of References A + B (rejection for obviousness) in an IPR Company X is aware of Reference C at the time of IPR Then Company X loses the IPR 2019 Birch, Stewart, Kolasch and Birch, LLP 106

An Example of IPR Estoppel (contd) Company X cannot later raise another issue, such as a rejection for anticipation or obviousness using References A, B and/or C, in any proceeding (district court, ITC, USPTO) if that issue could have been raised in the IPR. 2019 Birch, Stewart, Kolasch and Birch, LLP 107 An Example of IPR Estoppel (contd) Reference D may be raised if newly discovered prior art.

But remember, cannot be prior art in form of, e.g., prior public sale or use. Therefore, if you do get involved in a IPR, you do not get two bites at the apple in any forum. 2019 Birch, Stewart, Kolasch and Birch, LLP 108 An Example of Estoppel (contd) Praxair Distribution, Inc. and NOxBOX Limited v. INO Therapeutics LLC Case IPR2016-00781

Patent 8,846,112 B2 2019 Birch, Stewart, Kolasch and Birch, LLP 109 An Example of Estoppel (contd) Petitioner does not identify: The actual searcher Searchers skill level and experience in the field Why searcher searched certain keywords The PTAB was not persuaded that Petitioner demonstrated that a skilled searcher conducting a

diligent search would not have expected to discover these sources. Petitioner could have raised the grounds earlier and is therefore estopped. 2019 Birch, Stewart, Kolasch and Birch, LLP 110 An Example of PGR Estoppel Company X raises the issue that Company Zs patent is unpatentable due to non-compliance with the enablement requirement in a PGR Then Company X loses the PGR

2019 Birch, Stewart, Kolasch and Birch, LLP 111 An Example of PGR Estoppel (contd) Company X cannot later raise another issue, such as a rejection for lack of utility or anticipation, in any proceeding (district court, ITC, USPTO) if that issue could have been raised in the PGR. Therefore, if you do get involved in a PGR, you do not get two bites at the apple in any forum. 2019 Birch, Stewart, Kolasch and Birch, LLP

112 Recent Issues Changing post-grant practice 2019 Birch, Stewart, Kolasch and Birch, LLP 113 Oil States Energy Services, LLC v. Greenes Energy Group, LLC SCOTUS (U.S. April 2018) IPRs are constitutional Government grant of patent

Patent validity trial does not violate the 7 th Amendment. 2019 Birch, Stewart, Kolasch and Birch, LLP 114 SAS Institute Inc. v. Matal - Institution Previously, PTAB employed partial institution as a way to narrow the scope of the IPR trial. SCOTUS (U.S. April 2018), 5-4 vote PTOs regulation allowing PTAB to partially institute is improper. The Board must address every claim the petitioner has

challenged. Institution must be all or nothing of the challenged claims. Really changed POPR practice! 2019 Birch, Stewart, Kolasch and Birch, LLP 115 St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. Sovereign Immunity Generic companies like Mylan wanted generic version of Restasis, a treatment for chronic dry eyes. Allergan assigned patent to Saint Regis Indian tribe. The Board denied motion to terminate; instituted IPR

despite patent being assigned to Native American Indian tribe. Fed. Cir. (July 2018) affirmed (IPRs are not necessarily proceedings in which Congress contemplated tribal immunity to apply). Applies to universities? 2019 Birch, Stewart, Kolasch and Birch, LLP 116 VirnetX Inc. v. Apple, Inc. Collateral Estoppel PTAB determined RFC 2401 was a printed publication in IPR2016-00332, Paper 29, pp. 5-6 (PTAB, June 22, 2017)

VirnetX Inc. v. Apple, Inc., Appeal Nos. 2017-2490, 2494 (Fed. Cir. Dec. 10, 2018) (appeal from IPR2016-00331) Rule 36 decision (no explanation) in another IPR appeal involving same prior art reference VirnetX is collaterally estopped from contesting RFC 2401 is not a printed publication Estoppel applies in PTAB and district court proceedings 2019 Birch, Stewart, Kolasch and Birch, LLP 117 IPR Has One Year Time Bar 35 U.S.C. 315(b):

(b) PATENT OWNERS ACTION.An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). The 1-year clock starts when the petitioner, real partyin-interest, or privy of the petitioner is served with a complaint for patent infringement. 2019 Birch, Stewart, Kolasch and Birch, LLP 118 IPR: One-Year Limit

OLD LAW: 315(b) bars institution of an IPR if petition is filed more than a year after the petitioner is served with the first complaint alleging infringement of the patent at issue, unless that complaint is dismissed without prejudice in its entirety, such that the parties are left in the same legal position as though the complaint was never filed. This provides early resolution, reduces amount of litigation (i.e., duplicative or parallel proceedings), and gives certainty to patent owner. 2019 Birch, Stewart, Kolasch and Birch, LLP 119

IPR: One-Year Limit OLD LAW: one year clock did not start with either of the following: (1) The complaint filed against the petitioner was voluntarily dismissed without prejudice; and (2) The waiver of service of the complaint was not properly filed with the court. Macauto U.S.A. v. BOS Gmbh & KG, IPR2012-00004, Jan. 24, 2013. A voluntary dismissal without prejudice leaves the parties as though the action had never been brought. Patent owner did not file the waiver of service with the court. 2019 Birch, Stewart, Kolasch and Birch, LLP

120 IPR: One-Year Limit & Joinder Proppant Express Investments, LLC v. Oren Tech., LLC, IPR2018-00914, Paper 38 (PTAB Mar. 13, 2019) 1st IPR did not institute on claim 4. Petitioner filed 2nd IPR on claim 4 and joinder request (denied due to same party). Original denial due to same party; on rehearing, same party joinder and new issues are allowed. Colas Solutions Inc. v. Blacklidge Emulsions, Inc., IPR201800242, Paper 9 (PTAB Feb. 27, 2018) Joinder denied where moving party previously filed invalidity lawsuit more than year before, even though IPR was filed by a

different company (Asphalt Products Unlimited). 2019 Birch, Stewart, Kolasch and Birch, LLP 121 Click-to-Call Tech. v. Ingenio, Inc., Yellowpages.com, LLC IPR 1-Year Time Bar NEW LAW: Federal Circuit (Appeal No. 20151242; Aug. 16, 2018) reversed long-standing practice of PTAB accepting IPR petitions outside the one-year window of 35 U.S.C. 315(b) A voluntary dismissal of a complaint still counts and starts the clock! 2019 Birch, Stewart, Kolasch and Birch, LLP

122 BRI to Phillips Claim Construction Nov. 2018: change to the Phillips claim construction standard for IPRs, PGRs, and CBMs for unexpired patents and MTA claims. With BRI, petitioner can take a different position on claim construction versus the concurrent litigation

Under Phillips, Petitioner cannot now be inconsistent and likely same claim construction as in district court. 2019 Birch, Stewart, Kolasch and Birch, LLP 123 In re Aqua Products - Motion to Amend 872 F.3d 1290 (Fed. Cir. 2017) 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims. In practice, the petitioner gets a Sur-Reply (the last word)

See Western Digital Corp. v. Spex Tech, IPR201800082/-00084, Paper No. 13, April 25, 2018 PTABs guidance on MTA practice. 2019 Birch, Stewart, Kolasch and Birch, LLP 124 Patent Owner Motion to Amend & Proposed New Procedure Formalities and Explaining Patentability of Substituted Claims 2019 Birch, Stewart, Kolasch and Birch, LLP

125 Petition filed Petitioner Opposition Institution Decision PO Response

PO Response/ Motion to Amend FWD Oral Hearing Stage of Trial Second Phase

2019 Birch, Stewart, Kolasch and Birch, LLP 126 PTAB Rules (April 2016) Patent Owner Motion to Amend 35 U.S.C. 316(a)(9) & 326(a)(9): allows patent owner to file motion to amend the patent claims. Changes The rules note the PTABs development of motions-toamend practice through its own body of decisions, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof. 2019 Birch, Stewart, Kolasch and Birch, LLP

127 Summary of Requirements for Motion to Amend Original and proposed substitute claims are construed in broadest possible terms (BRI or Phillips) as understood by one of ordinary skill in the art and consistent with specifications; Proposed claims may not enlarge original claims and must have support in written description; Patent Owner bears the burden of proof to establish that it is entitled to addition/substitution of the proposed claims (but note In re Aqua Products); Patent Owner must demonstrate patentability of new/substitute

claims over prior art of record, prior art raised by petitioner, and prior art otherwise known to the Patent Owner by preponderance of the evidence standard. 2019 Birch, Stewart, Kolasch and Birch, LLP 128 Two Types of Patent Owner Motions Motion to cancel claims (as of mid-May 2016, 32/32 granted ~ 100%). PTAB Study (Sept. 2018) Motion to amend (21/205 ~ 10% granted or granted in part). 2019 Birch, Stewart, Kolasch and Birch, LLP

129 Substitute Claims and Motion to Amend Precedential decision for MTA guidance: Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, IPR2018-01130, Paper No. 15, Feb. 25, 2019. MTA treat as contingent Burden of persuasion Generally, a reasonable number of substitute claims is one More permitted explanation for additional claim(s) and why the number of proposed substitute claims is reasonable.

Whether reasonable case-by-case basis determination. 2019 Birch, Stewart, Kolasch and Birch, LLP 130 PO Motion to Amend Can contain declarations/affidavits as support. Probably have to submit anyway The claim amendment: Cancel claim(s) and propose a reasonable number of substitute claims for the cancelled claim(s) Example: the patent owner files motion to amend the 007 patent

by: Claim 1. (X + Y + Z) is canceled. Claim 2. is newly added (X + Y + Z). 2019 Birch, Stewart, Kolasch and Birch, LLP 131 PO Motion to Amend Petitioners attack on MTA claims not limited to anticipation and obviousness. Amazon.com Inc. v. Uniloc Luxemborg S.A., IPR2017-00948, Paper No. 34, Jan. 18, 2019

(precedential) Unpatentability assertion can be based on, e.g., 101. 2019 Birch, Stewart, Kolasch and Birch, LLP 132 How Often Are These Motions Granted? (contd): USPTO Study (Sept. 30, 2018) 2019 Birch, Stewart, Kolasch and Birch, LLP 133

How Often Are These Motions Granted? (contd): USPTO Study (Sept. 30, 2018) 2019 Birch, Stewart, Kolasch and Birch, LLP 134 How Often Are These Motions Granted? (contd): USPTO Study (Sept. 30, 2018) 2019 Birch, Stewart, Kolasch and Birch, LLP

135 How Often Are These Motions Granted? (contd): USPTO Study (Sept. 30, 2018) 2019 Birch, Stewart, Kolasch and Birch, LLP 136 How Often Are These Motions Granted? (contd): USPTO Study (Sept. 30, 2018) 2019 Birch, Stewart, Kolasch and Birch, LLP

137 How Often Are These Motions Granted? (contd): USPTO Study (Sept. 30, 2018) 2019 Birch, Stewart, Kolasch and Birch, LLP 138 New Pilot Program for Motion to Amend Practice Director Iancu: initiative to give patent owners a meaningful opportunity to amend claims. See:https://

www.federalregister.gov/documents/2019/03/15/2019-04897/n otice-regarding-a-new-pilot-program-concerning-motion-to-am end-practice-and-procedures-in-trial The pilot program provides patent owners with two options not previously available. The first option is that a patent owner may choose to receive preliminary guidance from the Board (e.g., short paper) on its motion to amend. The second option is that a patent owner may choose to file a revised motion to amend after receiving petitioners opposition to the original motion to amend and/or after receiving the PTABs preliminary guidance (if requested). If a patent owner does not elect either of those options, the motion to amend practice is essentially unchanged from current practice. 2019 Birch, Stewart, Kolasch and Birch, LLP

139 2019 Birch, Stewart, Kolasch and Birch, LLP 140 2019 Birch, Stewart, Kolasch and Birch, LLP 141 Estoppel For the Patent Owner 42.73(d)(3)(i): Patent owner cannot obtain a claim in any other patent that is not patentably distinct from a claim canceled or finally refused during the IPR (or

PGR). The patent owner can amend claims (or add new claims) by filing a reissue or ex parte reexam (or supplemental examination). Effect of estoppel provisions not seen in practice (yet). Is this substantive rule-making by the USPTO? 2019 Birch, Stewart, Kolasch and Birch, LLP 142 Estoppel For the Patent Owner (contd) 42.73(d)(3)(i): Emphasizes importance of Patent Owner Motion to Amend in the IPR (or PGR) (to avoid this type of estoppel).

But MTAs are still rarely granted. Post-Aqua: Motions to Amend are granted at more than twice (~18-19%) the rate than Pre-Aqua. 2019 Birch, Stewart, Kolasch and Birch, LLP 143 Considerations and Strategies Inter Partes Review and Ex Parte Reexamination Practical Implications

2019 Birch, Stewart, Kolasch and Birch, LLP 144 Considerations & Strategies Inter partes review of a patent is a relatively quick process, and sometimes requested as a substitution for litigation or a concurrent proceeding with litigation. Stay of future litigation likely. Estoppel is one-way. Filing an IPR petition requires a detailed explanation of how the prior art renders the patent

claim(s) as unpatentable, and thus the patent claim(s) should be canceled. 2019 Birch, Stewart, Kolasch and Birch, LLP 145 Considerations & Strategies (contd) Obviously costs. One year (or 18 months in complicated cases) from institution is relatively quick. Generally need Affidavit/Declaration evidence. Declarants from either side can be deposed. 2019 Birch, Stewart, Kolasch and Birch, LLP

146 Considerations & Strategies (contd) Carefully and quickly decide whether to file Preliminary Response. Banned by statute/estoppel? Clear problems with the prior art? Petitioner cannot file Reply to Preliminary Response. Patent Owner Response will be due quickly, so begin preparation when first notified. 2019 Birch, Stewart, Kolasch and Birch, LLP

147 Considerations & Strategies (contd) Petitioner Opposition may include evidence responsive to the amendment, including affidavits/declarations. Remember that settlement is possible. 2019 Birch, Stewart, Kolasch and Birch, LLP 148 Considerations & Strategies (contd)

Patent Owner has limited options and opportunities to amend and submit evidence. How to provide additional fall back positions consider reissue application (or ex parte reexam or supplemental examination). 2019 Birch, Stewart, Kolasch and Birch, LLP 149 Considerations & Strategies (contd) IPR Cross-examination of Declarants Increased cost and complexity compared to ex parte reexam, inter partes reexam

Less costly than PGR (which allows more expansive discovery) Procedure including timeline comparable to interference practice 2019 Birch, Stewart, Kolasch and Birch, LLP 150 Considerations & Strategies (contd) Estoppel can be a major consideration: Cannot litigate or file USPTO post-grant proceeding for any issue that was raised or could have been reasonably raised.

Applies to privies as well. 2019 Birch, Stewart, Kolasch and Birch, LLP 151 Considerations & Strategies (contd) Ex parte reexamination: no estoppel and can be anonymous; thus, can file multiple proceedings. Still have to satisfy threshold standard of substantial new question of patentability. Only prior art issues like IPR. Before CRU Examiner (appeal to PTAB and then CAFC).

2019 Birch, Stewart, Kolasch and Birch, LLP 152 Considerations & Strategies (contd) Besides initial filing, third party has no other participation in an ex parte reexamination. Thus, very limited participation by 3rd party. Prior art has to be that much stronger. If prior art or rejection needs more explanation or evidence, IPR may be better. Patent Owner can have interviews with Examiner,

appeal, etc., without third party participation. 2019 Birch, Stewart, Kolasch and Birch, LLP 153 Summary 2019 Birch, Stewart, Kolasch and Birch, LLP 154 AIA Allows New Post-Grant Proceedings

PGR any ground of unpatentability (except lack of best mode) IPR replaced inter partes reexamination; only prior art based on patents/publications 2019 Birch, Stewart, Kolasch and Birch, LLP 155 AIA Allows New Post-Grant Proceedings PGR short window for filing; estoppel applies to all real parties in interest and privies IPR longer window for filing; but 1-year time bar

if sued for infringement; estoppel applies to all real parties in interest and privies 2019 Birch, Stewart, Kolasch and Birch, LLP 156 Post-Grant Modification Conclusions (contd) Reexamination, PGR and IPR no presumption of validity as in a litigation, so easier to attack patent claims basis of Reexam Request must be prior art in the form of patents or printed publications (no other issues can be

raised) cannot broaden patent claims in any way 2019 Birch, Stewart, Kolasch and Birch, LLP 157 Post-Grant Modification Conclusions (contd) PGR and IPR offer a good alternatives (or substitutes) for litigation in some situations Should always consider if sued for infringement Many are likely to be successful in challenging patents

2019 Birch, Stewart, Kolasch and Birch, LLP 158 Post-Grant Modification Conclusions (contd) Reexamination, PGR and IPR may force patent owner to narrow claim scope such that third party can avoid literal infringement may at least force patent owner to introduce basis for prosecution history estoppel such that third party can avoid infringement under the Doctrine of Equivalents 2019 Birch, Stewart, Kolasch and Birch, LLP

159 Post-Grant Modification Conclusions (contd) Lower cost and (sometimes) shorter time period in obtaining result from filing Reexam Request/PGR or IPR petition as compared to entering into litigation in a U.S. federal court Joinder is possible in an AIA Trial 2019 Birch, Stewart, Kolasch and Birch, LLP 160

Post-Grant Modification Conclusions (contd) Estoppel can be a major consideration: Cannot litigate or file USPTO post-grant proceeding for issues that were raised or could have been reasonably raised. Applies to privies as well. 2019 Birch, Stewart, Kolasch and Birch, LLP 161 Questions?

2019 Birch, Stewart, Kolasch and Birch, LLP 162

Recently Viewed Presentations

  • 2009 PE Update - Mintie

    2009 PE Update - Mintie

    Electronic Statement of Conditions (eSOC) Security Administrator Sites & Buildings: Revised Government Suspension BBI Enhancements After Gov't Suspension Sites & Building Page Emergency Management Overview Is now an accreditation manual chapter All Standards and Elements of Performance from 2008 are...
  • Marketing Functions - lcps.org

    Marketing Functions - lcps.org

    The Seven Marketing Functions. Involves two-way interactions between the business and the customer. Ex: Buying my first car at the dealership OR buying a house with my realtor . Selling. Deciding how much to charge for goods & services to...
  • Manual Dominques - West Virginia Department of Education

    Manual Dominques - West Virginia Department of Education

    Manual Dominques Delmer Blankenship Leatha Williams Terry Lynn McAtee Thomas Hoffman Dora Chaffin Len Paranac George Aulenbacher Roger Mason Tara Aycock Mark Rihel Doug Clemons Louise Grindo Martha Evans Suzanne Offutt Don Spence John Jenkins Christina Napier Karen Klamut Thomas...
  • Sikhism is the youngest of the world's religions,

    Sikhism is the youngest of the world's religions,

    There are about 400,000 Hindus in the UK Puja (worship) takes place in the Mandir (temple). Mandirs vary in size from small village shrines to large buildings, surrounded by walls. There are formal gatherings for worship but people can also...
  • CUAHSI Hydrologic Information System (HIS)

    CUAHSI Hydrologic Information System (HIS)

    Common Standards across Earth Science Modeling and Information Systems. The Open Geospatial Consortium (OGC®) and the OpenMI Association announced that they recently signed a memorandum of understanding (MOU) to cooperate in standards development and promotion of open standards related to...
  • Economics of Oligopoly Topic 3.3.9 Economics of Oligopoly

    Economics of Oligopoly Topic 3.3.9 Economics of Oligopoly

    Virgin Media William Morrison Supermarkets Plc Dfs Furniture Co Ltd Vodafone Ltd McDonalds Restrs Ltd Reckitt Benckiser (UK) Ltd Loreal Paris Nestle 264.34000000000003 177.26 149.79 119.1 116.27 97.04 92.55 88.36 81.52 75.679999999999978 74.59 72.149999999999991 68.98 63.59 63.15
  • West Suffolk trauma audit - Cambridge Orthopaedics

    West Suffolk trauma audit - Cambridge Orthopaedics

    18 Acute Hospitals One regional Ambulance Service (EEAST) Range of charity sector pre-hospital 'enhanced care' providers (e.g. Air Ambulance Charities) Range of specialist acute, reconstruction and rehabilitation services Range of specialist and general community rehabilitation services East of England …...
  • Los puertorriqueños y los cubanos

    Los puertorriqueños y los cubanos

    ¿Cómo y cuándo pasó Puerto Rico a ser territorio de los Estados Unidos? ¿Qué cambios experimentó la economía de la Isla después de ese suceso? Comenten la importancia o el impacto del Jones Act de 1917 en los puertorriqueños.