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Counseling Clients re New USPTO Post Grant Proceedings and Interplay with Litigation. Materials Prepared by John B. Pegram Fish & Richardson P.C. _____ AIPLA IP Practice in Europe Committee March, 2014. 18 Month PTAB Timeline. 1. Preparation. Petitioner

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Counseling clients re new uspto post grant proceedings and interplay with litigation

Counseling Clients re New USPTO Post Grant Proceedings and Interplay with Litigation

Materials Prepared by

John B. Pegram

Fish & Richardson P.C.


AIPLA IP Practice in Europe Committee

March, 2014

1 preparation
1. Preparation

  • Petitioner

    • Must act quickly if infringement litigation is possible.

    • Detailed petition is required,

      • Claim charts are required, and

      • Expert declarations are common.

  • Patentee

    • Must be prepared in advance, if possible,

    • Little time to prepare responses.

  • Both parties:

    • Page limits on all filings can be a problem.

      • Multiple petitions.

2 threshold issues for the petitioner reasonable likelihood of success
2. Threshold Issues for the PetitionerReasonable Likelihood of Success

  • IPR or CBM has been instituted in almost all petitions evaluated

    • In many cases, granted on only a subset of grounds or petitioned claims

    • BUT recently there have been a number of IPR petitions denied in full.

  • PTAB is willing to consider rejections based upon references previously considered by PTO.


  • “multiple grounds, which are presented in a redundant manner by a petitioner who makes no meaningful distinction between them, are contrary to the regulatory and statutory mandates, and therefore are not entitled to consideration.”

    Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., slip op. CBM2012-00003 (PTAB Oct. 25, 2012) (requiring substantial reduction from 422 grounds of rejection based on 10 references for 20 claims).

3 initial tactics of the patentee
3. Initial Tactics of the Patentee

  • Two opportunities to respond to the Petition:

    • Preliminary Response

      • Opposing institution of proceeding

    • Main Response & Amendment of Claims

  • Claim construction tactics

    • “Broadest reasonable interpretation” for non-expired patents

4 claim amendments
4. Claim Amendments

  • Claim amendments may be offered by Motion to Amend, at the time of the Patentee’s Response, following institution of the proceeding.

    • Only one opportunity to amend, and

    • The number of claims cannot be increased without a showing of good cause.

Claim amendments
Claim Amendments

  • The Patentee must make a showing of patentabledistinction over the prior art:

    (a) specifically identifying features added to substitute claim vs. challenged claim; and

    (b) presenting “technical facts and reasoning about those feature(s), including construction of new claim terms” sufficient to demonstrate patentability.

    • The Patentee can rely on expert testimony to demonstrate significance of added features

    • “A mere conclusory statement by counsel is on its face inadequate.”

      Idle Free Systems, Inc. v. Bergstrom, Inc., slip op. IPR2012-00027 (PTAB June 11, 2013)

Claim amendments1
Claim Amendments

  • Petitioner can oppose a motion to amend

    --“with specific evidence and reasoning, including

    • citation and submission of any applicable prior art and

    • reliance on declaration testimony of technical experts,

      to rebut the patent owner’s position on patentability of the proposed substitute claims

  • Opposition is not limited to prior art identified in original petition.

Claim amendments2
Claim Amendments

Lessons learned:

  • Limited ability to add new or amended claims

    • Consider reissue as an alternative

  • Requires Patentee to distinguish prior art of record AND closest prior art known to patent owner

    • Potential admissions, and

    • Arguments might compromise unamended claims

  • Petitioner may oppose based on art not of record

    • Possibly, Petitioner can improve its case

5 discovery requests
5. Discovery Requests

  • Four types of discovery:

    • Mandatory initial disclosures,

    • Routine discovery,

    • Additional discovery, and

    • Discovery by agreement of the parties.

Routine discovery
Routine discovery

  • Production of exhibits cited in a paper or testimony

  • Cross-examination of opposing declarants

    • By deposition

  • “Non-cumulative information that is inconsistent with a position advanced during the proceeding”

    37 C.F.R. § 42.51(b)(1)(iii)

Additional discovery
Additional Discovery

  • PTAB must authorize discovery beyond “routine discovery”

  • 35 U.S.C. § 316(a)(5) and 37 C.F.R. § 41.51(b)(2): moving party must demonstrate that additional discovery sought is “in the interest of justice”

Additional discovery1
Additional Discovery

5-part test for establishing “in the interest of justice”

(1) More than a possibility and mere allegation that something useful will be found,

(2) Not merely seeking early identification of the other party’s litigation positions,

(3) Lack of ability to generate equivalent information by other means,

(4) Easily understandable requests, and

(5) Requests are not overly burdensome to answer.

See Garmin International Inc. v. Cuozzo Speed Technologies LLC, slip. op. IPR2012-00001 (PTAB Mar. 5, 2013)

The panel
The Panel

  • 3 Administrative Patent Judges

    • Great ability in the law and the technology

Oral argument format
Oral Argument Format

  • Usually 1 hour allocated to each of Patentee & Petitioner

  • Sequence:

    • If no amendments:

      • Petitioner – Patentee – Petitioner

    • If claims are amended:

      • Patentee – Petitioner - Patentee

  • Demonstratives are permitted

    • Ask for video

Oral hearing attributes of a ptab hearing
Oral Hearing: Attributes of a PTAB Hearing

  • Adversarial, trial proceeding

    • PTAB is the fact-finder

    • Policy Focused

    • Q&A format

      • All issues are eligible for consideration

      • Questions often solicit detailed information about the record, exploring technical and legal issues

    • Interplay between the judges on the panel during questioning

    • Extensive references to declarations and depositions

    • Claim construction issues often dominate

7 settlement
7. Settlement

  • Yes, you can settle a post grant proceeding;

  • However, the PTAB has refused to end some AIA reviews that have reached an "advanced stage," even though the parties had settled.

    • Only the Petitioner is dismissed and the proceeding continues with the Patentee.

    • In Interthinx v. Corelogic, Case CBM2012-00007 (Jan. 30, 2014):

      • Settlement was after full briefing and before the hearing, and

      • All claims were eventually cancelled.

8 relationships with parallel litigation stays
8. Relationships with parallel litigationStays

  • As of December 13, 2013:

    • 74 motions for stay were granted, and

    • 29 motions for stay were denied.

  • A frequently updated listing of district court orders on motions to stay is provided at

8 relationships with parallel litigation some p rincipal stay considerations
8. Relationships with parallel litigationSome principal stay considerations

  • Will a stay simplify the issues in question and streamline the trial?

    • Will all asserted claims be addressed by the PTAB?

  • Is discovery is complete and has a trial date has been set?

  • Will a stay or denial unduly prejudice the nonmoving party?

  • Will a stay present a clear tactical advantage for the moving party?

  • Will a stay or denial reduce the burden of litigation on the parties and on the court?

8 relationships with parallel litigation estoppel
8. Relationships with parallel litigationEstoppel

  • The petitioner in an inter partes review of a claim in a patent that results a final written decision, or the real party in interest or privy of the petitioner, may not assert in district court or the ITC any ground that the petitioner raised or reasonably could have raised during that inter partes review. 35 U.S.C. 315(e)(2).

    • Statistics suggest that potential Petitioners are not very worried about estoppel.

    • It is unclear whether estoppel applies to grounds that the PTAB has refused to consider when instituting review.

8 relationships with parallel litigation protective order issues
8. Relationships with parallel litigationProtective order issues

  • Some Protective Orders in District Courts limit involvement of attorneys or firms in prosecution of related patents.

    • Object is to avoid amendment of claims based on confidential information about an opponent’s product or process.

    • This limitation may be applied to PTAB proceedings, because claims can be amended.

8 relationships with parallel litigation timing the race to a judgment
8. Relationships with parallel litigationTiming—the race to a judgment

  • Cancellation of claims by the PTO before final judgment on appeal is effective, in spite of courts’ conclusion that the patent had not be shown to be invalid in the court proceedings.

  • See Fresenius USA, Inc. v. Baxter Intern., Inc.,721 F.3d 1330 (Fed. Cir. 2013) (reexamination).

Take away

  • PTAB Proceedings are different from:

    • Patent prosecution,

    • Reexamination,

    • Patent interferences,

    • Court litigation, and

    • Oppositions in other countries.

  • PTAB Proceedings require:

    • Specialized skills, and

    • Experience.

Thank you
Thank you

John B. Pegram

Fish& Richardson P.C.


  • USPTO sites:

    • AIA Main:

    • Inter Partes:

    • PTAB:

  • F&R web sites:

    • Post-Grant for Practitioners:

    • General:

    • IPR:

    • PGR:

    • Rules governing post-grant: