Introduction

1. AIA: THE INTERPLAY BETWEEN PTO POST ISSUANCE REVIEW PROCEEDINGS, CIVIL LITIGATION, AND ITC PROCEEDINGS Judge Paul R. Michel William LaMarca Mark S. Davies Richard Martinelli

2. Introduction • Overview Of New Provisions In The Law • Options for Defending Against Infringement Allegations • Challenges for Patentees In Asserting Infringement

3. Joinder (35 U.S.C. § 299) (a) Joinder of Accused Infringers—[P]arties that are accused infringers may be joined in one action as defendants or counterclaim defendants only if: 1) Any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and 2) Questions of fact common to all defendants or counterclaim defendants will arise in the action. (b) Allegations Insufficient for Joinder—For purposes of this subsection, accused infringers may not be joined in one action or trial as defendants or counterclaim defendants based solely on allegations that they each have infringed the patent or patents in suit.

4. IPR, PGR and Other Actions • Inter Partes Review 35 U.S.C. § 315(a) (1) INTER PARTES REVIEW BARRED BY CIVIL ACTION.—An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent. • Post Grant Review § 325(a) • Essentially the same as above

5. IPR, PGR and Other Actions • Inter Partes Review 35 U.S.C. § 315(b) PATENT OWNER’S 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). • Post Grant Review 35 U.S.C. § 325(b) PRELIMINARY INJUNCTIONS.—If a civil action alleging infringement of a patent is filed within 3 months after the date on which the patent is granted, the court may not stay its consideration of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a petition for post-grant review has been filed under this chapter or that such a post-grant review has been instituted under this chapter.

6. IPR and PGR Estoppel • Inter Partes Review Estoppel 35 U.S.C. § 315(e) (1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(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 inter partes review. (2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(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 inter partes review. • Post Grant Review estoppel § 325(e) • Essentially the same as above

7. Real Party in Interest • PTAB’s Proposed Practice Guide Defining terms “real party in interest” and “privy.” • See Fed. Reg., Vol. 77, No. 27, at 6870 (Feb. 9, 2012) (handled on a case by case basis taking into consideration how courts have viewed the terms “real party in interest” and “privy.”)

8. Transitional Program Business Methods (Sec. 18) • Like a Post Grant Review • Available for all patents claiming a data processing or other operation related to a financial product or service • Must be filed by an accused infringer • Methods that are actually technological inventions are excluded from program: • Claim recites novel & unobvious technological feature and solves a technical problem with a technical solution

9. AIA Patent Defense Options • Ex Parte Review • Pros – no Court Estoppel, cheaper • Cons – no participation • Post Grant Review or Inter Partes Review • Pros – no presumption of validity, preponderance, broadest reasonable interpretation, decided by patent savvy Board, good basis to stay litigation • Cons – estoppel, no interplay between non-infringement and invalidity issues • Declaratory Judgment Action • Pros – choose litigation forum, non-infringement and invalidity tried together • Cons – presumed valid, clear and convincing evidence, claim construction, lose PTO review options, tried to lay judge and jury, expensive

10. AIA Patent Enforcement Issues • District Court(s) • One forum for all infringers • Likelihood of a stay if Post Issuance Review • Is the ITC a solution? • 35 U.S.C. §299 does not apply • Unlikely to stay pending Post Issuance Review because investigations must be conducted “expeditiously” • But, no monetary remedies; risk that exclusion order will be designed around; and Domestic Industry issues for NPEs

11. Mark S. Davies Orrick, Herrington & Sutcliffe 202-339-8631 mark.davies@orrick.com Judge Paul R. Michel (Ret.) 240-543-8797 prmichel@mindspring.com William LaMarca Associate Solicitor United States – PTO 571-272-8741 william.lamarca@USPTO.gov Richard Martinelli Orrick, Herrington & Sutcliffe 212-506-3702 rmartinelli@orrick.com Thank You