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Connecticut Intellectual Property Law Association

Presentation to the . Connecticut Intellectual Property Law Association. Scott E. Kamholz, M.D., Ph.D. Administrative Patent Judge Patent Trial and Appeal Board September 25, 2013. State of the Board. Judges and Offices (as of September 25, 2013). 177 Administrative Patent Judges

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Connecticut Intellectual Property Law Association

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  1. Presentation to the Connecticut Intellectual Property Law Association Scott E. Kamholz, M.D., Ph.D. Administrative Patent Judge Patent Trial and Appeal Board September 25, 2013

  2. State of the Board

  3. Judges and Offices (as of September 25, 2013) • 177 Administrative Patent Judges • Board has doubled in size in the past two years. • Selection continues from previous job postings. • 5 Offices • Washington, DC (Alexandria and Arlington, VA) • Elijah J. McCoy Office (Detroit) • Denver • Dallas • Silicon Valley (Menlo Park)

  4. Types of Proceedings • Appeals in patent applications • Appeals in ex parte and inter partesreexamination proceedings • Inter partesreviews • Covered business method reviews • Derivations • Interferences • (Post-grant reviews)

  5. AppealsStatistics

  6. Board Backlog

  7. Decisions by Type: FY2013

  8. AppealsDevelopments

  9. Rules for Appeals • New rules effective January 23, 2012 based on Notice of Appeal date. • 2004 rules apply to cases in which Notice of Appeal was filed before January 23, 2012. • Examples and FAQ’s at www.uspto.gov/ip/boards/bpai/procedures/rules/rule.jsp

  10. Precedential Opinion • Ex parte Mewherter, 107 U.S.P.Q.2d 1857 (2013) • Precedential as to the treatment of the rejection under 35 U.S.C. § 101 for nonstatutory subject matter. • This and other precedential decisions are at www.uspto.gov/ip/boards/bpai/decisions/prec/.

  11. Informative Opinions • Ex parte Bayer Cropscience, LP (×2) • Ex parte Talkowski • Ex parte Cadarso • Ex parte Smith • Ex parte Erol, 107 U.S.P.Q.2d 1963 • Ex parte Lakkala • These and other informative opinions are at www.uspto.gov/ip/boards/bpai/decisions/inform/

  12. AIA Trial ProceedingsStatistics

  13. AIA Progress (as of September 18, 2013) • Number of AIA Petitions • AIA Petition Technology Breakdown

  14. AIA Progress (as of September 12, 2013) • Patent Owner Preliminary Responses • AIA Petition Dispositions * vs. 139 nationally in FY2012

  15. AIA Progress(as of September 18, 2013) • AIA Final Dispositions • Petitions are being filed at the rate of about 3 per day (as of Sep. 18, 2013).

  16. Top Patent Litigation Venues • Eastern District of Texas 1266 • District of Delaware 995 • PTAB 550 • Central District of California 514 • Northern District of California 260 FY 2012 data used for District Courts PTAB data is for September 16, 2012 to September 18, 2013

  17. AIA: Faster and Cheaper? • Time to Trial • Median 2.5 years in district court • 18 mos. in PTAB • Patent Litigation Cost (per AIPLA 2011 Survey)

  18. Expanding Jurisdiction? • Sen. Schumer’s Bill S. 866 • CBM’s no longer limited to “a financial product” • CBM’s no longer “provisional” • White House Task Force • Supports Schumer bill • Goodlatte Discussion Draft No. 2

  19. Who is Paying Attention? • Federal Circuit • Is Fresenius v. Baxter International (July 2, 2013) involving reexaminations a precursor? • Congress • Rep. Goodlatte’s Patent Discussion Draft • S.866 (Schumer bill) • Public • SAP v. Versata Final Hearing and Decision

  20. Post Grant Resources • Information concerning the Board and specific trial procedures may be found at: www.uspto.gov/ptab • General information concerning implementation of the Leahy-Smith America Invents Act, including post grant reviews, may be found at: www.uspto.gov/aia_implementation

  21. Representative Decisions • See www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp • Examples of orders, decisions, and notices at various stages of proceedings

  22. Observations on Trial Practice

  23. Standard Timeline

  24. Petitions: Compliance • Circumventing page limit: 37 C.F.R. § 42.6 • Exhibit labeling and numbering: § 42.63 • Mandatory notices: § 42.8 • Include in petition; count toward page limit • Related proceedings: § 42.8(b)(2) “any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.” • Claim charts • Claim constructionrequired: § 42.104(b)(3)

  25. Petitions: Substance • Better to provide detailed analysis for limited number of challenges than identify large number of challenges for which little analysis is provided. • Support conclusions with: • Sound, complete legal analysis. • Pinpoint citations to evidentiary record.

  26. Claim Charts • Purpose of claim charts is to summarize the evidence, not the argument. • Claim charts support narrative analysis; they do not replace it. • Use two-column format (see FAQ D13atwww.uspto.gov/ip/boards/bpai/prps.jsp). • Provide pinpoint references to the evidence (see FAQ D12).

  27. Claim Construction • Standard: broadest reasonable construction in light of the specification of the patent in which claim appears. 37 C.F.R. § 42.100(b). • Most cases require more construction than mere restatement of the standard. • Justify a proposed construction with evidence. • The Board will construe terms even if the parties do not.

  28. Expert Declarations • Focused tutorials may help. • Provide underlying objective facts to support testimony. Unsupported testimony is entitled to little or no weight. 37 C.F.R. 42.65(a); see IPR2013-00022, Paper 43 (denying petition) • Avoid merely “expertizing” claim charts and analysis.

  29. Obviousness Challenges • Apply the Graham factors. • Explain the rationale to combine. • Support the rationale to combine with evidence. • Differentiate multiple grounds to avoid redundancy denials. See CBM2012-00003, Paper 7 (denying redundant grounds).

  30. Preliminary Response • Patentability is not decided at institution stage. • Focus arguments on dispositive issues: • Statutory bar • Reference is not prior art • Prior art lacks a material limitation • Teaching away • Unreasonable claim construction • Arguments not raised in preliminary response are not waived.

  31. Additional Discovery • Five-factor test articulated in IPR2012-00001, Garmin v. Cuozzo, Paper 26: • More than a possibility and mere allegation? • Seeking opponent’s litigation position early? • Ability to generate by other means? • Instructions clear? • Overly burdensome to answer? • Documents: more likely to grant specific, relevant, requests than general requests.

  32. Depositions • Federal Rules of Evidence apply. • Objections to admissibility waived • Follow the Testimony Guidelines (Practice Guide Appendix D). • No “speaking” objections or coaching • Instructions not to answer are limited

  33. Joinder • Must be a like review proceeding. • Requires filing a motion and petition. • File within one month of institution. • Impact on schedule important.

  34. Thank You Scott E. Kamholz Administrative Patent Judge Patent Trial and Appeal Board

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