Connecticut Intellectual Property Law Association

Scott E. Kamholz, M.D., Ph.D.Administrative Patent JudgePatent Trial and Appeal BoardSeptember 25, 2013

Presentation to the

State of the Board

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)

Types of Proceedings

• Appeals in patent applications• Appeals in ex parte and inter partes

reexamination proceedings• Inter partes reviews• Covered business method reviews• Derivations• Interferences• (Post-grant reviews)

AppealsStatistics

Board Backlog

24,500

25,000

25,500

26,000

26,500

27,000

27,500

26,644

26,78626,82826,82526,807

26,664

26,85426,86926,896

26,618

26,80226,802

26,476

26,014

26,34526,452

26,50826,431

26,35326,42626,432

26,379

26,12926,24226,243

26,141

25,976

26,18126,248

26,315

26,07626,05826,04126,05126,046

25,86625,943

25,803

25,554

Decisions by Type: FY2013

55%

12%

30%

0% 1% 2%

Decisions

AffirmedAffirmed-in-PartReversedPanel RemandAdministrative RemandDismissed

AppealsDevelopments

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

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/.

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/

AIA Trial ProceedingsStatistics

AIA Progress (as of September 18, 2013)

• Number of AIA Petitions

• AIA Petition Technology Breakdown

Total IPR CBM PGR DER550 493 56 0 1

Technology

No. of Petitions

Percentage

Electrical/Computer

377 68.5%

Mechanical 74 13.5%Chemical 52 9.5%Bio/Pharma 42 7.6%Design 5 0.9%

AIA Progress (as of September 12, 2013)

• Patent Owner Preliminary Responses

• AIA Petition Dispositions

  Filed WaivedIPR 218 57CBM 25 2

  Instituted Trials Denials Joinder

s Total

IPR 150 23 7 180*CBM 12 3   15

* vs. 139 nationally in FY2012

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).

  Settlements

Final Written Decisions

IPR 38 1CBM 3 1

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

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) At risk Average, all costs, per

party< $1M $916,000 $1–25M $2,769,000> $25M $6,018,000

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

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

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

Observations on Trial Practice

Standard Timeline

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 construction required: § 42.104(b)

(3)

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.

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 D13 atwww.uspto.gov/ip/boards/bpai/prps.jsp).

• Provide pinpoint references to the evidence (see FAQ D12).

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.

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.

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).

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.

Additional Discovery

• Five-factor test articulated in IPR2012-00001, Garmin v. Cuozzo, Paper 26:1. More than a possibility and mere

allegation?2. Seeking opponent’s litigation position

early?3. Ability to generate by other means?4. Instructions clear?5. Overly burdensome to answer?

• Documents: more likely to grant specific, relevant, requests than general requests.

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

Joinder

• Must be a like review proceeding.• Requires filing a motion and

petition.• File within one month of

institution.• Impact on schedule important.

Thank You

Scott E. KamholzAdministrative Patent JudgePatent Trial and Appeal Board