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Strategic Choices By Par1es in PTAB Proceedings
Jay Kesan Ar1 K. Rai
Saurabh Vishnubhakat
Background, mo1va1on for our project
• We focus on li1gated patents that are also in post-‐grant proceedings
• Parallel proceedings with many poten1al par1es offer strategic possibili1es – Patent owners: when and where to assert – Defendants (and others): who files first IPR (and when they file it)
– Filing of mul1ple IPRs (by same pe11oner, by different pe11oners)
• Preliminary descrip1ve data, have not reached norma1ve conclusions
District Court vs. PTAB
• Incen1ves to challenge patent in PTAB linked to how patent asserted in district court – With certain excep1ons (e.g. joinder), 35 U.S.C. § 315(b) bars challenger from filing IPR pe11on if that challenger (or RPI or privy) was sued by the patent owner for infringement more than 1 year earlier
• This raises at least two interes1ng ques1ons
District Court vs. PTAB
• Are par1es being sued in U.S. district courts the same par1es that are filing IPR pe11ons on patents asserted against them? – One approach: for patents that were both asserted in district court and challenged in the PTAB, compare the last district court defendant and the first IPR pe11oner: are they the same?
• Answer varies by technology
District Court vs. PTAB
• How frequently is lag between patent asser1on in district court and IPR pe11on in the PTAB longer than 1 year? – Even if 1-‐year clock not yet 1cking (because the defendant is someone else), there may s1ll be an incen1ve to pe11on sooner rather than later
– Plot share of challenged patents for which the lag from last district court asser1on to IPR pe11on was more than 1 year
The Mul1ple Pe11ons Issue: Methodology
• Coded ins1tu1on decisions, final decisions, par1es, panel judges, patent numbers, specific claims, grounds, and relevant dates for the 2014 year, i.e., the period from Jan. 1, 2014 to Dec. 31, 2014.
• Our data includes pe11ons filed in 2013 that were decided in 2014. But do not include decisions made in 2015.
• Consequently, our data on mul1ple IPR/CBM pe11ons challenging the same patent is underinclusive.
10
2014 Breakdown of Patents Challenged In Mul:ple Pe::ons
54
75
6 8 12 17 18 11
18
39
Same Pe11oner Different Pe11oners
Number of Patents Same Claims, Same Grounds Same Claims, Different Grounds Different Claims, Same Grounds Different Claims, Different Grounds
11
Data and Analysis • The previous slide contains data regarding the patents that had mul1ple
pe11ons filed against them. • It shows the number of different patents that were pe11oned 2 or more
1mes. If a patent was challenged at least twice by the same pe11oner and no one else, that was counted as a patent pe11oned by the same pe11oner. If a patent was challenged at least twice by the same pe11oner and then at least once by a different pe11oner, that was counted as a patent challenged by different pe11oners.
• 54 patents were pe11oned two or more 1mes by the same company, and 75 patents were pe11oned two or more 1mes by two or more companies.
• To get a more granular look at the nature of the mul1ple pe11ons, the details of how the mul1ple pe11ons differ from one another is also shown.
12
2014 Breakdown of Patents Challenged in Mul:ple Pe::ons
102
17 5 2 2 1
0
20
40
60
80
100
120
2 Pe11ons 3 Pe11ons 4 Pe11ons 5 Pe11ons 6 Pe11ons 21 Pe11ons
13 *4 different companies challenged U.S. Patent # 6,805,779 21 :mes
Data and Analysis
• The previous slide shows the number of different patents that were challenged plofed against the number of pe11ons filed.
• For example, 2 pe11ons were filed against 102 different patents in 2014, and 3 pe11ons were filed against 17 different patents in 2014.
• 4 different companies challenged U.S. Patent # 6,805,779 21 1mes
14
Case studies of what PTAB does with mul1ple pe11ons
• Same pe11oner • Different pe11oners • Zond li1ga1on involves both (and Patent # 6,805,779 – most mul1ple pe11ons in our sample)
Zond li1ga1on • 7 patents (10 against Gillefe); 7 cases; 9 defendants; filed July 1-‐9, 2013 – Intel; Fujitsu & TSMC; Toshiba; Gillefe; Hynix; Renasas; AMD & Global Foundries
• Assigned to 5 different judges in D.Ma. (not filed as related cases)
• Intel files IPRs first; gets stay 4/18/14; ins1tuted 9/2/14 (then sefled)
• Aler 4/18 (and before 6/30) all except Hynix file iden1cal pe11ons (same claims, same grounds, same art)
• All get cases stayed based on pe11ons
Joinder mo1ons
• Some file joiner mo1ons with pe11ons or soon therealer
• August 5, 2014: Board orders other pe11oners to file mo1ons within 10 business days – Consequence of August 4 conference call with Zond, Intel, TSMC, Fujitsu, Gillefe, AMD, GlobalFoundries, Renesas, and Toshiba
– Result: joinder for all pe11ons/patents
Zond, cont’d
• Intel sefles 9/25/14 • Pe11oners joined to TSMC pe11ons (lead pe11oners reconfigured again aler TSMC sefles 3/11/15)
• Currently, 21 pending reviews of 9 patents (with 56 joined proceedings)
• Ac1ve (efficient and fair?) management of complex li1ga1on by PTAB)
Other “heavily pe11oned” patents
• Patent No. 7365871 • E-‐Watch sues 11 firms (ED TX, Payne) (also sues on 7643168), 12/9-‐12/10/13
• Iron Dome (not sued) files pe11on 2/18/14 – Ins1tuted 8/4/14 (sefled 2/24/15)
• HTC pe11on filed 6/19/14; ins1tuted 12/9/2014
• HTC ins1tu1on starts stream of IPRs
Petitioner/Real Parties-in-Interest
Case Number Current Status Filing Date
Iron Dome LLCRozMed LLC, Steven S. Yu (collectively, “Iron Dome”)
IPR2014-00439 Terminated 2/18/2014 HTC IPR2014-00987 Instituted 6/19/2014 LG, Microsoft, Nokia, Sony, Sharp
IPR2015-00402 No Decision on Institution
12/10/2014
(USA) Inc., Sony Mobile Communications AB, Sony Mobile Communications Inc. (collectively, “Sony”); Sharp Corporation and Sharp Electronics Corporation (collectively, “Sharp”)
Kyocera IPR2015-00406 No Decision on Institution
12/10/2014
LG, Microsoft, Nokia, Sony, Sharp
IPR2015-00404 No Decision on Institution
12/10/2014
Apple IPR2015-00411 Denied 12/11/2014
Apple IPR2015-00412 Instituted 12/11/2014
Apple IPR2015-00413 Denied 12/11/2014
Samsung IPR2015-00541 Joined With 2014- 00987; granted
1/7/2015
Samsung IPR2015-00610 No Decision on Institution
1/23/2015
Samsung IPR2015-00612 No Decision on Institution
1/23/2015
Patent owner u1lizes 325(d) • E.g., Apple pe11ons ‘411, ‘412, ‘413 • E-‐Watch – ‘411 overlaps with art and arguments of Kyocera ‘406 and Samsung ‘612 (ci1ng Conopco v. Procter & Gamble)
– ‘413 overlaps with art and arguments of Iron Dome ‘439; also serial pe11oning (Conopco)
• Board denies ‘411 and ‘413 but on merits (doesn’t address redundancy arguments)
• Grants ‘412, even though similar arguments made there
Apple ‘412 pe11on and 325 (d) • “E-‐Watch urges that ins1tu1on of inter partes review is
discre1onary under 35 U.S.C. § 314(a) and that we should exercise our discre1on in favor of non-‐ins1tu1on because the same or substan1ally the same prior art or arguments previously were presented to the Office.”
• En1rety of reasoning: “We have considered the prior art and arguments presented by the respec1ve Pe11ons in IPR2014-‐00987 and IPR2015-‐00413 involving the ’871 patent, but do not regard the overlap in prior art applied and arguments asserted therein, rela1ve to those asserted by Apple here, sufficient to warrant a discre1onary denial of Apple’s Pe11on in this case.”
Cases in which 325(d) has been used
• Generally same pe11oner with subsequent pe11on filed later
• Same claims previously raised • 325(d) used even if mo1on for joinder (e.g. Medtronic v. Robert Bosch, IPR2014-‐00436, Paper 17)
Beyond 325(d) (non-‐cumula1ve art/arguments, same pe11oner)
• Unilever v. Procter & Gamble, IPR2014-‐00506, Paper 17 • 2nd pe11on on claims previously rejected in decision to ins1tute
(with joinder pe11on) • 7 new prior art cita1ons • Board (nominally) uses 325(d); but also notes “no argument or
evidence that the seven newly cited references were not known or available to it at the 1me of filing of the [earlier] pe11on.”
• Denial of pe11on for reh’g (Paper 25): PTAB rejects idea that “pe11oners [may] unveil strategically their best prior art and arguments in serial pe11ons, using our decision on ins1tu1on as a roadmap.” (estoppel-‐type argument?)
Different pe11oner barred • Unified Patents v. Personal Web, IPR 2014-‐00702, Paper 13 • Unusual circumstances
– Highly staggered district court lawsuits (17 defendants in total) – 2 ins1tuted pe11ons (EMC and Rackspace) (UP wants to join Rackspace); EMC decision invalida1ng all but one of challenged claims on appeal to CAFC
– Same invalidity grounds, same prior art • Had denied previous request by NetApp for joinder to
Rackspace pe11on • Rackspace later sefles (good idea to bar joinder by Netapp,
UP?)
Ques1ons
• Should PTAB require later-‐in-‐1me pe11ons to specify how their art, arguments differ from prior pe11ons? (or say they are explicitly iden1cal for joinder purposes e.g. Zond) – Rulemaking authority under 316(a)
• Should requirements differ for same pe11oner vs. different pe11oner?