ACI

1
ACIs 9th Annual Paragraph IV Disputes
PTO Proceedings Retrospect Exploring the Growing
Use of IPR, PGR and CBM review in Hatch-Waxman
Litigation April 27, 2015
Tweeting about this conference?
2
Speakers

• Laura A. Lydigsen
• Shareholder and Co-Chair,
• Appellate Practice Group
• Brinks Gilson Lione
• Gregory A. Morris Irena Royzman
• Of Counsel Partner
• Paul Hastings LLP Patterson Belknap Webb
  Tyler
• Martin B. Pavane Paul Ragusa
• Member and Vice-Chair, IP Department \
  Partner
• Co-Chair, ANDA and Biologics Baker
  Botts, LLP
• Cozen O'Connor

3
PTAB Petitions for Orange Book Patents -
Statistics
Year IPR (Listed/Total) CBM (Listed/Total) PGR (Listed/Total)
2012 3/94 (3.2) 0/15 0
2013 9/695 (1.3) 0/89 0
2014 42/1495 (1.7) 6/173 1/3
2015 (4/15) 25/446 (5.6) 0/38 0/2
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PTAB Petitions for Orange Book Patents -
Statistics (Continued).

• Grounds for challenge
• Obviousness (90)
• Anticipation (35)
• Types of claims challenged
• Formulation (80)
• Method of Treatment (gt50)
• Compound (15)
• IPRs as Tool for Hedge Funds

5
Agenda

• Initial IPR Considerations
• Laura A. Lydigsen
• Claim Construction and Instituting Trial
• Irena Royzman
• Lessons Learned After The First IPR Final Written
  Decisions
• Gregory A. Morris
• PTAB Trial Practice
• Martin B. Pavane
• IPR Appeals
• Laura A. Lydigsen
• PGRs CBMs
• Paul Ragusa

6
Initial IPR Considerations

• Laura Lydigsen
• Shareholder, Brinks, Gilson Lione

7
Initial Considerations Advantages of PTAB Patent
Challenges

• Lower burden of proof for invalidity
• PTAB preponderance of the evidence, 35 U.S.C.
  316(e) (IPR), 326(e) (PGR/CBMPR)
• District Court clear and convincing evidence
• Claim construction standard
• PTAB Broadest reasonable interpretation (BRI),
  37 C.F.R. 4.2100(b), 200(b), 300(b) In re
  Cuozzo Speed Techs., LLC., _ F.3d _, 2015 WL
  448667 (Fed. Cir. Feb. 4, 2015)
• District Court ordinary meaning at the time of
  invention. Phillips v. AWH Corp., 415 F.3d 1303
  (Fed. Cir. 2005) (en banc)

8
Initial Considerations Advantages of PTAB Patent
Challenges Contd

• Time to decision
• PTAB 18 months, extendable to 24 months after
  filing of petition. 35 U.S.C. 3.14(b) 37
  C.F.R. 42.100(c)
• District court 2.5 years (source
  http//www.pwc.com/en_US/us/forensic-services/publ
  ications/assets/2014-patent-litigation-study.pdf)
• Grounds
• PTAB
• IPR anticipation and obviousness based on
  printed publications. 35 U.S.C. 311(b).
• CBM/PGR
• Any grounds that is a condition for
  patentability. 35 U.S.C. 321(b) 37 C.F.R.
  304(b)(2)
• PGR Important new or unsettled legal questions.
  37 C.F.R. 42.208(d).
• District Court Any grounds that is a condition
  for patentability. 35 U.S.C. 282.

9
Initial Considerations Orange Book Patents

• Prior decision upholding validity of OB patents
• Teva v. Viiv, IPR2015-00550 (filed Jan. 8, 2015)
  (challenging OB patent for Trizavir/abacavir
  sulfatedoutegravir sodiumvamivudine that is the
  subject to Fed. Cir. Appeal Nos. 14-1303, -1304,
  -1315)
• Noven v. Novartis, IPR2014-00549, -550 (filed
  Apr. 2, 2014) (IPR instituting on two OB patents
  for Exelon patch/rivastigmine extended release
  transdermal, one of which was instituted
  notwithstanding brand argument that D.Del. has
  upheld the validity of the 023 patent over many
  of the same references raised)
• Manageable number of OB patents
• But see Amneal v. Jazz (challenging some of 15
  OB patents listed for Xyrem/sodium oxybate)

10
Initial Considerations Orange Book Patents Contd

• Non-FTF status
• Consider pre-suit PTAB challenge
• Late second filer option
• Multi-defendant litigation
• Best known prior art already before the USPTO
• Complex technology/validity arguments
• Strong secondary considerations evidence
• Potentially weak validity defense

11
Initial Considerations Timing

• Time restrictions on filing at the PTAB
• IPR 1 year or less after petitioner served with
  infringement complaint. 35 U.S.C. 315(b).
  Includes counterclaims. St. Jude Medical v.
  Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014).
• CBM Can file any time after 9 months from patent
  issuance. 37 CFR 42.303.
• PGR Must be filed 9 months or less after
  issuance of patent or broadening reissue patent.
  35 U.S.C. 321(c).

12
Initial Considerations Timing (Contd)

• Joinder exception to the 1-year rule
• The 1-year time limitation set forth in the
  preceding sentence shall not apply to a request
  for joinder under subsection (c).
• Joinder must be sought no later than one month
  after the institution date of any inter partes
  review for which joinder is requested. 37
  C.F.R. 42.122(b)
• Teva v. ViiV, IPR IPR2015-00550 (filed Jan. 8,
  2015, pending) Teva seeks to join IPR filed by
  Apotex that was instituted on Dec. 8, 2014
  (Trizavir/abacavir sulfatedoutegravir
  sodiumvamivudine)
• Amneal v. Endo, IPR2014-1365 (filed Aug. 22,
  2014, joinder granted Feb. 4, 2015) Amneal
  permitted to join its own prior IPR (Opana
  ER/oxymorphone)

13
Claim Construction and Grounds for Instituting
IPR
Irena Royzman, J.D., Ph.D. Partner Patterson
Belknap Webb Tyler LLP
14
BRI v. Phillips A Tale of Two Standards
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc)
37 C.F.R. 42.100(b)
15
BRI v. Phillips An Academic Concern?
16
BRI v. Phillips An Academic Concern?
BRI
Phillips
The broadest reasonable interpretation of a
claim term may be the same as or broader than the
construction of a term under the Phillips
standard. But it cannot be narrower.
Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed.
Appx. 864, 869 (Fed. Cir. 2014)
17
BRI v. Phillips Two Bites at the

The Federal Circuit also addressed the
corresponding method claim 4 of the 149 Patent,
but split in a 2-1 decision in which the majority
interpreted the claim more narrowly than the
dissent and found it not invalid. However, when
interpreted under the broadest reasonable
interpretation standard applicable in inter
partes review proceedings, claim 4 would have
been obvious for the same reasons as the
composition claims of the 463 Patent.
Ferrum Ferro Capital, LLC v. Allergan Sales, LLC,
IPR2015-00858, Petition at 3 (March 9, 2015)
18
BRI v. Phillips In re Cuozzo

• Panel Majority (Dyk and Clevenger)
• BRI has been used in PTO proceedings for over 100
  years.
• Claims can be amended during IPR.
• AIA vests PTO with power to prescribe regulations.

• Dissent (Newman)
• Phillips should be the standard in IPRs same as
  in district court.
• IPRs are a surrogate for district court
  litigation over validity.
• No unfettered ability to amend claims in IPR.

In re Cuozzo Speed Techs., LLC., 778 F.3d 1271
(Fed. Cir. 2015)
19
BRI v. Phillips In re Cuozzo

• Dissent (Newman)
• BRI serves not to state the correct meaning of
  the claim, but to provide a framework for
  clarification and amendment.
• Adoption of a broadest interpretation renders
  the PTAB rulings legally unreliable .
• PTAB tribunals cannot serve as a surrogate for
  district court litigation if the PTAB does not
  apply the same law to the same evidence.

In re Cuozzo Speed Techs., LLC., 778 F.3d 1271
(Fed. Cir. 2015)
20
BRI v. Phillips In re Cuozzo

• Cuozzo filed a petition for rehearing en banc on
  whether BRI is appropriate in IPR and whether
  there is judicial review of PTABs decision to
  institute IPR on appeal of a final decision.
• Amici IPO, PhRMA, and 3M Company et al. urged en
  banc review and adoption of Phillips standard.
• NYIPLA urged en banc review of both issues raised
  by Cuozzos petition.
• Rehearing en banc?
• SCOTUS?

21
Grounds for Instituting IPR
22
Grounds for Instituting IPR In re Cuozzo

• Panel Majority (Dyk and Clevenger)
• PTABs institution of IPR of claims based on
  references not identified in the petition for
  those claims is not reviewable even after final
  decision.
• The fact that the petition was defective is
  irrelevant because a proper petition could have
  been drafted.
• The failure to cite those references in the
  petition provides no ground for setting aside the
  final decision.

In re Cuozzo Speed Techs., LLC., 778 F.3d 1271
(Fed. Cir. 2015)
23
Grounds for Instituting IPR In re Cuozzo

• Panel Majority (Dyk and Clevenger)
• It is not clear that IPR is strictly limited to
  grounds asserted in the petition.
• Mandamus may be available to challenge the
  PTOs decision to grant a petition to institute
  IPR after the Boards final decision .
• We did not decide the question of whether the
  decision to institute review is reviewable by
  mandamus after the Board issues a final decision
  .

In re Cuozzo Speed Techs., LLC., 778 F.3d 1271
(Fed. Cir. 2015)
24
Grounds for Instituting IPR In re Cuozzo

• Dissent (Newman)
• The PTAB decision relies on arguments and
  evidence that had not been raised in the petition
  to institute, although the statute requires that
  all arguments and evidence must be presented in
  the petition.
• The panel majority holds that the fact that
  the petition was defective is irrelevant because
  a proper petition could have been drafted. Such
  broad and conflicting departure from the
  statutory provisions cannot have been intended.

In re Cuozzo Speed Techs., LLC., 778 F.3d 1271
(Fed. Cir. 2015)
25
Role of PTAB Examiners or Judges?
or
26
Role of PTAB Examiners or Judges?
An inter partes review is neither a patent
examination nor a patent reexamination. Rather,
it is a trial, adjudicatory in nature and
constitutes litigation.
Google Inc. Apple Inc. v. Jongerius Panoramic
Technologies, LLC, IPR2013-00191, Decision at 4
(February 13, 2014)
27
Role of PTAB Referee or Player?
or
28
Lessons Learned

• Argue claim construction in Patent Owner
  Preliminary Response.
• Continue to argue claim construction. It may
  change through final decision.
• Argue claim construction under both BRI and
  Phillips.
• Stay flexible. Present evidence under
  alternative claim constructions.
• Make use of existing testimony, claim
  construction and admissions from district court
  proceedings.
• Point out differences between grounds in petition
  and decision to institute IPR.
• Mandamus to challenge decision to institute IPR
  after PTAB issues a final decision?

29
Lessons Learned After the First IPR Final Written
Decisions
Gregory Morris, J.D., Ph.D. Of Counsel Paul
Hastings
30
IPRs on OB Patents by the Numbers
106 Petitions filed
4 FWDs
7 Settled
81 Pending at some stage
14 Not instituted
13 Filed by hedge funds
31
The First Four Data Points
1 Amneal v. Supernus IPR2013-00368 Dec. 9, 2014 Oracea
2 Amneal v. Supernus IPR2013-00371 Dec. 9, 2014 Oracea
3 Amneal v. Supernus IPR2013-00372 Dec. 9, 2014 Oracea
4 Apotex v. Wyeth IPR2014-00115 Apr. 20, 2015 Tygacil
32
Amneal v. Supernus

• Three OB patents challenged
• 8,206,740 (Chang II)
• 8,394,405 (Chang III)
• 8,394,406 (Chang IV)

IPR2013-00368 IPR2013-00371 IPR2013-00372
33
Amneal v. Supernus
F
D
E
P
F
F
D
E
P
A
AmnealFilesReply toPO Response
AmnealFilesPetition
AmnealsPetition Granted
POPreliminaryResponse
FinalWrittenDecision
Oral Hearing
PO Response
May2014
Aug.2014
Dec.2014
June2013
Dec.2013
Sept.2013
March2014
AmnealsDiscovery Period
PODiscovery Period
PODiscovery Period
34
Amneal v. Supernus

• Challenged claims of all three patents found not
  invalid after FWD

F
D
E
P
F
F
D
E
P
A
AmnealFilesReply toPO Response
AmnealFilesPetition
AmnealsPetition Granted
POPreliminaryResponse
FinalWrittenDecision
Oral Hearing
PO Response
May2014
Aug.2014
Dec.2014
June2013
Dec.2013
Sept.2013
March2014
AmnealsDiscovery Period
PODiscovery Period
PODiscovery Period
35
Amneal v. Supernus
No appeal
F
D
E
P
F
F
D
E
P
A
AmnealFilesReply toPO Response
AmnealFilesPetition
AmnealsPetition Granted
POPreliminaryResponse
FinalWrittenDecision
Oral Hearing
PO Response
May2014
Aug.2014
Dec.2014
June2013
Dec.2013
Sept.2013
March2014
AmnealsDiscovery Period
PODiscovery Period
PODiscovery Period
36
Apotex v. Wyeth

• OB patent challenged
• 7,879,828

IPR2014-00115
37
Apotex v. Wyeth
C
C
F
E
A
ApotexFilesReply toPO Response
ApotexFilesPetition
ApotexsPetition Granted
FinalWrittenDecision
Oral Hearing
PO Response
Nov.2014
Jan.2015
Apr. 2015
Nov.2013
Apr.2013
July2014
ApotexsDiscovery Period
PODiscovery Period
38
Apotex v. Wyeth

• Challenged claims found not invalid after FWD

C
C
F
E
A
ApotexFilesReply toPO Response
ApotexFilesPetition
ApotexsPetition Granted
FinalWrittenDecision
Oral Hearing
PO Response
Nov.2014
Jan.2015
Apr. 2015
Nov.2013
Apr.2013
July2014
ApotexsDiscovery Period
PODiscovery Period
39
Apotex v. Wyeth

• PTAB Dr. Nelsons unsupported and unexplained
  opinions are not persuasive.

C
C
F
E
A
ApotexFilesReply toPO Response
ApotexFilesPetition
ApotexsPetition Granted
FinalWrittenDecision
Oral Hearing
PO Response
Nov.2014
Jan.2015
Apr. 2015
Nov.2013
Apr.2013
July2014
ApotexsDiscovery Period
PODiscovery Period
40
Lessons Learned

• Branded pharmaceutical patents, even formulation
  patents, can be successfully defended before the
  PTAB

41
Lessons Learned

• Interpretation of the facts by experts is
  critical
• Carefully select experts whom PTAB will credit
  and prepare declarations addressing in detail how
  a POSA would view the cited art
• Cross-examine opposing experts in depositions in
  same manner as at a trial because they wont
  testify live

42
Lessons Learned

• Use clear and persuasive demonstratives that cite
  to the record to drive your points home before
  the PTAB at oral argument

43
Lessons Learned

• Use clear and persuasive demonstratives that cite
  to the record to drive your points home before
  the PTAB at oral argument
• KNOW YOUR RECORD COLD!

44
Practice Before the Patent Trial and Appeal Board

• Martin B. Pavane
• Cozen O'Connor
• Vice Chair, Intellectual Property Department
• Co-Chair, ANDA and Biologics Practice Group
• 277 Park Avenue  New York, NY  10172
• P 212.883.4994 F 646-588-1478
• mpavane_at_cozen.com

45
Overview - Post Grant Review

• Process begins with a third party filing a
  petition within 9 months after the grant of the
  patent or reissue patent
• Other than for business method patents,
  post-grant review is available only for
  patents that have a priority date later than
  March 15, 2013
• Any ground of invalidity may be asserted. Not
  limited to 35 U.S.C. 102 or 103 or prior
  art patents and printed publications
• Petitioner cannot file if it has initiated a
  litigation
• Requester showing that it is more likely than not
  that at least one challenged claim is
  unpatentable
• Entitled to routine discovery additional
  discovery if agreed to, or requested and granted
  by the Board additional discovery must be for
  good cause
• If the proceeding is instituted, a final
  determination by the Board will be issued within
  1 year after institution (extendable for good
  cause by 6 months)

46
Overview Inter Partes Review

• Process begins with a third party filing a
  petition
• For patents having a priority date later than
  March 15, 2013 - 9 months or more after the grant
  of the patent or reissue patent (unless a
  post-grant review was instituted, in which case,
  a petition cannot be filed until after the
  termination of such post-grant review)
• For patents having a priority date of March 15,
  2013 or earlier any time
• Petitioner cannot file petition if it already
  initiated a litigation or was served with a
  Complaint in patent infringement action more than
  one year prior to filing petition for inter
  partes review
• Inter partes review may only be based on 35
  U.S.C. 102 or 103, and only on prior art
  consisting of patents or printed publications
• Inter partes review may be instituted upon a
  showing that there is a reasonable likelihood
  that at least one challenged claim is
  unpatentable
• Comparing the two standards, the reasonable
  likelihood standard is lower than the more
  likely than not standard. The reasonable
  likelihood standard allows for the exercise of
  discretion but encompasses a 50/50 chance whereas
  the more likely than not standard requires
  greater than a 50 chance of prevailing.
  Message from Chief Judge James Donald Smith,
  Board of Patent Appeals and Interferences USPTO
  Discusses Key Aspects of New Administrative
  Patent Trials (http//www.uspto.gov/aia_implementa
  tion/smith-blog-extravaganza.jspheading-1)
• Entitled to routine discovery additional
  discovery if agreed to, or requested and granted
  by the Board additional discovery must be in
  the interests of justice
• If the proceeding is instituted, a final
  determination by the Board will be issued within
  1 year after institution (extendable for good
  cause by 6 months)

47
Overview - Estoppel

• For both post grant review and inter partes
  review
• Pre-AIA the estoppel provision of 315 is
  triggered not when examination is completed but
  only after all appeal rights have been
  exhausted. Bettcher Indus. v. Bunzl USA, Inc.,
  661 F.3d 629, 642-643 (Fed. Cir. 2011)
• AIA Estoppel attaches upon PTABs final written
  decision, after which the petitioner may not
  assert either in a civil action or in a
  proceeding before the International Trade
  Commission that the claim is invalid on any
  ground that the petitioner raised or reasonably
  could have raised during post-grant or inter
  partes review. See 35 U.S.C 315, 325
• Since invalidity grounds that petitioner can
  raise in post grant review are broader than inter
  partes review, scope of estoppel will likely be
  broader
• Parties can settle post grant review or inter
  partes review no estoppel without final written
  decision

48
Overview - Differences Between Litigation and
Post Grant Review/Inter Partes Review

• No need for case or controversy for PTAB
  proceedings. Note that there is a need for case
  or controversy to appeal a PTAB decision to CAFC.
  See Consumer Watchdog v. Wisconsin Alumni
  Research Found., 753 F.3d 1258 (Fed. Cir. 2014).
• Claim Construction Broadest reasonable
  construction vs. court interpretation
• Standard of Proof preponderance of evidence vs.
  clear and convincing evidence
• Discovery limited in PTAB proceedings vs. full
  discovery in litigation
• Patentee can amend claims (once) during post
  grant review or inter partes review (but PTAB has
  not granted many requests to amend claims)
• Cost

49
Overview - Ex Parte Reexamination

• Still available after AIA
• May only be based upon patents or printed
  publications
• Requires a showing that the prior art establishes
  a substantial and new question of patentability
• Requester can be anonymous
• Other than petition for ex parte reexamination,
  requester is not involved (unless patent owner
  files response to petition)
• No estoppel
• Patentee can amend claims more freely than in
  post grant review or inter partes review

50
PTAB Proceedings - Discovery

• Three categories of discovery
• Mandatory initial disclosures
• Routine discovery and
• Additional discovery.

51
PTAB Proceedings - Discovery

• Routine Discovery
• Information a party must provide to the other
  side
• No need for motion practice or discovery request.
  Nichia Corp. v. Emcore Corp., IPR2012-00005,
  Paper 19, page 2

52
Routine Discovery

• Routine discovery
• any exhibit cited in a paper or in testimony
  must be served with the citing paper or
  testimony
• Cross examination of affidavit testimony and
• relevant information that is inconsistent with a
  position advanced by the party during the
  proceeding.

53
Exhibits Cited in a Paper or Testimony

• Party must provide such discovery at the same
  time it serves a paper or testimony citing it
• No requirement to create materials
• Does not require that all the underlying data
  and lab notebooks be produced with a paper that
  references an experiment. See Corning Inc. v.
  DSM IP Assets B.V., IPR2013-00043, Paper 27, page
  3.

54
Cross Examination of Affidavit Testimony

• Party relying upon declarant must arrange to make
  that witness available for cross-examination
• Burden and expense falls upon party relying upon
  declarant

55
Information Inconsistent With a Partys Position

• Does not include material protected by
  attorney-client privilege or attorney work
  product immunity
• Narrowly directed to specific information
  known to the responding party to be inconsistent
  with a position advanced . . . , and not broadly
  directed to any subject area in general within
  which the requesting party hopes to discover such
  inconsistent information. Garmin Int'l Inc. et
  al. v. Cuozzo Speed Techs. LLC, IPR2012-00001,
  Paper 26, pages 3-4.

56
Additional Discovery

• The parties may agree to additional discovery
• If the parties fail to agree, a party may move
  for additional discovery
• If parties do not agree, requests for additional
  discovery are rarely granted

57
Additional Discovery

• The moving party must show that additional
  discovery
• Is in the interests of justice in an IPR
  proceeding
• Meets the good cause standard in a post-grant
  review proceeding
• interests of justice standard is slightly
  higher than the good cause standard, but PTAB
  looks at same factors (Garmin factors) in both
  cases. See Bloomberg Inc. v Markets-Alert, Pty
  Ltd., CBM 2013-00005, Paper 32 (May 29, 2013).

58
Additional Discovery - Factors

• PTAB in Garmin v. Cuozzo, IPR2012-00001, Paper 20
  (Feb. 14, 2013) identified five factors to
  consider when determining whether additional
  discovery will be permitted
• Request must be based upon more than a
  possibility and mere allegation
• Requests that seek discovery of litigation
  positions and case theories are not appropriate
• Requests for information a party can reasonably
  figure out or assemble are not appropriate
• The requests should be easily understandable
• The requests must not be overly burdensome to
  answer.

59
Additional Discovery First Factor

• To satisfy the first factor, the requesting party
  must (1) possess evidence tending to show that
  the requested discovery will lead to further
  evidence and (2) establish that something useful
  will be found.
• PTAB decisions suggest that the first factor must
  be met to have any possibility of getting
  additional discovery. See Redline Detection, LLC
  v. Star EnviroTech, Inc., IPR 2013-00106, Paper
  31, page 5 (Aug. 27, 2013) (emphasis added).

60
Joinder

• 35 U.S.C. 315(c)
• If the Director institutes an inter partes
  review, the Director, in his or her discretion,
  may join as a party to that inter partes review
  any person who properly files a petition under
  section 311 that the Director, after receiving a
  preliminary response under section 313 or the
  expiration of the time for filing such a
  response, determines warrants the institution of
  an inter partes review under section 314.

61
Joinder

• Microsoft Corp. v. Proxyconn, Inc.,
  IPR2013-00109, Paper 15, page 3 (February 25,
  2013)
• The Leahy-Smith America Invents Act (AIA)
  permits joinder of like review proceedings. Thus,
  an inter partes review (IPR) may be joined with
  another inter partes review, and a post-grant
  review (PGR) may be joined with another
  post-grant review. 

62
Joinder

• Requests for joinder can be used by defendants in
  related district court patent infringement
  actions to ensure that an IPR will proceed even
  if the patent owner settles with one IPR
  petitioner/litigation defendant
• The request should
• Explain why joinder is appropriate
• Identify grounds of unpatentability asserted in
  the petition
• Explain what impact, if any, joinder would have
  on the trial schedule for the existing
  proceeding and
• Address how briefing and discovery may be
  simplified.
• See Kyocera Corporation v. Softview LLC,
  IPR2013-00004, Paper 15, page 4 (April 24, 2013)

63
Joinder Exception to the One-Year Ban

• 37 C.F.R. 42.101(b) (and 35 U.S.C. 315(b))
  include a one-year bar, i.e., an inter partes
  review may not be instituted if the petition
  requesting the proceeding was filed more than one
  year after the date on which the petitioner, real
  party in interest or privy of the petitioner was
  served with a patent infringement complaint
• However, the one-year bar does not apply when the
  petition for IPR is accompanied by a request for
  joinder. See 37 C.F.R. 42.122(b) Microsoft
  Corp. v. Proxyconn, Inc., IPR2013-00109, Paper
  15, page 3 (February 25, 2013)

64
Joinder Exception to the One-Year Ban

• Can petition for joinder be filed by same party
  that filed original petition?
• In Target Corp. v. Destination Maternity Corp.,
  IPR2014-00508, expanded PTAB panel majority found
  that joinder was permissible even though Target
  was the petitioner in both proceedings.

65
Settlement

• http//www.uspto.gov/sites/default/files/documents
  /040915_aia_stat_graph.pdf

66
Settlement

• Parties may file a joint motion to terminate a
  proceeding on the basis of settlement
• Preauthorization is required
• May be filed at any stage of the proceeding, even
  before institution
• Board has discretion to proceed to final written
  decision more likely at an advanced stage when
  all briefing is complete
• Board is more likely to grant early motions to
  terminate, i.e., without written decision

67
PTAB Appeals

• Laura Lydigsen
• Shareholder, Brinks, Gilson Lione

68
PTAB Appeals

• Notice of appeal
• Timing for notice 63 days v. 60 days (37 C.F.R.
  90.3)
• Content of the notice of appeal
• Involvement of USPTO solicitor
• The merits?
• How is the Federal Circuit handling multiple IPRs
  on the same patent?
• Briefing
• Argument
• Early outcomes

69
Post Grant Review Covered Business Method Review

• Paul Ragusa
• Partner, Baker Botts, LLP

70
Post-Grant Review

• Of 5 filed to date, 1 against an Orange Book
  patent.
• Accord Healthcare, Inc. v. Helsinn Healthcare
  S.A., et al., IPR2014-00010
• Petition filed on September 2, 2014
• Asserted invalidity under Section 112.
• PGR Terminated November 24
• "Under these circumstances, and in view of the
  preliminary stage of the current proceeding, we
  determine that it is appropriate to enter
  judgment and terminate the proceeding without
  rendering a final decision."

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Covered Business Method Review

• Who can petition for CBM?
• Petitioner must have been sued for infringement
  or have standing to bring DJ action against
  patent.
• 37 CFR 42.302(a).
• Covered business method patent
• "a patent that claims a method or corresponding
  apparatus for performing data processing or other
  operations used in the practice, administration,
  or management of a financial product or service,
  except that the term does not include patents for
  technological inventions." 37 CFR 42.301(a).

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Covered Business Method Review (cont.)

• "Financial Product or Service"
• Term refers to products/services that concern
  money, and not necessarily the financial services
  industry
• SAP Am., Inc. v. Versata Dev. Group, Inc.
  CBM2012-000001
• Par Pharm., Inc., et al. v. Jazz Pharms., Inc.
• Patents listed in Orange Book as covering Risk
  Evaluation and Mitigation System (REMS) for
  Sodium Oxybate
• Institution denied - not CBM patents
• Claims and spec did not apply to financial
  services

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Covered Business Method Review (cont.)

• "Technological Inventions"
• A claim is not technological if
• its technical elements merely recite known
  technologies, such as computer hardware,
  communication or computer networks, software,
  memory, computer readable storage media,
  scanners, display devices, databases, etc.
• it merely recites known prior-art technology to
  accomplish a process or method, even if that
  process or method is itself novel and nonobvious
• it combines prior art structures to achieve the
  normal, expected, or predictable result of that
  combination.
• A single non-technological claim of a patent is
  sufficient to institute a CBM review.

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Questions?