POST Grant RevieW UPDATES You thought you had a valid patent, didn’t you?

Types of post-ISSUANCE Proceedings EX PARTE: ReISSUE REEXAMINATION SUPPLEMENTAL EXAMINATION INTER PARTES: POST GRANT REVIEW (PGR) INTER PARTES REVIEW (IPR) COVERED BUSINESS METHOD REVIEW (CBM) INTER PARTES REEXAMINATION (NO LONGER AVAILABLE)

DIFFERENCES (Courtesy of USPTO) Inter Partes Review (IPR) Petitioner Estoppel Standard Basis Post Grant Review (PGR) Person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent Must identify all real parties in interest Raised or reasonably could have raised Applied to subsequent USPTO/district court/ITC action More likely than not OR Novel or unsettled legal question important to other patents/ applications 101, 102, 103, 112, double patenting but not best mode Person who is not the patent owner, has not previously filed a civil action challenging the validity of a claim of the patent, and has not been served with a complaint alleging infringement of the patent more than 1 year prior (exception for joinder) Reasonable likelihood 102 and 103 based on patents and printed publications Covered Business Method (CBM) Must be sued or charged with infringement Financial product or service Excludes technological inventions Office—raised or reasonably could have raised Court-raised Same as PGR Same as PGR (some 102 differences)

DIFFERENCES (Courtesy of USPTO) Proceeding Available Applicable Timing Post Grant Review (PGR) From patent grant to 9 months after patent grant or reissue Patent issued under first-inventor-to-file Must be completed within 12 months from institution, with 6 months good cause exception possible Inter Partes Review (IPR) For first-inventor-to-file, from the later of: (i) 9 months after patent grant or reissue; or (ii) the date of termination of any post grant review of the patent. For first-to-invent, available after grant or reissue (technical amendment) Patent issued under first-to-invent or first-inventor-to-file Covered Business Method (CBM) Available 9/16/12 (for first-inventor-to-file only after PGR not available or completed) Patents issued under first-to-invent and first-inventor-to-file

DIFFERENT STANDARDS OF PROOF “Reasonable likelihood” and “more likely than NOT” are different standards Both are higher than “substantial new question of patentability CHIEF PTAB JUDGE (JAMES DONALD SMITH) issued statement (on the USPTO WEBSITE): 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.

COMMON THREADS MUST IDENTIFY ALL REAL PARTIES IN INTEREST (i.e., no anonymous filings) STAY OF CONCURRENT PROCEEDINGS: If PARTY petitioning for review proceeding initiates subsequent civil action or ITC investigation (BASICALLY n/A to CBM Review), such action is automatically stayed. If proceeding initiated first, stay at discretion of court. Typical factors: Stage of litigation Will stay simplify issues in the case Will stay unduly prejudice nonmoving party or give clear tactical advantage to moving party (CBM ONLY) will stay, or denial thereof, reduce the burden of litigation on the parties and the court – (interlocutory appeal to CAFC from district court decision on stay available in CBM)

COMMON THREADS Appeal is to cAFC Settlement possible Proceedings may not be terminated by PTAB, even if parties jointly request termination If proceedings close to a decision If future proceedings are likely due to remaining concurrent proceedings Must file a copy of the settlement agreement

CBM REVIEW A covered business method patent: …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. Not identical to 101 non-statutory subject matter inquiry Not sufficient for patented invention to be intended to save money or popular among financial services companies Petitioner needs to be in lawsuit or “charged with infringement”

Case study (CBM2016-00044) BMC SOFTWARE, INC. V. ZIT CONSULTING GMBH REPRESENTATIVE CLAIM

Case study (CBM2016-00044) BMC SOFTWARE, INC. V. ZIT CONSULTING GMBH

Case study (CBM2016-00044) BMC SOFTWARE, INC. V. ZIT CONSULTING GMBH

RELATED 101 NOTE

RELATED 101 NOTE (FROM PGR2016-00013 – CONCURRENT PROCEEDING)

PRACTICAL ADVANTAGES FOR PETITIONER Well-heeled petitioner may simultaneously file multiple petitions for review of the same patent Single petition limited to 60 pages, absent motion showing why “interests of justice” require more – does not limit filing multiple petitions Patent owner (or ptab sua sponte) may look to consolidate concurrent ptab proceedings or eliminate duplicative grounds Petitioner may present expert testimony with petition in support of grounds of rejection, but patent owner may not present competing expert testimony in preliminary response If review instituted, then patent owner may submit expert testimony

PRACTICAL ADVANTAGES FOR PETITIONER Significance of institution (again courtesy of uspto)

PRACTICAL ADVANTAGES FOR PETITIONER

PRACTICAL ADVANTAGES FOR PETITIONER

PRACTICAL ADVANTAGES FOR PETITIONER PTAB is not bound by district court decisions in favor of patentability NOVARTIS V. NOVEN PHARMACEUticals, (FED. CIR. April 4, 2017) Delaware district court ruled against obviousness of Novartis claims in litigation with NOVEN. Nonobviousness of same claims also upheld by Delaware district court and CAFC in litigation with other parties. PTAB decided it need not consider those determinations since record before PTAB was different (although admittedly “substantially the same”) CAFC affirmed, but on grounds of differing evidentiary standard NEVErtheless, even if the record were the same, Novartis’s argument would fail as a matter of law. The ptab determined that a “petitioner in an inter partes review proves unpatentability by a preponderance of the evidence (see 35 usc 316(e)) rather than by clear and convincing evidence[] as required in district court litigation,” meaning that the ptab properly may reach a different conclusion based on the same evidence.

ODD RESULT NOVARTIS CONSIDERATIONS What happens to the earlier non-appealed judgment adverse to noven (as well as the judgments against other parties)? As patently-O points out, obviousness is a question of law. Some motivation to wait out district court litigation before filing review proceeding?

SOME PRACTICAL LIMITATIONS PGR PETITION MUST BE FILED WITHIN 9 months of grant IPR petition barred for a petitioner (real party in interest or privy) who was served more than one year earlier with an infringement complaint CBM requires suit filed or party “charged with Infringement”

OTHER considerations Proceedings move very quickly Although patent owner cannot submit expert testimony with preliminary response, will want to have expert lined up in case proceeding is instituted. PTAB members are usually quite intelligent and familiar with relevant law Page limitations dictate dedicating more space to factual considerations. If basic grounds of legal positions are set forth somewhere initially, you will probably be able to further develop later if you need to. Motions to amend Rarely successful Must not only distinguish from prior art applied in instituted grounds, but also non-instituted grounds and all other prior art patent owner is aware of (in 15 pages).

OTHER considerations Discovery Routine discovery is mandatory and need not be requested. Only includes: Cited exhibits Cross-examination of affidavit testimony Relevant information inconsistent with a party’s position, served concurrently with filing of documents/things containing the inconsistency “ADDITIONAL DISCOVERY” must be requested (unless parties agree – which ptab likes)

OTHER considerations Five garmin factors:

OTHER considerations Although garmin factors considered in all reviews, standard is different for IPR v. PGR/CBM IPR – interests of justice (slightly higher) PGR – good cAUSE

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