PTAB Bar Association Conference—March 2, 2017

Slides:



Advertisements
Similar presentations
By David W. Hill AIPLA Immediate Past President Partner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Overview of the America Invents Act.
Advertisements

Webinar: Request for Comments on AIA Trial Proceedings Before the PTAB July 29, Scott Boalick, Vice Chief Judge (Acting) Patent Trial and Appeal.
© Kolisch Hartwell 2013 All Rights Reserved, Page 1 America Invents Act (AIA) Implementation in 2012 Peter D. Sabido Intellectual Property Attorney Kolisch.
What Do In-House Counsel Need to Know? AIA Proceedings Molly Kocialski, Senior Patent Counsel, Oracle Dion Messer, General Counsel - IP, Limelight Networks.
PROSECUTION APPEALS Presented at: Webb & Co. Rehovot, Israel Date: February 14, 2013 Presented by: Roy D. Gross Associate St. Onge Steward Johnston & Reens.
Greg Gardella Patent Reexamination: Effective Strategy for Litigating Infringement Claims Best Practices for Pursuing and Defending Parallel Proceedings.
Speeding It Up at the USPTO July 2013 July 23, 2013.
Post-Issuance Proceedings Under the AIA Thomas F. Cotter Briggs and Morgan Professor of Law University of Minnesota Law School.
BIPC.COM STRATEGIC CONSIDERATIONS OF POST ISSUANCE PATENTABILITY REVIEW: THE NEW, OLD, AND NO LONGER Presented By: Todd R. Walters, Esq. B UCHANAN, I NGERSOLL.
Administrative Trials
NewYorkBio Conference May 5, 2015 Large Molecules, Small Proceedings: The Intersection of Biologics and IPRs.
Recent Court Decisions Impacting Review Proceedings Under The AIA J. Steven Baughman Ropes & Gray LLP Nancy J. Linck, Esq. Rothwell, Figg, Ernst & Manbeck.
© 2015 Fox Rothschild Inter Partes Review Lessons Learned Scott R. Bialecki Fox Rothschild LLP June 24, 2015.
By Paul J. Lee. Disclaimer The opinions and views expressed in these materials are not necessarily those of DexCom and reflect only the personal views.
1 1 AIPLA Firm Logo American Intellectual Property Law Association Counseling Clients re New USPTO Post Grant Proceedings and Interplay with Litigation.
A Comparative Analysis of Patent Post-Grant Review Procedures in the U
Post-Grant Proceedings Under The America Invents Act Los Angeles Intellectual Property Law Association “Washington in the West” Conference January 29,
Impact of US AIA: What Really Changed? 1 © AIPLA 2015.
1 Patent Law in the Age of IoT The Landscape Has Shifted. Are You Prepared? 1 Jeffrey A. Miller, Esq.
1 1 AIPLA Firm Logo American Intellectual Property Law Association Update on Inter Partes Disputes and the PTAB _____ John B. Pegram Fish & Richardson.
Christopher J. Fildes Fildes & Outland, P.C. Derivation Proceedings and Prior User Rights.
1 1 AIPLA Firm Logo American Intellectual Property Law Association EMERGING TRENDS IN INTER PARTES REVIEW PRACTICE TOM ENGELLENNER Pepper Hamilton, LLP.
Post-Grant & Inter Partes Review Procedures Presented to AIPPI, Italy February 10, 2012 By Joerg-Uwe Szipl Griffin & Szipl, P.C.
1 1 AIPLA Firm Logo American Intellectual Property Law Association The Presumption of Patent Validity in the U.S. Tom Engellenner AIPLA Presentation to.
1 1 AIPLA Firm Logo American Intellectual Property Law Association Interplay between Litigation and the AIA __________ An Overview John B. Pegram Fish.
1 Overview of Legal Process in IP Cases From notes by Steve Baron © Ed Lamoureux/Steve Baron.
1 1 AIPLA Firm Logo American Intellectual Property Law Association PTAB Update: IPR & CBM Sponsored by the Japan Patent Office Ron Harris, The Harris Firm.
New Ex Parte Appeal Rules Patent and Trademark Practice Group Meeting January 26, 2012.
© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Post Grant Proceedings Before the USPTO and Litigation Strategies Under the AIA Panelists:David.
America Invents Act  Date of enactment: 9/16/11  First-to-file provisions effective 18 months after enactment – March 16, 2013  Applications filed on.
The Research Use Exception to Patent Infringement Earlier cases Whittemore v. Cutter 29 F. Cas (C.C.D. Mass. 1813) “It could never have been the.
Chris Fildes FILDES & OUTLAND, P.C. IP Practice in Japan Committee Pre-Meeting AIPLA Annual Meeting, October 20, 2015 USPTO PILOT PROGRAMS 1 © AIPLA 2015.
Peter C. Schechter Vice-Chair, AIPPI-US Div. of AIPLA Partner, Osha Liang LLP Post-Issuance Review Proceedings: Update & Trends in IPR & PGR 1 © AIPLA.
Derivation Proceedings Gene Quinn Patent Attorney IPWatchdog.com March 27 th, 2012.
Patent Reexamination: Best Practices for Pursuing and Defending Parallel Reexamination and Litigation.
Appeals From AIA Trials 35 U.S.C. § 141 – Final Written Decision must be appealed to the Federal Circuit File a Notice of Appeal with the Director of the.
PTAB Litigation 2016 Part 6 – Patent Owner Response 1.
PTAB Litigation 2016 Part 2 – The Petition 1. The Petition 2.
Using the Patent Review Processing System (PRPS) for Post Grant Pilot Applications How to identify relevant information in AIA proceedings at the Patent.
PTAB Litigation 2016 Part 9 – Final Written Decision and Appeal 1.
1 TOPIC III - PATENT INVALIDATION PROCEDURES EU-CHINA WORKSHOP ON THE CHINESE PATENT LAW HARBIN, SEPTEMBER 2008 Dr. Gillian Davies.
Recent Developments in Obtaining and Enforcing Intellectual Property Rights in Nanocomposites Michael P. Dilworth February 28, 2012.
PTAB Litigation 2016 Part 3 – The Patent Owner Preliminary Response 1.
1 How To Find and Read the Law and Live to Tell (and Talk) About It Steve Baron January 29, 2009.
Boston | Hartford | New York | Providence | Stamford | Albany | Los Angeles | Miami | New London | rc.com © 2015 Robinson & Cole LLPrc.com JIM NAULT, IP.
ptab game theory: patent owner versus petitioner
Omer/LES International/
Inter Partes Review and District Court
Inter Partes Review Update
The America Invents Act: Five Years Later November 10, 2016 Jessica L
PTAB Litigation 2016 Part 1 – PTAB Basics and Procedure
TRADEMARK TRIAL AND APPEAL BOARD OVERVIEW
U. S. District Court Perspective on Patent Adjudication Barbara M. G
PTAB Litigation 2016 Part 12 – PTAB Popularity and Reasons
Patent Practice in View Of PTAB AIA Proceedings
POST Grant RevieW UPDATES
CBM/PGR Differences Differences in time periods of availability, parties who have standing, grounds of challenge available, standards of review, and.
ADVANCED PATENT LAW INSTITUTE Venue Panel
Deputy Chief Administrative Patent Judge January 25, 2018
Inter Partes Review Best Practices 2018
PTAB Bootcamp: Nuts and Bolts of IPRs, PGRs, and CBMs
Prosecution Luncheon Patent February 2017
Overview of Legal Process in IP Cases
Federal Circuit control over PTAB in post-grant proceedings Fordham IP Institute Conference 2018 John Richards.
Patent Trial and Appeal Board Statistics
Update and Practical Considerations
SAS Institute v. Iancu SAS appeals arguing § 318 requires deciding patentability of all claims challenged ComlimentSoft sues SAS for patent infringement.
PTAB Litigation 2016 Part 4 – The Institution Decision
Overview of Legal Process in IP Cases
Overview of Legal Process in IP Cases
Presentation transcript:

PTAB Bar Association Conference—March 2, 2017 PTAB Trends and Hot Topics Initial Draft - Not For Distribution

Overview Trends At the PTAB, in general: Trend related to volume Trend related to outcome Trend affecting outcome On appeals: Affirmance vs Remand/Reversal Remand v Reversal Initial Draft - Not For Distribution

Trends at the PTAB: Volume District Court patent filings down 26% in 2016; PTAB filings down only 2% *2/27/2017; Source: DocketNavigator Analytics Initial Draft - Not For Distribution

Trends at the PTAB: Outcome 2016 (570 FWDs) 2015 (436 FWDs) *2/27/2017; Source: LexMachina Initial Draft - Not For Distribution

PTAB Institution Decision Success Rates Impact of Patent Owner Submissions of Testimonial Evidence with Preliminary Response on Institution Decisions PTAB Institution Decision Success Rates (Institution Decisions Issued and POPRs Filed 5/2/2016 – 2/22/2017) No challenged claims instituted Only some challenged claims instituted All challenged claims instituted Initial Draft - Not For Distribution

Trends on Appeals: Outcome Source: DocketNavigator, as of 1/10/2017 Initial Draft - Not For Distribution

Trends on Appeals: Outcome (2016) Source: Law360, 2016 Initial Draft - Not For Distribution

Overview Hot Topics Estoppel CBM Eligibility A recent decision seems to have extended the outcome of Shaw with respect to 315(e). See Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., C.A. No. 13-453-SLR, Memo. Op. at 25-27 (D. Del. Dec. 19, 2016) CBM Eligibility The “financial” prong of CBM eligibility was non-limiting, until Unwired Planet changed the legal landscape. Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016). Full and Fair Opportunity To Respond A recent case raises questions with respect to permissible and impermissible introduction of evidence during the course of trial. See Genzyme Therapeutic Products v. Biomarin Pharmaceutical, 2015-1720 (Fed. Cir. Jun. 14, 2016) Sovereign Immunity Government entities may be entitled to a sovereign immunity defense to the institution of an inter partes review. See Covidien LP v. Univ. of Florida Research Foundation Inc., IPR2016-01274 Paper 21 (PTAB Jan. 25, 2017). Initial Draft - Not For Distribution

Hot Topic: Estoppel 35 U.S.C. § 315(e)(2): “[t]he petitioner in an inter partes review … that results in a final written decision under section ... may not assert[] in a civil action ... that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., C.A. No. 13-453-SLR, Memo. Op. at 25-27 (D. Del. Dec. 19, 2016) Initial Draft - Not For Distribution

Hot Topic: Estoppel Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., C.A. No. 13-453-SLR, Memo. Op. at 25-27 (D. Del. Dec. 19, 2016) “the Federal Circuit has construed the above language quite literally[, finding in Shaw that] ... because the PTAB rejected a certain invalidity ground proposed by the IPR petitioner, no IPR was instituted on that ground and, therefore, petitioner ‘did not raise – nor could it have reasonably raised – the [rejected] ground during the IPR.’” Toshiba at 26 (citing Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016)) “[a]lthough extending the above logic to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding, the court cannot divine a reasoned way around the Federal Circuit’s interpretation.” Id. Initial Draft - Not For Distribution

Hot Topic: CBM Eligibility AIA § 18(d)(1): “the term ‘covered business method patent’ means 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” (emphasis added). Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016). Initial Draft - Not For Distribution

Hot Topic: CBM Eligibility Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016). “it cannot be the case that a patent covering a method and corresponding apparatuses becomes a CBM patent because its practice could involve a potential sale of a good or service. All patents, at some level, relate to potential sale of a good or service.” Id. at 1382. “We hold that the Board's reliance on whether the patent claims activities ‘incidental to’ or ‘complementary to’ a financial activity as the legal standard to determine whether a patent is a CBM patent was not in accordance with law.” Id. Initial Draft - Not For Distribution

Hot Topic: Full and Fair Opportunity To Respond Genzyme Therapeutic Products v. Biomarin Pharmaceutical, 2015-1720 (Fed. Cir. Jun. 14, 2016). “The principal thrust of Genzyme’s APA challenge is that the Board cited references in its final written decisions that were not specifically included in the combinations of prior art on which the Board instituted review.” Id. at *8-9. “However, the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings and, as long as the opposing party is given notice of the evidence and an opportunity to respond to it, the introduction of such evidence is perfectly permissible under the APA.” Id. at *9. Initial Draft - Not For Distribution

Hot Topic: Sovereign Immunity Covidien LP v. Univ. of Florida Research Foundation Inc., IPR2016-01274 Paper 21 (PTAB Jan. 25, 2017). “we determine that Patent Owner UFRF, as an arm of the State of Florida, is entitled to a sovereign immunity defense to the institution of an inter partes review of the challenged patent. Further, we dismiss Petitioner’s Petitions in IPR2016-01274, -01275, and -01276 because UFRF has successfully raised this defense in these proceedings.” Id. at 3. Initial Draft - Not For Distribution

PTAB Bar Association Conference—March 2, 2017 Thank you! Initial Draft - Not For Distribution