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