1 1 AIPLA Firm Logo American Intellectual Property Law Association EMERGING TRENDS IN INTER PARTES REVIEW PRACTICE TOM ENGELLENNER Pepper Hamilton, LLP IP in Japan Committee Meeting AIPLA Annual Meeting, Washington D.C. October, 2013

2 2 AIPLA Firm Logo Emerging Trends in Inter Partes Review New mechanisms for challenging patents under the AIA Key features of Inter Partes Review (IPR) proceedings Some statistics for the first year of IPR availability Exemplary cases

3 3 AIPLA Firm Logo The Post-AIA World

4 4 AIPLA Firm Logo The America Invents Act The America Invents Act (AIA) established several new mechanisms for challenging issued U.S. Patents: –Inter partes review –Post grant review –Cover business method review –Derivation proceedings All of these new proceedings are conducted before a new “Patent Trial and Appeal Board.”

5 5 AIPLA Firm Logo The America Invents Act IPRCBMPGR Grounds102 & 103 but only patents and printed publications 101 (ineligible subject matter) 112 (enablement or written description) & all102/103 prior art 101 (ineligible subject matter) 112 (enablement or written description) & all102/103 prior art TimingPre-AIA patents: Anytime Post-AIA patents: 9 months after issue and after termination of PGR challenges Pre-AIA patents: Anytime if sued or threatened by PO. Post-AIA patents: 9 months after issue and after all PGR challenges are terminated Available only for Post AIA patents: Must be filed within 9 months of grant StandardReceivable likelihood success More likely than not that a claim is invalid More likely than not that a claim is invalid

6 6 AIPLA Firm Logo The America Invents Act IPR Grounds102/103 patents and publications Standard of review Reasonable likelihood of success ParticipationFull Estoppel?Yes Decision Maker New “Patent Trial and Appeal Board” Ex Parte Grounds102/103 patents and publications Standard of review Substantial new question of patentability ParticipationVery limited Estoppel?No Decision MakerCentral Reexam Unit The AIA also retained the old “ex parte reexamination” procedure largely untouched

7 7 AIPLA Firm Logo Key Features of IPR proceedings

8 8 AIPLA Firm Logo Key Features of IPR Proceedings Initiated by a Petition (and fee payment): –Formal recitations –Must identify all challenged claims and recite all grounds for review –60 pages or less, 14pt. font, double spaced Must be accompanied by all supporting evidence –PTAB expects in most cases the evidence will include one or more expert declarations. –What does a reference disclose? What does the reference mean to a person skilled on the art? Why a feature in inherent in the prior art?

9 9 AIPLA Firm Logo Key Features of IPR Proceedings Patent Owner (PO) Initial Response (optional): Decision to Initiate Proceedings PO takes discovery of Petitioner’s Expert(s) Patent Owner Response (with PO’s Expert Declarations) and Motion to Amend Claims (only one opportunity) Petitioner takes discovery of PO’s expert(s). Petitioner’s Reply (w/ rebuttal declarations) and Opposition to Amendments PO discovery of rebuttal experts PO’s Reply Trial (Oral Hearing) ~~~~~> Final Written Decision

10 AIPLA Firm Logo IPR S TATISTICS 9/16/2012 to 9/15/2013 Special thanks to Yasser El-Gamal, Ehab Samuel and Peter Siddoway who compiled some of the following data for the AIPLA

11 AIPLA Firm Logo Statistics 483 petitions filed in the first year

12 AIPLA Firm Logo Statistics Most IPR petitions have been against NPEs

13 AIPLA Firm Logo Statistics About 6% of IPRs involve Japanese companies

14 AIPLA Firm Logo Statistics About 8% (37) of the IPR petitions have resulted in settlements (20 before, and 17 after, institution)

15 AIPLA Firm Logo Statistics 403 of the 483 petitions (83%) were related to pending patent litigation between the same parties

16 AIPLA Firm Logo Statistics The 403 Petitioners involved in related litigation has filed for stays 159 times

17 AIPLA Firm Logo Statistics In most of the 180 decisions on petitions so far, a declaration has been presented by the petitioner

18 AIPLA Firm Logo Exemplary cases

19 AIPLA Firm Logo IPR Kyocera v ADC Tech Kyocera was sued in Fed. Dist. Ct. on August 14, 2012 Kyocera filed Petition for IPR on January 11, 2013 Notice of Defective Petition January 16, 2013 (title page) Patent Owner Response filed April 16, 2013 Notice of Defective Response April 22, 2013 (14 pt. font) Trial Instituted May 23, 2013 Settlement August 22, 2013 “This trial was instituted on May 23, 2013, and is still in the preliminary stages. The parties have advised the Board that the co-pending district court litigation is being dismissed and the parties have represented that no other actions involving US Patent 8,103,313 are pending. Under these circumstances, the Board determines that it is appropriate to terminate the trial without rendering a final written decision. 37 C.F.R. § ”

20 AIPLA Firm Logo IPR & 130 Komatsu v. Hagenbuch Komatsu was sued in Fed Dist Ct by Hagenbuch Komatsu filed Petition 129 on 1/29/13 (14 grounds) Komatsu filed Petition 130 on 1/29/13 (8 more grounds) Both petitions were to the same patent concerning “black box” recording vital signs of a vehicle during operation Settled: April 30, 2013

21 AIPLA Firm Logo IPR Toyoda v AVS LLC American Vehicular Sciences (AVS) sued Toyoda in E. Dist. Texas in July 26, Toyoda filed 13 IPR petitions against AVS on July 12, 2013, challenging the 12 asserted patents. Filing fees alone ~$300,000

22 AIPLA Firm Logo IPR & & Kyocera v. Softview Softview sued Kyocera and 16 other companies on September 30, Apple sought inter partes reexam before AIA date Motorola sought ex parte reexam before AIA date Kyocera petitioned for IPRs on September 16, 2012 PTAB stays all re-exams on December 20, 2012 IPR Trial Instituted on March 29, 2013 Apple requests permission to file a motion for joinder in April 2013 but then decides not to join Motorola files two petitions and seek joinder in June 2013 Motion to stay Delaware litigation granted July 26, 2013

23 AIPLA Firm Logo Thanks for your attention! Questions? T OM E NGELLENNER Pepper Hamilton, LLP High Street Tower, 19 th Floor 125 High Street Boston, MA Name