1. PTAB Litigation 2016 Part 6 – Patent Owner Response 1

2. Patent Owner Discovery, Response 2

3. Patent Owner Discovery Patent owner discovery period begins 20 days after institution and ends one week before Patent Owner Response is due. Patent owner is entitled to deposition of any petitioner declarants by right. Other discovery only by agreement of parties or Board order (e.g., via motion). 3

4. Patent Owner Discovery Expert Cross Examination Timing: –Begins after supplemental evidence due; –Ends week before Patent Owner Response (Rule 42.53(d)(2)); Guidelines in Trial Practice Guide; Strategy: –Targeted admissions to poke holes in declaration; –Prevent supplementing of declaration: –Trial cross examination style (contrast with fact discovery). 4

5. Patent Owner Response Patent Office envisioned this being the main opportunity to make case for patentability; In reality, much of the fight often occurs pre- institution. Added firepower over Preliminary Response; Can bolster with own expert declaration (preferably not “expertization” of response); Informed by institution decision – Can directly address claim construction and other positions taken by the Board; Swear behind reference (testimonial evidence allowed). 5

6. Patent Owner Response Attack petition procedure and substance More focused on substance; Litigation quality expert report; All opinions must be supported with evidence; Lay groundwork for oral hearing; Integrate demonstratives into Patent Owner Response; Dismantle petitioner’s expert – include deposition admissions; Submit evidence of secondary considerations. 6

7. Secondary Considerations All types of objective evidence require a nexus with the novel aspect of the claimed subject matter. 7 Product or Method Commercial Success; Licensing Unexpected Results; Long-felt Need; Failure of Others; Skepticism; Copying Novel aspect of claimed invention

8. Secondary Considerations Explicitly set forth the nexus between the novel, claimed feature and the asserted objective indicia of nonobviousness. Where this has worked: Merial Limited v. Virbac, IPR2014-01279 –Denied institution where Petitioner failed to address unexpected results from prosecution; Intri-Plex Techs. v. Saint-Gobain, IPR2014-00309 –Strong evidence of commercial success and nexus to claimed invention; and copying. 8

9. Motion to Amend Difficult, rarely granted – 4 granted through end of FY 2015; Rebuttable presumption of one substitute per claim (Rule 42.121); Burden is on the PO to establish: No broadening of claim scope; Written description support; Claim construction; and Patentability over prior art known to PO. Patent owner is required to confer with the Board before filing a motion to amend. Trial Practice Guide, 77 Fed. Reg. 48756, 48766. 9

10. Distinguishing Prior Art in Motion to Amend Must show patentability over all known prior art (not just IPR art) by preponderance of the evidence; See Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, at 7 (Jun. 11, 2013) (“The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner”); MasterImage 3D, Inc. v. RealD, Inc., IPR2015-00040 – must distinguish prior art of record (i.e., material art in prosecution history, material art in current proceeding, material art of record in any other proceeding before the Office); Once Patent Owner has set forth a prima facie case of patentability for its narrower substitute claims over the prior art, the burden of production shifts to Petitioner. At that point, Petitioner can: a) explain why no prima facie case of patentability has been made, or b) rebut that prima facie case by addressing Patent Owner’s evidence and arguments and/or by identifying and applying additional prior art against the proposed substitute claims. 10

11. Adverse Judgment and Patent Owner Estoppel When facing on-point prior art, it may be tempting to give up the patent and pursue other claims in another arena (e.g., a continuation, a reissue). Patent Owner Estoppel - 37 C.F.R. 42.73(d)(3) – A patent owner is precluded from taking action inconsistent with an adverse judgment, including obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim. Contrast with petitioner estoppel in 42.73(d)(1) – A petitioner is estopped in the Office from requesting or maintaining a proceeding with respect to a claim for which it has obtained a final written decision. Patent Owner Estoppel kicks in at a different time than Petitioner Estoppel. 11

12. Patent Owner Estoppel Patent Owner Estoppel could result in an Examiner (e.g., in related applications) applying the claim subject to adverse judgment as the starting point for an obviousness rejection – instead of the prior art. Patentably distinct from a finally refused or cancelled claim; Like non-statutory double patenting analysis; E.g., where claim is unpatentable based on A+B+C, Examiner rejects based on: unpatentable claim + D – rather than A + B + C + D. 12

13. When does patent owner estoppel attach? Attaches at adverse judgment. 42.73(b) – examples of adverse judgment; Disclaimer of patent; Cancellation or disclaimer of all claims in trial; Concession of unpatentability of claims at issue; Abandonment of contest. IPR2014-00343 – After final written decision, no adverse judgment until all appeal rights have terminated. By continuing to pursue – even half-heartedly – IPR and Federal Circuit appeal – can put off Patent Owner Estoppel for related applications, including reissues, for 2+ years compared with abandoning the IPR. 13