1. 1 1 AIPLA Firm Logo 1 AIPLA Firm Logo American Intellectual Property Law Association CURRENT TRENDS/EFFECTS OF AIA on US Patent Practice at the US Patent Office ANTHONY VENTURINO* CNCPI-AIPLA Joint Meeting Paris France | March 11, 2014 * This presentation does not reflect the position of Novak Druce Connolly Bove + Quigg LLP or its clients

2. 2 2 AIPLA Firm Logo 2 AIPLA Firm Logo AIA Traps in day to day prosecution at the US Patent Office Getting new Declarations from former employees for post-AIA continuations and divisionals of pre-AIA applications Sending foreign associates the wrong Declaration PRACTICE TIP: Use one form with the pre- and post-AIA magic words Post-AIA US filings with new matter relative to the pre-AIA priority document A PCT International Stage filed at the US Receiving Office listing only a foreign applicant with US inventors goes to the IB The application gets a new number, increased fees for using the EPO as a searching authority, and US counsel has to hire an EP counsel to take over prosecution

3. 3 3 AIPLA Firm Logo 3 AIPLA Firm Logo New proceedings to challenge US patents in the Patent Trial and Appeal Board (PTAB) of the US Patent Office Inter Partes Review (IPR) replaces inter partes reexamination. Permits challenges based on patent or printed publication prior art against any US patent. Post Grant Review (PGR) is similar, but permits almost any ground of invalidity challenge (patent eligibility, novelty, obviousness, written description, enablement, indefiniteness, but not best mode). CBM proceedings are for patents with at least one “covered business method” claim. Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM-00002 (Jan. 23, 2014). Not technological inventions Primarily Class 705: data processing: financial, business practice, management or cost/price determination.

4. 4 4 AIPLA Firm Logo 4 AIPLA Firm Logo Overview – IPR, PGR + CBM Inter Partes Review (IPR)Post-Grant Review (PGR) Covered Business Methods (CBM) Patents covered AllOnly post 03/16/13 first inventor to file apps under the America Invents Act CBM patents in force on or after 09/16/2012 Deadline to file Later of 9 mos after issue or after PGR ends, but if sued for infringement then file within 1 year of being served a complaint Less than 9 months after issue or reissue Anytime after suit or charge of infringement Threshold to start 35 USC Sec. 314(a) Reasonable Likelihood to Prevail. Sec. 315(a) Have not filed a civil action challenging validity. Sec. 324(a) More likely than not at least 1 claim is unpatentable. Sec. 325 Have not filed civil action challenging validity. More likely than not at least 1 claim is unpatentable. Sued or threatened with infringement.

5. 5 5 AIPLA Firm Logo 5 AIPLA Firm Logo IMPACTS OF IPR Fast proceeding Should have invalidating statistics superior to district court Preponderance of the evidence standard No presumption of validity Invalidating a patent by an IPR can wipe out infringement judgments on appeal (Fresenius)(race to the finish) Even if the patent is not invalidated it can be weakened by amendments and/or prosecution history estoppel, and possibly create intervening rights Permits settlement to make the matter go away Likelihood of stay of litigation, can vary by District Court

6. 6 6 AIPLA Firm Logo 6 AIPLA Firm Logo Petitioners are aggressively filing for IPR Years from 1st year each proceeding was available Took IP Reexams 8 years to get to levels IP Reviews reached in 4 months

7. 7 7 AIPLA Firm Logo 7 AIPLA Firm Logo 522 Cumulative raw filings of IPRs as of 9/27/2013 Source: http://www.uspto.gov/aia_implementation/statistics.jsp

8. 8 8 AIPLA Firm Logo 8 AIPLA Firm Logo 56 Cumulative raw filings of CBMs as of 9/27/2013 Source: http://www.uspto.gov/aia_implementation/statistics.jsp

9. 9 9 AIPLA Firm Logo 9 AIPLA Firm Logo WHEN TO FILE A PETITION FOR IPR A party has 1 year after that party was served with a patent infringement complaint. 35 USC 315(b). (PTAB says 1 yr from 1 st complaint. Petition for Inter Partes Review by Apple Inc., IPR2013-00348 (PTAB Feb. 12, 2014, Order)) The 1 year deadline does not apply to another party wishing to join an IPR. 35 USC 315(c). Joinder at Patent Office discretion. But, a party wishing to join must file its request within 1 month after the Patent Office institutes review. 37 CFR 42.122(b).

10. 10 AIPLA Firm Logo 10 AIPLA Firm Logo WHAT TO FILE The request fee is $9000 + $200 for each claim over 20, and the post- institution fee is $14000 + $400 for each claim over 15. Pay all at once By US statute the petition must i.identify all real parties in interest; ii.identify all claims challenged and all grounds on which the challenge to each claim is based; and iii.provide copies of evidence relied upon. By US Patent Office rule the petition must i.identify the grounds for standing; ii.provide a claim construction for each challenged claim; iii.specifically explain the grounds for unpatentability; and iv.specifically explain the relevance of evidence relied upon

11. 11 AIPLA Firm Logo 11 AIPLA Firm Logo The Patent Office finds a number of the filings insufficient to institute an IPR (Through October 1, 2013) NumberPercent Total Filings of Requests for IPR532 Terminated/Dismissed19 Reviews Instituted18188.3% Reviews Denied2411.7%

12. 12 AIPLA Firm Logo 12 AIPLA Firm Logo PTAB TIMELINE SHOWS IP REVIEW IS FAST PO Discovery Period Petitioner Discovery Period PO Discovery Period Observations + Motions to Exclude Evidence Period No more than 12 months* No more than 3 months 3 months 3 months 3 months 1 month Petition Filed Patent Owner (PO) Preliminary Response Decision On Petition PO Response and Motion to Amend Claims Petitioner Reply to PO Response + Opposition to Amendment PO Reply to Opposition to Amendment Oral Hearing Final Written Decision Hearing set on request * The US Patent Office may, for good cause shown, extend the 1 year period by not more than 6 months and adjust time periods in the case of joinder.

13. 13 AIPLA Firm Logo 13 AIPLA Firm Logo Thanks for your attention! Novak Druce Connolly Bove + Quigg LLP 1875 Eye Street, N.W., Eleventh Floor Washington, DC 20006 +1-202-331-7111 anthony.venturino@novakdruce.com © 2014 Novak Druce. All Rights Reserved. www.novakdruce.com ANTHONY VENTURINO Partner