Patent Owner's Considerations for Review

PATENT OWNER’S CONSIDERATIONS FOR REVIEW PROCEEDINGS AT THE PATENT TRIAL AND APPEAL BOARD (PTAB) CONCURRENT WITH LITIGATION

INTELLECTUAL PROPERTY OWNERS ASSOCIATION

U.S. POST-GRANT PATENT OFFICE PRACTICE COMMITTEE

Christopher Douglas

Clifton McCann

Lisa Samuels

Gerard Wissing

This paper was created by the authors for the Intellectual Property Owners Association U.S. Post-Grant Patent Office Practice Committee to provide background to IPO members. It should not be construed as providing legal advice or as representing the views of IPO.

TABLE OF CONTENTS

Introduction ...... 1 Patent Application Drafting and Prosecution ...... 1 Prioritization ...... 1 Assess ...... 2 Searches ...... 2 Specification ...... 2 Claim Scope ...... 3 Additional Evidence ...... 4 Patent Application Allowance ...... 4 Supplemental Search and Cited Art Review ...... 4 Pending Applications ...... 4 Post-Grant Claim Changes ...... 5 Timing ...... 5 Preparing for Lawsuit and Review Proceedings ...... 5 Address Possible Shortcomings of Claims That Will Likely Be Challenged ...... 6 Selecting an Expert ...... 7 Pick Your Battle ...... 8 Prepare to Discuss Settlement ...... 9 Outside Counsel ...... 10 Petition for Review Proceeding Received ...... 12 Claim Strategies ...... 12 Scrutinize the Evidence ...... 14 Real Party-in-Interest Discovery ...... 15 Patent Owner Preliminary Response ...... 15 Review Proceeding Trial Phase ...... 16 Institution Decision ...... 16 Patent Owner Actions at Institution ...... 17 Patent Owner Discovery Period ...... 19 Patent Owner Response ...... 21 Patent Owner Claim Amendments ...... 24 Petitioner Reply and Opposition to Motion to Amend ...... 25 Patent Owner Reply ...... 25 Motion to Exclude ...... 26 Oral Hearing ...... 26 Final Written Decision ...... 27 Conclusion ...... 28 About the Authors ...... 29

Introduction

Patent review proceedings by the USPTO’s Patent Trial and Appeal Board (PTAB) under the America Invents Act are taking hold, and even flourishing. Approximately three-quarters of review proceedings are handled concurrently with pending litigation, and while there is overlap, PTAB and court proceedings differ and require different approaches. This paper discusses best practices for patent owners facing a review proceeding at the PTAB, including inter partes review (IPR), post-grant review (PGR), and review of a covered business method patent (CBM). It includes best practices for drafting patent applications to survive a review proceeding, developing a defense in advance of an expected petition for a review proceeding, and defending patents before the PTAB.

Patent Application Drafting and Prosecution

As the use of review proceedings continues to grow, preparing and prosecuting patent applications to survive a review proceeding is a worthwhile ideal for valuable inventions. The time and effort put into the preparation of patent applications can lead to more favorable options during prosecution and a review proceeding, and to the creation of a patent portfolio that provides a higher return on investment. This section of the whitepaper is drafted with the premise that full budget, business, and inventor support is provided for the subject patent.

Prioritization

Not all inventions are the same. When faced with a limited patent portfolio development budget, prioritizing inventions for patenting is useful in order to develop a targeted patent portfolio within budget. Prioritization should be based upon the importance of a covered technology to the retention or expansion of market share, and to the potential for revenue growth, including whether the invention can drive collateral sales. The business team, e.g., the line of business and CTO offices, should be the lead teams driving the analysis.

Given this process is already in place, it can be leveraged to prioritize cases for additional scrutiny. These cases may include cases that are of high value to an offensive or defensive portfolio, and thus are likely to be part of a post-grant proceeding.

Assess

Once inventions are prioritized, an assessment of the minimum claim scope needed to achieve one of the above business objectives should be considered. Consider drafting rough claim outlines to set the minimum claim scope needed, and then securing business team buy-in. The agreed claim outline can then be used as a guide in the preparation of the application’s claim set. The agreed claim outline can also be used as a guide during prosecution so that business decisions can be made regarding whether continued investment is justified and how far to go when amending the claims.

Searches

Understanding the patent landscape when preparing and filing patent applications is a best practice in preparing robust patent specifications. Understanding the patent landscape enables patent professionals to prepare in advance for prosecution, i.e., the possible need for claim amendments to overcome art rejections. By addressing the best and most relevant art in prosecution, not merely citing it in an IDS, patent owners can (1) improve the quality of their claims, and (2) reduce, but not eliminate, the likelihood that this art will be cited again in a post- grant proceeding. However, due to the publication delay of patent applications, pre-filing searches may not uncover the most relevant art.

Specification

How a patent application is prepared may impact prosecution as well as a review proceeding. The claims can be amended after filing, but the written description cannot. See 37 C.F.R. § 1.53(b). A robust written description provides the patent professional with the tools to amend the claims during prosecution, a review proceeding at the PTAB, and other post-grant proceedings such as reexamination or reissue. Consider investing more time, resources, and effort in the preparation of the written description to make it as thorough and as clear as possible. Consult with the inventors and do not just rely on the invention disclosure document to describe multiple embodiments of an invention, and to understand how the invention fits into the overall product strategy, which will help with any claim amendment strategy. Add details that may not be included in the claims, such as dimension ranges for components, or properties of structures or

compounds where appropriate. Consider including characteristics that you might leave out as known in the art, e.g., how components are coupled, how systems communicate, and how materials are bonded. Describe multiple embodiments of the invention and, if applicable, include multiple examples of varying scope to support future claim amendments. The written description should, at a minimum, be prepared to support the narrowest claim scope determined in the assessment phase.

Claim Scope

When drafting claim sets, use terms taken directly from the written description, i.e., use claim terms with intrinsic support as this will drive Court of Appeals for the Federal Circuit (Federal Circuit) de novo review on appeal of a district court decision in accordance with Teva Pharma. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (“When the district court reviews only evidence intrinsic to the patent, the judge's determination is solely a determination of law, and the court of appeals will review that construction de novo.” Teva at 834). Also, it is recommended to invest the time to review the specification after all claims are in final form to ensure that each claim set uses terms that have intrinsic support. If not, revise the written description or claims to ensure that there is intrinsic support in the written description. The final claim sets may be broader than the assessed narrowest claim scope, but the written description should provide support for later amendments.

Consider including claims of varying scope at the onset – broad claim sets and narrow claim sets – to ensure full examination of the various embodiments. Also consider including claims of different statutory classes and different claim types to force a restriction requirement, which is the USPTO’s determination that the claims are patentably distinct, thus minimizing the impact of an adverse decision on any divisional applications. Draft claim sets that include quality dependent claim fallback positions that are included in the original examination so that you do not open the door to further USPTO actions and additional costs to continue prosecution. Detailed dependent claims, and dependent claims that provide support for later interpretation, provide additional options during post-grant proceedings while leaving broad options available for infringement.

Additional Evidence

While the intrinsic record should be the main basis for supporting claims, filing Rule 132 and/or (for pre-America Invents Act (AIA) cases) 131 declarations may also be useful to support potential arguments in a Patent Owner Preliminary Response before the PTAB. Such declarations should be measured to ensure the broadest possible claim scope while providing potential arguments in a Patent Owner Preliminary Response.

Patent Application Allowance

Supplemental Search and Cited Art Review

The time from any pre-filing patent search to issuance of a patent is often measured in years, during which time other art may publish. For applications identified as high value applications, consider conducting a supplemental search after receiving a Notice of Allowance. This would be a last opportunity to have the USPTO consider newly identified art that may be relied upon in any Review proceeding. A supplemental search may also assist with a decision to file any divisional or continuation applications.

There may be instances during prosecution where art you found to be the closest to the invention and cited in an information disclosure statement was not viewed the same way by the examiner. As one goes through prosecution, one tends to follow the lead of the examiner and respond to the rejections presented. To ensure that you have not lost sight of the art you deemed to be the closest art and that will likely be considered by a future petitioner to be the best art, consider reviewing the allowed claims in light of that art and assess whether the allowed claims would survive PTAB review. This assessment can assist with a decision whether to file a request for continued examination with additional amendments or argument, and whether to file any divisional or continuation applications.

Pending Applications

Where budget permits and for high importance patent applications, consider maintaining a pending application by filing a divisional or continuation application at the time of allowance. Maintaining a pending application provides flexibility to maximize alternative claim

opportunities and to adjust claim sets based upon new art and evidence presented in a review proceeding. Again, the more robust the written description, the more opportunities to craft claim sets that focus on competitive products while adjusting for USPTO activity.

Post-Grant Claim Changes

Rule 1.173 permits the broadening of claims of a patent if the reissue application is filed within two years of grant of the original patent. Consider establishing an internal process of docketing the filing of a broadening reissue application at the one-year point after patent issuance and at the 21-month point after patent issuance, with a final docket deadline no later than two years after patent issuance. Filing a reissue prior to enforcing your patent may allow you to prosecute over additional new art and allow you to draft additional dependent claims that provide backstops in the validity case.

Timing

To ensure any review proceeding petition is timely received and allow for maximum response times, consider establishing an internal process that ensures that the correspondence address listed in the Patent Application Information Retrieval (PAIR) System is accurate and is kept up to date, which includes ensuring all assignment records are made of record in the USPTO. This is especially important when patents are acquired through acquisition or merger. Subscribing to a monitoring system, such as Docket Navigator, for speedy notification of any AIA trial petition filing should also be considered.

Preparing for Lawsuit and Review Proceedings

A patent owner contemplating an infringement suit should plan for the possibility that a suspected infringer will petition for a review proceeding. For pre-AIA patents, the suspected infringer can file a petition for inter partes review (IPR) at any time after the patent issues but the IPR petition must be filed within one year after the petitioner is served with the infringement complaint. If the patent is a post-AIA patent, a post-grant review (PGR) petition can be filed anytime within the first nine months after a patent’s issuance, and an IPR petition can be filed any time after the nine-month period for PGR has expired (but before the one-year deadline after

service on the infringer). In the case of a review for a covered business method patent (CBM), the alleged infringer can file a petition any time after the patent owner alleges infringement by way of a demand letter or by service of a complaint.

Time is critical in review proceedings and strategic decisions should include the impact of a review proceeding when contemplating enforcing a patent. If the patent owner wants to respond to the petition before the PTAB decides whether to institute review, the owner has only three months to prepare and file its optional preliminary patent owner response. By statute, the entire review must be completed within 12 months after the PTAB decides to institute a review (18 months upon a showing of “good cause”). Even if the patent owner has no immediate plan to sue for infringement, it can be important if not critical for the owner to anticipate and plan for a possible petition for review by a party who is practicing the claimed invention or wants to clear the way for practicing the claimed invention in the future.

A petitioner may spend months searching for and analyzing prior art from around the world, preparing claim construction charts and design-around options, selecting experts and preparing expert reports, and refining arguments for invalidity. A petition for PTAB review puts an unprepared patent owner at an immediate disadvantage. The time constraints alone can make a response to a petition impractical, and can put the owner in catch-up mode throughout the review proceeding.

A patent owner can take the following steps to develop a defense in anticipation of a petition for a review proceeding:

Address Possible Shortcomings of Claims That Will Likely Be Challenged

Once the likelihood of a current or threatened infringement becomes apparent, the patent owner should investigate the activity in question and identify and construe claims that are believed to be infringed or are otherwise likely to be challenged by a competitor. Early investigation should include consideration of known prior art and any other suspected infringer’s activity, since a successful claim construction argument in one case can lead to a non-infringement finding in another. A patent owner should consider the sufficiency of claim protection for claiming past damages as well as the possibility that infringers will avoid damages by designing around in the

future. When a design-around option is anticipated, a patent owner may benefit from new claims in a related application. If no related applications are pending, then the patent owner should consider post-grant options that permit claims to be added, including a request for reexamination or an application for reissue of the existing patent. The patent owner should be on the lookout for situations where a claim construction argument before the PTAB will conflict with objectives of a claim construction argument in court. The PTAB affords claim terms their broadest reasonable interpretation (BRI) in light of the patent specification, while district courts construe claim terms in accordance with their ordinary and customary meaning. In situations where there is a potential conflict, the patent owner might be able to refrain from asserting problematic claims or develop claim construction arguments that will most likely result in suitable validity and infringement findings.

Selecting an Expert

The PTAB invalidates over 70 percent of the claims it accepts for review, and the patent owner should accordingly be prepared to put its best case for patentability forward. In complex technologies this typically includes expert testimony that explains the meaning of claim terms, differences between the invention and the prior art, and the level of skill in the art. The patent owner needs to select an expert and allow time for the expert to study and provide opinions. The best experts in a given technology are not always plentiful and available on short notice, and given the tight PTAB deadlines imposed on patent owners, early planning can help offset the fact that petitioners sometimes have ample time to carefully select experts and assemble their case. Even where a patent owner had retained an expert who submitted a declaration during the patent’s original prosecution or in an earlier proceeding, the patent owner may benefit by selecting a new expert for the review proceeding. For example, where an expert had provided testimony during prosecution that suggested a relatively broad scope, a new expert may be helpful when the claim scope must necessarily be reevaluated to address newly discovered, closer prior art.

Evidence supporting validity can include prior art that expressly taught away from the invention, extrinsic evidence that supports a desired claim construction or interpretation of prior art, evidence of unexpected results, commercial success and other objective evidence of non-

obviousness. These types of evidence can be critical to a patent owner’s success, but collection of this evidence can be time consuming, and the PTAB routinely denies requests for discovery of such information if the patent owner cannot first establish that the evidence is likely to exist. The collection of supporting evidence is best started early, before the patent challenger requests a review proceeding.

Pick Your Battle

When a patent owner has a number of apparent infringements to address, it should consider the pros and cons of pressing infringement claims simultaneously against all infringers at once or against only one or a selected few. Advantages of suing all infringers at once include the potential for a quicker return on investment and a more limited number of recurring attacks on patent eligibility, validity, and/or enforceability. Advantages of suing infringers seriatim include the patent owner’s potential opportunity to select a favorable forum and an infringer who is likely to pay more in damages, and a successful outcome in an early dispute can pave the way for favorable resolutions of remaining disputes.

An alleged infringer may be more or less favorable than others depending upon the nature and extent of the alleged infringement, the size and financial condition of the infringer, the infringer’s litigation history, and a host of other factors. A forum may be more or less favorable based on the court’s general disposition toward patents, docket congestion, willingness to stay for review proceedings, willingness to entertain summary judgment motions, and other factors. The Eastern District of Virginia had a median time-to-trial of one year and a median patent damages award of $37 million (adjusted for inflation, in 2012 dollars) from 1995 to 2012, while the Northern District of Illinois had a 3.5-year median pendency and a median patent damages award of $6 million over the same period. Price Waterhouse Coopers, “2013 Patent Litigation Study,”* www.pwc.com/en_US/us/forensic-services/publications/assets/2013-patent-litigation- study.pdf. If an international portfolio exists, the patent owner can consider the possible benefits of filing suit in another country first or simultaneously, for example in the UK, Germany, Canada, etc. A foreign lawsuit may also minimize the impact of a stay in concurrent U.S. litigation and may provide an independent basis for obtaining discovery under 28 U.S.C. § 1782.

* http://www.pwc.com/en_US/us/forensic-services/publications/assets/2013-patent-litigation-study.pdf 8

When pursuing only one among a number of suspected infringers, attention should be paid to the risks of equitable defenses of laches, acquiescence, and estoppel. Steps can be taken to help deny the opportunity for other infringers to argue that a delay in addressing their infringing activities gave them reason to believe they were not infringing or that their infringement had been forgiven. Once a lawsuit is filed against one infringer, put the others on written notice of the lawsuit and state that their infringements will be addressed once the first lawsuit has been completed. Threats to other infringers will increase the chance for declaratory judgment actions but this risk can be outweighed by the risk of a successful equitable defense.

Prepare to Discuss Settlement

The filing of a petition for a review proceeding and a threat to file a petition can spur settlement. According to statistics released by the USPTO in December 2014, petitioners and patent owners are reaching settlements in one of five cases during the period before the petitions are denied or granted by the PTAB, and these statistics do not reflect settlements that can be attributed to threats of review before petitions for review are filed. A review proceeding provides an alleged infringer with more bargaining power and gives opportunities to pressure an owner to consider settlement early on. This in turn makes it more important for a patent owner to consider settlement positions before asserting patent rights.

Patent owners can prepare for early settlement opportunities by addressing damages factors before pressing infringement claims. Damages information can sometimes be difficult to acquire and assess, and a damages expert’s guidance and analysis is usually beneficial and sometimes essential. The extent of the infringement, comparable royalty rates in the industry, the amount of profits lost due to the infringement, the acceptability of alternatives, and the risks of failing to prove infringement or to withstand a validity attack are some of the factors that come into play. A well-reasoned and well-supported damages position can increase the amount and likelihood of a favorable early settlement. A failure to research and develop damages issues can result in a missed settlement opportunity and/or inadequate compensation for the damage done.

The accused infringer may present a review petition to the patent owner before it is filed in an early attempt to force the patent owner to settle. Settling before the review petition is filed has the advantage of keeping the evidence and arguments raised in the petition from becoming

public. Even if a pre-filed review petition has not been presented to the patent owner, if any litigation proceeding involving the patent or infringing product is being settled, the settlement should include provisions regarding any future (and current) USPTO proceeding and extend to any real party-in-interest and privy of the infringer. Similarly, settlements in review proceedings should include provisions impacting settlement of any current or future litigation.

Several factors should be considered when settling a review proceeding after the petition is filed. Any settlement may be sealed by the PTAB upon discussion with the PTAB and motioning to seal the settlement agreement as a business confidential document. If settlement occurs before the PTAB publishes its trial institution decision, the patent owner avoids publication of the PTAB’s broad claim construction using the broadest reasonable interpretation in light of the specification. However, the threat against the patent may be recycled by a different petitioner who may raise the same art or arguments. This threat is heightened given that Article III standing is not required for IPRs or PGRs, such that any person except the patent owner can file a petition for a review proceeding. Waiting to settle until after the patent owner response and petitioner reply briefs are submitted following trial institution carries a significant risk that the PTAB will continue the trial against the patent even after the parties settle. On the other hand, avoiding settlement altogether may greatly benefit the patent owner if at least one challenged claim survives the proceeding. A final written decision in an IPR or PGR that upholds at least one claim strengthens the patent for litigation and provides estoppel against the infringer raising the same or substantially the same arguments in the litigation or another USPTO proceeding under 35 U.S.C. §§ 315(e) and 325(e). In addition, a positive written decision raises the bar for other petitioners in proceedings against the patent.

Outside Counsel

Careful coordination of strategies for a review proceeding and for a related patent infringement lawsuit can result in important advantages. Upon filing a lawsuit for which a defendant’s responsive review petition can be expected, the patent owner should take several considerations into account. To begin with, efforts should be made to ensure seamless cooperation and coordination between counsel handling the lawsuit and counsel handling the review proceeding.

Lead counsel for the review proceeding must be a registered patent attorney and ideally should be experienced in patent infringement trials and appeals, or inter partes reexamination or interference proceedings. Backup counsel is not required to have a USPTO bar number. The PTAB recognizes non-USPTO registered practitioners pro hac vice when the counsel is familiar with the subject matter through concurrent litigation. 37 C.F.R. §42.10(c). Having the same counsel represent patent owners in litigation and AIA trials leads to consistency between the litigation and review proceeding and could provide a substantial cost savings for patent owners. However, consideration should be given to whether the counsel has the technical expertise, has the bandwidth, and is in the best position to represent the patent owner’s interests before the more technically focused PTAB. In fact, current trends show that patent owners are increasingly selecting different counsel to handle review proceedings and district court proceedings, as a specialized PTAB review practice has started to develop that draws not only from litigation skills, but prosecution and reexamination/interference skills as well. Therefore, consideration should be given to the particular counsel and their experience before the PTAB and its predecessor, the Patent Board of Appeals and Interferences.

Another consideration in choosing counsel is the sometimes negative impact of representing the patent owner in both litigation and the review proceeding. To prevent misuse of information learned during litigation discovery, a prosecution bar is typically imposed in the litigation protective order thereby preventing litigation counsel from using information learned in litigation discovery during USPTO examination proceedings. The Federal Circuit observed that the risk that litigation counsel “will inadvertently rely on or be influenced by information they may learn as trial counsel” during litigation is minimized if the counsel has no role in drafting of claims. See In re Deutsche Bank Trust Co., 605 F3d 1373 (Fed. Cir. 2010). As such, counsel who represents the patent owner in litigation and in a review proceeding is usually barred from advising the patent owner on any claim amendments in a PTAB trial. See Endo Pharmaceuticals Inc. v. Amneal Pharms Inc., et al., No. 1:12-cv-08115-TPG-GWG (S.D.N.Y. Aug. 13, 2014). This prosecution bar is easily managed because the PTAB has severely limited patent owners’ ability to amend their claims. Thus, isolating separate counsel with respect to claim amendments in a review proceeding is unlikely to significantly prejudice the patent owner. Outside counsel will help identify and retain technical experts, which will help determine the most appropriate preliminary response tactics. As discussed above, engaging experts early on ensures consistency 11

between arguments made in the patent owner’s preliminary response and the patent owner’s eventual arguments and positions in court.

Petition for Review Proceeding Received

When the review proceeding petition is received, a decision should be made, if not made already, whether to retain the same outside counsel as in the existing district court/ITC litigation or any contemplated litigation. The considerations discussed above for selecting counsel in preparation for a lawsuit should be employed here.

Claim Strategies

After receiving a review proceeding petition and selecting outside counsel, the immediate task is to refine the claim construction in light of the arguments and evidence presented in the petition and to assess claim strategies. If a divisional or continuation application is pending then pursuing alternative claims in such an application will be generally preferable to attempting to filing a motion to amend claims in the review proceeding. If a related application is not pending, then claim amendment strategies may be pursued via various post-grant options. These post- grant options include filing a request for ex parte reexamination, a reissue patent application, or a request for supplemental examination. However, authorization from the PTAB should be sought to pursue such post-grant options given that the PTAB has the power to stay, transfer, consolidate, or terminate any other matter at the USPTO involving the same patent as in the review proceeding. See Green’s Energy Group, LLC v. Oil States Energy Services, LLC, IPR2014-00216, Paper 15 (July 1, 2014).

Keeping a continuing application pending in the USPTO will maximize the opportunity for claim amendments in light of new art or interpretation provided in the review proceeding petition. Since continuation and divisional applications are not the same patent as the patent in the review proceeding, the PTAB may not be able to suspend their prosecution. Because issuance of any new patent from a continuing application before the final written decision will eliminate the possibility of patent owner estoppel preventing a claim from being obtained that is not patentably distinct from a canceled claim under 37 CFR § 42.73(d), it is advantageous to ensure its rapid issuance. Given that the average pendency for a non-expedited patent application is three years,

consideration should be made to filing a track one petition to expedite prosecution with a new continuing application. Track one petitions are decided within a month, and if granted, the examination to final disposition (allowance or final rejection) takes an average of six months. Therefore, filing a track one petition and new continuing application may be delayed until shortly after the trial institution decision given the one-year trial timeline.

Ex parte reexamination may also be requested directly, whereby the USPTO will decide within three months whether there is a substantial new question of patentability raised by the prior art in the request. The advantages and disadvantages of reexamination and reissue depend on the circumstances. However, reexamination has many advantages. The scope of a reexamination is limited to particular claim(s) identified in the request and to grounds involving anticipation or obviousness based on printed publications, which means that issues related to 35 U.S.C. § 101 or § 112 will not be considered with respect to the original claims. Additionally, a search will not be conducted to find additional prior art in a reexamination. In contrast, reissue opens all original claims in a patent to examination, all issues can be considered, and the examiner will search for additional art. When there is concurrent litigation, it is also important to consider that service of an amended complaint asserting infringement of a reexamined patent does not restart the one-year window to file a petition while reissue does. See Biodelivery Sciences International, Inc. v. Monosol RX, LLC, Paper 28 (Nov. 13, 2013). This distinction is made because “[u]nlike reissue, reexamination does not result in the surrender of the original patent and the issuance of a new patent.” Accord Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1341-42 (Fed. Cir. 2012). However, reexamination is not always available because a substantial new question of patentability must be raised. With both ex parte reexamination and supplemental examination requests, if only the art and arguments raised in the review proceeding petition are included in the request, the request must be filed to ensure that the petition is decided before the PTAB’s trial institution decision. After the PTAB publishes its trial institution decision, the question of patentability over only information cited from the petition will no longer be considered “new.” See, Game Show Network, LLC et al. v. Stephenson, IPR2013- 00289, Paper 31 (Mar. 21, 2014).

Reissue requires the applicant to admit that the patent is inoperative or invalid through error. However, it is relatively easy to identify a suitable error because the omission of a narrower

claim from a patent is considered sufficient to render a patent partly inoperative by failing to fully protect the disclosed invention under In re Tanaka, 640 F.3d 1246 (Fed. Cir. 2011). In addition to correcting the error by adding narrower claims, prior art may be submitted. The comparatively easier threshold relative to reexamination also means that the timing for filing a reissue application is more flexible. Additionally, reissue is more flexible than reexamination because prosecution of a reissue application is mainly the same as regular prosecution. Another advantage of reissue is that the claims may be subjected to a restriction requirement, which potentially protects claims pursued in further divisional applications from being attacked for patent owner estoppel under 37 C.F.R. 37 C.F.R. § 42.73(d)(3) as such claims have been deemed by the USPTO to be patentably distinct.

In limited circumstances, particularly when it is necessary to cleanse a patent of the possible taint of inequitable conduct, supplemental examination may be requested. The information used in a supplemental examination request is not limited to patents and printed publications, but can include other evidence such as declaratory evidence from the review proceeding petition. Moreover, supplemental examination requests may include, in addition to novelty and non- obviousness issues, other issues such as statutory eligibility and written description. Within three months of filing the request, the USPTO will decide whether there is a substantial likelihood that a reasonable examiner would consider any of the presented items of information important in determining patentability. If the USPTO decides that the items of information do not raise any substantial new questions of patentability, a supplemental examination certificate will be issued. On the other hand, if the USPTO decides that the items of information do raise a substantial new question of patentability, the patent enters ex parte reexamination.

Scrutinize the Evidence

The evidence cited in the review proceeding petition should be closely scrutinized. If trial is initiated, any objection to the evidence must be filed within 10 days of institution. Consequently, scrutinizing the art cited should be done before trial institution. This should include at least obtaining an independent translation for any non-English reference, verifying reference publication dates, and checking calculations used in any expert declaration.

Real Party-in-Interest Discovery

The real party-in-interest and privies of the real party-in-interest must be disclosed in the review petition. An unnamed real party-in-interest or privy may impact the availability of an IPR due to the one-year deadline from service of a patent infringement complaint for each defendant to file an IPR petition under 35 U.S.C. 315(b). See Reflectix, Inc. v. Promethean Insulation Technology LLC, IPR2015-00039, Paper 18 (April 24, 2015) (patent owner successfully challenges the real party-in-interest). Control and funding of the review proceeding are critical variables in the determination of whether parties will be considered to be real parties-in-interest or privies. Absent further evidence, agreements for infringing sales, indemnity or joint defense groups are not sufficient to warrant the designation of real party-in-interest or privy. See Samsung Elecs. Co. v. Black Hills Media LLC, IPR2014-00737, Paper 7 (Nov. 4, 2014).

Additional discovery is usually needed to be able to identify an unnamed real party-in-interest or privy. Because the PTAB requires some basis to grant additional discovery, patent owners should start early in reviewing public information and/or information obtained during the course of litigation regarding the privies of the petitioner. Additional discovery should be requested early enough to obtain the required evidence and add an argument to the patent owner preliminary response. Unless the unnamed real party-in-interest or privy is raised in the preliminary patent owner response, it cannot be newly raised in a motion to reconsider. See BAE Sys. Info. & Elec. Sys. Integration , Inc. v. Cheetah Omni, LLC, IPR2013-00175, Paper 15 (July 3, 2013). However, issues related to identification of the real party-in-interest and privies can still be raised in a patent owner response or even later. See GEA Process Engineering v. Steuben Foods, Inc., IPR2014-00041 Paper 140 (Feb. 11, 2015).

Patent Owner Preliminary Response

It is generally advisable to file a patent owner preliminary response to avoid institution or to at least eliminate some grounds asserted in the petition. Additionally, the patent owner can counter positions taken regarding claim constructions.

However, the use of expert evidence in the patent owner preliminary response is limited to existing evidence such as that developed during litigation or the original patent prosecution. Unfortunately, such expert evidence may rely on a narrower claim construction. As a result, the patent owner is at a significant disadvantage in the preliminary response due to the weight afforded by the PTAB to expert evidence. Furthermore, responding to the grounds of the petition will provide the petitioner with a preview of the response strategy several months earlier than in the patent owner response, thus affording the petitioner longer to plan its counter-strategy and to prepare the petitioner’s declarant for the patent owner’s deposition. Another area of concern is that even if trial is not initiated, any claim construction set forth in the preliminary response can be used against the patent owner as file wrapper estoppel during any subsequent claim construction in litigation and possibly in a subsequent PTAB proceeding. These considerations should be balanced against the possibility that if trial is not instituted, it would raise the bar for other petitions using similar art and/or arguments.

Given that the patent owner preliminary response is not required, patent owners should carefully assess this document to determine the risk in responding. A patent owner preliminary response is particularly useful to argue procedural issues, such as the timing of the petition or any unnamed real party-in-interest or privy with respect to any concurrent litigation under 35 U.S.C. § 315(b), improper use of review proceedings under 35 U.S.C. § 316, and merely including substantially the same art/arguments as another petition under 35 U.S.C. § 325(d).

Review Proceeding Trial Phase

Institution Decision

A review proceeding begins at the time of the institution decision. The institution decision is the first decision rendered by the three administrative patent law judge panel (panel) assigned to the trial. The institution decision provides initial decisions with regard to (1) claim construction, (2) patentability of the claims, and (3) other identified procedural matters.

At the time of the institution decision, the claim construction that is provided in the institution decision is preliminary. Generally, the preliminary claim construction is favorable to the petitioner as the petitioner likely submitted testimonial evidence to support its proposed

constructions. As noted above, the patent owner is unable to submit new testimonial evidence prior to institution. Accordingly, the claim construction can be expected to change and, in some cases, does change between the institution decision and the final written decision.

The PTAB also issues a preliminary decision on patentability. Unlike the final decision that requires the petitioner to prove unpatentability by a preponderance of the evidence, the institution decision requires that the panel find that there is a reasonable likelihood that petitioner would prevail with respect to at least one of the claims challenged in a petition for IPR or that it is more likely than not that at least one challenged claim is unpatentable in a petition for PGR or CBM, or raises a novel or unsettled legal question in a petition for PGR or CBM.

Finally, the PTAB will address any procedural issues, such as identification of real parties-in- interest, bars to the petitioner filing a petition (e.g., the one-year bar in IPR or as a result of filing a declaratory judgment action related to validity), and/or evidentiary issues such as whether a prior art reference is a printed publication. As previously discussed, one of the most powerful challenges at the institution decision is a procedural challenge with regard to real parties-in- interest. A successful procedural challenge may result in dismissal of the petition. For example, in Paramount Home Entertainment Inc. v. Nissim Corp., IPR2014-00961, Paper 11 (Dec. 29, 2014), the PTAB denied an IPR petition where an unnamed related corporate entity that exercised control over the named petitioner was a real party-in-interest.

Patent Owner Actions at Institution

The issuance of an institution decision triggers the start of a number of clocks for the patent owner. These timelines include (1) filing objections to evidence, (2) rehearing, (3) initial scheduling conference, and (4) patent owner discovery.

In particular, the issuance of the institution decision triggers the 10-day deadline to file objections to evidence submitted during the preliminary proceedings. Patent owners should consider objecting to evidence that is impermissible under the federal rules of evidence, such as hearsay, improper experiments, relevance, authentication, etc. The objections preserve the patent owner’s right to later file a motion to exclude evidence in accordance with the scheduling order.

Should the patent owner fail to file objections, the patent owner will have waived those objections.

The institution decision also triggers the 14-day deadline to file a request for rehearing. A request for rehearing is similar to a motion to reconsider in district court proceedings and requires that the patent owner identify that the panel misapplied the law, overlooked previously argued material facts, or made inadvertent errors in its ruling. Adding new arguments is not permissible in a request for rehearing. As a result, the grant rate for requests for rehearing remains very low. The Federal Circuit has confirmed that institution decisions are not reviewable so a request for rehearing is the only way to obtain redress. However, it is generally counter productive to file a request for rehearing to merely reargue positions unless an error was truly made. Only a single request for rehearing is permitted as of right.

At the time of institution, a scheduling order is issued that outlines the schedule of the trial. Scheduling orders typically no longer include a date for an initial scheduling conference. Such a conference should be requested to address potential alteration of the schedule (due dates 1-7), settlement talks, and any other pending preliminary issues in the trial. At this initial conference, the parties should identify any conflicts with the oral hearing date, as future modification of this date is unlikely. The scheduling call can also be used to address motions that are not already provided for in the scheduling order. The early due dates can be adjusted later by agreement among the parties.

Motion practice has generally been limited to motions relating to current issues, as the PTAB has criticized parties who attempt to reserve their rights to file later motions. From the perspective of the patent owner, motions may include motions for additional discovery, scheduling change, early removal of certain evidence, and the like. It is generally considered that, if necessary, the patent owner should focus on a motion for additional discovery at this initial conference.

At the time of institution, the patent owner should consider the need for a protective order. As the parties generally will meet and confer to determine whether to modify the standing default protective order outlined in the trial practice guide, it is important to start discussions well in advance of the patent owner response deadline.

Patent Owner Discovery Period

The institution decision starts the patent owner’s first discovery period, which runs from the institution decision to the date of filing the patent owner response (due date 1). There are two types of discovery to consider during the discovery period, namely routine and additional discovery.

Routine discovery is granted as a matter of right and relates to discovery regarding exhibits filed, such as requesting the full text or requesting a cited document not included as an exhibit; cross examination of declarants; and inconsistent information with regard to an argument raised by the petitioner.

In most cases, a patent owner will be limited to scheduling and taking depositions of any experts used by the petitioner in association with the petition. Deposition of petitioner’s experts can be very useful to the patent owner. In a large number of cases, the ability to discredit the petitioner’s expert, while presenting a credible expert with the patent owner response, may improve the patent owner’s odds of achieving a successful result. The conditions for the patent owner are optimized at this stage as the deposition likely occurs eight months after the drafting of the expert report leaving some experts unprepared, and it is likely that the patent owner will have a number of theories about patentability that are new and/or a surprise to the petitioner’s expert. Accordingly, patent owners should devote significant resources to this phase of the trial.

Beyond the limited routine discovery, any other discovery is referred to as additional discovery. For example, a request for discovery relating to secondary considerations in an obviousness analysis, prior art disclosures, and/or real party-in-interest or privity would be considered additional discovery. Additional discovery either requires an agreement between the parties or motion practice before the PTAB. When evaluating whether to grant additional discovery, the PTAB applies an “interests of justice” standard in an IPR or a “good cause” standard in a PGR or CBM. Regardless of the two standards, the PTAB is attempting to avoid overly broad discovery. When evaluating motions for additional discovery, the PTAB considers the five-factor test outlined in Garmin Int’l Inc. v. Cuozzo Speed Techs., LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013). Specifically, the Garmin factors weighed by the PTAB include (1) whether the requests will result in more than a possibility and mere allegation of finding something useful, (2)

whether the requests unnecessarily seek discovery regarding a party’s litigation positions and underlying basis, (3) whether the requesting party has the ability to generate equivalent information by other means, (4) whether the requests include easily understandable instructions, and (5) whether the requests are not overly burdensome to answer. Id.

Objective evidence of non-obviousness can include evidence of a long-felt but unsolved need, failures of others, and the like. It can also include evidence of commercial success, accolades and awards, copying, industry acquiescence, and surprisingly improved results. Objective evidence is sometimes publicly available or available through evidence in the control of the patent owner or third parties who are willing to share. But sometimes the best objective evidence will only be obtainable through discovery, and the PTAB has made it especially difficult for owners requesting discovery of this type.

The PTAB has rejected an overwhelming majority of requests for discovery. For example, the PTAB routinely rejects requests for additional discovery related to objective indicia of non- obviousness. The rejections have been based on a failure to sufficiently establish that the evidence is likely to exist, a failure to demonstrate that the requested evidence could not be obtained independently, or a finding that providing answers would place too much of a burden on the responding party. Thus, if a patent owner believes its opponent or an uncooperative third party has valuable evidence of failures of others, commercial success, or the like, it must be prepared in advance to corroborate those beliefs. The patent owner may find it necessary, for example, to locate and obtain corroborating declarations from cooperative customers, vendors, or former employees. If a patent owner believes its opponent or a third party has test data or other information supporting validity, it must establish that there is no other source of the information if it expects to receive a favorable ruling from the PTAB. Laying the groundwork for “additional discovery” can require great effort and planning well in advance of the filing of a patent owner response.

The PTAB readily rejects requests for objective evidence when the patent owner fails to tie the targeted evidence to features of the claimed invention. A patent owner should be proactive in anticipating and developing responses to petitioner arguments that the necessary nexus does not exist. For example, if the patent owner expects an argument that commercial success may have

been due to extensive or adept marketing, the patent owner can isolate such extraneous factors by comparing the effect of similar marketing between patented and unpatented products. Sometimes the isolation of extraneous factors will require economic analysis and scientific testing that is supported by expert testimony, and the analysis and testing can take months to complete.

In some courts, it will be possible to obtain discovery in infringement litigation that will be helpful in a companion review proceedings before the infringement litigation is stayed in favor of the review proceeding. Counsel should consider early interrogatories, document requests, and requests for admission that can uncover information pertinent to PTAB issues such as real parties-in-interest, claim scope, validity, and damages. The identification of those who may be real parties-in-interest in the review proceeding should be a high priority, since the identities can help the patent owner avoid follow-on review proceedings and validity challenges in court. The more robust discovery available through the court can reveal evidence that would not otherwise be available, such as evidence that a petitioner in the nature of a shell company, hedge fund, or member of a joint defense group was controlled by a real party-in-interest. Court-supervised discovery can also be important in the case of objective evidence of non-obviousness that is in the control of the alleged infringer or uncooperative third parties. Damages evidence will not be directly relevant to or discoverable on issues before the PTAB, but will be discoverable in the patent infringement lawsuit. Notwithstanding that damages evidence cannot be the subject of PTAB discovery, it can be essential in assessing a settlement opportunity that may arise in the early stages of a review proceeding.

Patent Owner Response

The patent owner response represents the patent owner’s case in chief. The response itself should be complete, in that it addresses claim construction and any arguments the patent owner wishes to be considered in the trial. To support the patent owner response, the patent owner is able to file expert reports to support its arguments related to claim construction, patentability, and secondary factors of non-obviousness.

The patent owner response should initially address the claim construction positions proposed by the petitioner and adopted by the PTAB. Keeping in mind the broadest reasonable interpretation standard and the claim construction positions in the co-pending litigation, the patent owner has

the ability to make more robust claim construction arguments at this stage of the proceeding to include presenting constructions supported by an expert declaration and identifying inconsistencies between the construction proposed by petitioner in the proceedings compared to the construction proposed by petitioner in co-pending litigation. Presenting arguments with regard to claim construction is a viable use of the valuable pages in the response (60 page limit), as the PTAB commonly notes that the claim construction at institution is preliminary, and in practice, it is not uncommon for the PTAB to change its claim construction at the final decision.

The next section of the patent owner response includes the patent owner’s arguments with regard to patentability. Some of these arguments will likely overlap the arguments in the preliminary response, but will be more robust. The patent owner will likely also develop new arguments that require expert support, and thus were likely not in the preliminary response. Each of the arguments must be fully briefed in the response and should include sufficient detail, to include supporting expert testimony or extrinsic evidence. Keeping in mind positions taken in the litigation, patent owners generally focus on their top arguments so as to provide the necessary depth required by the PTAB to confirm a claim.

Patent owner arguments are generally supported by an expert declaration that contains not only opinion testimony, but provides supporting facts and data to strengthen each opinion rendered. Given the high level of education and experience by the PTAB, expert declarations should focus on areas that would not be readily apparent to the PTAB, such as industry-specific restrictions, technical details known only to a person who operates in a particular field, details regarding the state of the art, commercial viability, etc. For example, a strong declaration from an expert will include detailed analysis as to why software programs would not be combinable based on certain rules related to their structures or their intended use on particular operating systems; such conclusions would be supported by scholarly articles or an experiment. In contrast, a weaker declaration would simply rely on an expert’s opinion regarding the combination without any supporting evidence. Experts in these proceedings do not have to testify, and thus a wider pool of experts are available relative to litigation so long as the experts are able to perform at a deposition.

Along with technical arguments regarding patentability, the expert may testify with regard to patent eligible subject matter of the claims under 35 U.S.C. § 101, support the definiteness and/or enablement of the claims under 35 U.S.C. § 112, or any claim amendments. Patent owners should not limit themselves to one expert, especially if their chosen expert is required to testify outside of their area of expertise.

Patent owners may also consider presenting evidence of non-obviousness if applicable. Evidence of non-obviousness includes commercial success, industry praise, unexpected results, copying, industry skepticism, licensing, and/or long-felt but unsolved need. Patent owners rarely succeed in establishing obviousness based on secondary considerations at the PTAB, however, the merits of a possible argument should be considered.

Generally, in order to demonstrate any factor of non-obviousness, the patent owner will need to develop testimony related to the nexus between the evidence and a claimed feature not present in the prior art. By way of example, some mechanisms to support non-obviousness as a result of commercial success includes objective evidence demonstrating the reason why a product is purchased (e.g., consumer reviews, features highlighted in marketing materials, testimony relating to purchasing decision). The patent owner will also need to demonstrate that other factors that could contribute to an increase in sales must be discounted (e.g., advertising, brand loyalty, product quality, etc.). Continuing the commercial success example, the patent owner may rely on its technical experts for mapping the item sold on the claims and may rely on an economic expert for a showing of sales and market share.

If applicable, when filing the patent owner response, the patent owner should include a motion to seal supported by the necessary arguments to demonstrate why a particular document or portion of a document should be sealed. Along with any motion to seal, the patent owner should submit any routine discovery required to be produced with the patent owner response under 37 C.F.R. § 42.51(b)(1). Finally, the patent owner should respond to any petitioner objections to the evidence submitted with the patent owner response and/or motion to amend with supplemental evidence within 10 days of such objections being filed.

Patent Owner Claim Amendments

The deadline for proposing claim amendments is the same as the deadline for the patent owner response. The patent owner can cancel certain of the challenged claims and/or propose substitute claims, so long as any substitute claim does not broaden the scope of any original claim or lack support in the specification. In general, patent owners are able to introduce new claims only if they cancel an equal number of existing claims. To date, the ability to amend has been statistically improbable with only a few contested motions to amend being granted, thus amounting to an over 95 percent failure rate of contested motions to amend. The PTAB first outlined the rules for a motion to amend in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012- 00027, Paper 26 (June 11, 2013). Idle Free clarified that the burden falls on the patent owner to demonstrate patentability of any proposed claims. Not only must the patent owner distinguish the proposed substitute claims from the prior art references applied to the original patent claims, but also must identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the PTAB that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner. Indeed, the patent owner should describe the specific technical disclosure of the closest prior art known to the patent owner and why the proposed claims are patentably distinguishable.

While the motion to amend claims has been constrained due to page limitations, recent rule changes have relaxed that requirement. The page limit was increased from 15 pages to 25 pages and the claims may be presented in an appendix that is not included in the page limitation. 80 Fed. Reg. at 28565-66. However, even if the claim amendments are allowed by the PTAB, before they are entered into the patent, any appeal to the Court of Appeals for the Federal Circuit would need to be finalized, the patent sent back to the USPTO, and claims entered into the patent. It takes about 2 years for the claims to be entered into the patent from the date of the filing of the motion to amend the claims. As a result of this time delay and the low probability of success of any motion to amend, patent owners should consider alternative claiming opportunities such as filing a continuation or divisional application if possible, or filing an ex

parte reexamination request or a reissue application. Additional claim amendment opportunities are addressed supra.

Petitioner Reply and Opposition to Motion to Amend

During this next period, the main focus for the patent owner is to prepare for and defend the depositions of its experts. Of similar importance to the petitioner expert depositions mentioned above, the patent owner should spend sufficient time preparing its experts for their depositions as the petitioner will attempt to methodically discredit or undercut each of the proposed arguments. Given that the petitioner reply in an IPR is limited to 25 pages, the petitioner will focus on obtaining sound bites or short answers that it can use to undercut or limit the effectiveness of the expert testimony.

Upon filing of the petitioner reply, the patent owner will be entitled to file any objections to new evidence within five days of the filing. Importantly, the patent owner should scrutinize the reply for any new arguments or evidence improperly added by the petitioner at the reply stage. For example, the patent owner should identify any evidence that the petitioner could have raised at the petition phase, especially with regard to its prima facie case, and object via a request for a call with the PTAB. While the PTAB will likely defer ruling on the issue until after oral hearing, it is valuable to preserve this objection.

Patent Owner Reply

The patent owner is only entitled to a reply at this stage if the petitioner has filed an opposition to the motion to amend. If such an opposition was filed, the patent owner is given the opportunity to depose any expert who provided a declaration with the petitioner’s opposition and to prepare a five-page reply. Like in the motion to amend, the patent owner and any supporting declarant should focus on specific technical disclosure of the closest prior art known to the patent owner and why the proposed claims are patentably distinguishable. Along with the reply, any routine discovery is required to be produced with the patent owner response under 37 C.F.R. § 42.51(b)(1). Finally, the patent owner should respond to any petitioner objections to evidence submitted with the patent owner response and/or the motion to amend with supplemental evidence within 10 days of the filing date of the objections.

Motion to Exclude

A patent owner is permitted to file a motion to exclude evidence in accordance with the scheduling order so long as the patent owner is able to identify, in the record, where the patent owner preserved its objection by filing its objections within 10 business days of the decision to institute trial for any exhibit submitted before trial institution or within five business days of the exhibit’s submission. 37 C.F.R. § 42.64(b)(1); Fed. Reg. at 28565. A motion to exclude evidence requires that the patent owner demonstrate that the challenged evidence is improper under the federal rules of evidence, such as under the rules related to authentication, relevance, hearsay, expert qualification, and the like. Importantly, motions to exclude are not a vehicle to challenge improper argument in a paper or the weight that the PTAB should apply to evidence.

Motions practice relating to the exclusion of evidence rarely results in a grant by the PTAB as the PTAB generally finds that without a jury, the PTAB itself is well-positioned to determine and assign appropriate weight to evidence presented. Gnosis S.P.A., et al. v. S. Alabama Medical Science Foundation, IPR2013-00118, Paper 64 (June 20, 2014). While generally unsuccessful, patent owners can highlight certain deficiencies in the petitioner’s case, which may result in the reduction of the ultimate weight given to the evidence by the PTAB.

Oral Hearing

Demonstrative exhibits are permitted at oral hearings. Demonstrative exhibits are generally more useful for patent owners as the petitioner’s positions tend to be more fully developed due at least to the benefit that the petitioner had to prepare its positions prior to filing the petition.

Each party is required to serve its demonstrative exhibits five days prior to oral hearing. The demonstratives must not include new evidence or arguments, and should not include new graphics or statements not previously made. In CBS Interactive Inc. v. Helferich Patent Licensing (IPR2013-00033), Paper 118 (Oct. 23, 2013), the PTAB further clarified that the burden is on the party presenting a demonstrative slide to demonstrate that it does not present new arguments or new evidence. Accordingly, patent owners should consider drafting rough demonstratives at the time of the patent owner response to determine what, if any, graphics or arguments they need to include in the response so as to allow for use at oral hearing. The burden

is the same on petitioner, and thus, after the exchange of demonstratives, the patent owner may object to the petitioner’s demonstratives.

As indicated by the limitations to demonstratives, the oral hearing is not a time for new arguments, but instead is a time to present and explain those two to three arguments that the PTAB needs to understand for the patent owner to win the case. The demonstratives should be clear and the presentation rehearsed so as to convey those necessary points. For example, the slides should be clear in the two to three reasons why the patent owner should win at the outset, and each of the slides should be simple and clear to ensure the PTAB follows and understands the key positions.

The reason that patent owners should have a very focused presentation is that the members of the panel already know the record well. It is not uncommon for the judges to have read, in detail, the deposition transcripts, the pleadings, and all supporting evidence. In fact, it is not unheard of that a member of the panel will even ask about portions of the depositions not cited in either party’s papers. Indeed, in some cases the panel has corrected counsel’s inconsistent statements as a result of its knowledge of the record. Accordingly, preparing a presentation of the demonstratives is only a first step, as at least one moot oral hearing is highly recommended.

At the oral hearing, it is possible that one or more panelist will participate from a remote location, which can complicate the use of demonstratives. However, if demonstratives are used, counsel should be prepared to provide copies to the judges and opposing counsel.

Final Written Decision

The final decision is issued by the PTAB within 12 months of the institution decision (18 months with good cause). Upon issuance of the final decision, estoppel attaches to the unsuccessful party, even before all appeals are exhausted. The USPTO does not issue a certificate cancelling the claims or confirming the claims until all appeals are exhausted. Should the patent owner disagree with the final decision, the patent owner may file a single request for rehearing within 30 days or a notice of appeal with 63 days (notice of appeal timeline is reset if a request for rehearing is filed). 37 C.F.R. § 42.71, 37 C.F.R. § 90.3. Given the low likelihood of success of a

request for rehearing, and the high likelihood that the PTAB will shore up its decision prior to appeal, patent owners should consider a request for rehearing only in situations of clear error.

Conclusion

The above best practices have emerged over the period since review proceedings under the America Invents Act became available to patent challengers on September 16, 2012. Best practices are sure to change in response to any newly promulgated laws and rules, and future decisions of the courts and PTAB. In fact, patent law reform, including changes to review proceedings, is back on the Congressional agenda and the USPTO has provided rules for ministerial changes and plans to issue more substantive rule changes. Patent owners who keep attuned to current and future best practices in the PTAB will be rewarded with patent rights that are likely to be stronger and more reliably enforced.

About the Authors

Chris Douglas is an accomplished pre- and post-grant patent practitioner at Alston & Bird. He developed his extensive post-grant experience and knowledge of the USPTO through ex parte and inter partes reexamination proceedings. With the passage of the America Invents Act, he expanded his practice to focus primarily on inter partes review and covered business review proceedings.

Clifton McCann, a partner at Thompson Hine, is a registered patent attorney with 30 years of experience. He has prosecuted patents and represented clients in inter partes proceedings before the USPTO. He has a successful track record of resolving patent disputes and, as first chair, trying patent infringement cases and arguing patent appeals to the Federal Circuit.

Lisa Samuels is a patent prosecution practitioner at Pfizer Inc. where she co-leads Pfizer’s U.S. Post-Grant Proceedings Team. Her work focuses on patent prosecution, post-grant proceedings including reissue and inter partes review, patent term extensions, and patent linkage.

Gerard Wissing is a partner at Dilworth IP and a seasoned attorney with private practice experience and in-house experience as general counsel and chief IP counsel. In his return to private practice he focuses his practice on counseling clients on a broad spectrum of IP matters including preparing and prosecuting patents, trademark registrations, and transactional matters.