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What Do In-House Counsel Need to Know? AIA Proceedings Molly Kocialski, Senior Patent Counsel, Oracle Dion Messer, General Counsel - IP, Limelight Networks.

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Presentation on theme: "What Do In-House Counsel Need to Know? AIA Proceedings Molly Kocialski, Senior Patent Counsel, Oracle Dion Messer, General Counsel - IP, Limelight Networks."— Presentation transcript:

1 What Do In-House Counsel Need to Know? AIA Proceedings Molly Kocialski, Senior Patent Counsel, Oracle Dion Messer, General Counsel - IP, Limelight Networks Douglas Luftman, Chief Intellectual Property Counsel, NetApp Mehran Arjomand, Partner, Morrison & Foerster Thomas Franklin, Partner, Kilpatrick Townsend & Stockton

2 Overview Types of Proceedings and Statistics Timing Issues – When to file? Finding Post-grant Filings Differences in Invalidity Standards Joining other AIA Proceedings Real Party in Interest Who / When to Hire Estoppel Issues Settlement Practice Tips

3 Types of Post-Grant Proceedings Post-Grant Review (PGR) Inter Partes Review (IPR) (most common) Covered Business Method (CBM)

4 Statistics Regarding Proceedings to Date Source:

5 ProceedingAvailableApplicableTiming Post Grant Review (PGR) From patent grant to 9 months after patent grant or reissue Patent issued under first-inventor-to-file Must be completed within 12 months from institution, with 6 months good cause exception possible Inter Partes Review (IPR) For first-to-invent, available after grant or reissue For first-inventor-to-file, from the later of: (i) 9 months after patent grant or reissue; or (ii) the date of termination of any post grant review of the patent Patent issued under first-to-invent or first-inventor-to-file Same as PGR Covered Business Method (CBM) Available 9/16/12 (for first- inventor-to-file only after PGR not available or completed) Patents issued under first-to- invent and first-inventor-to-file Same as PGR

6 Inter Partes Review (IPR) PetitionerEstoppelStandardBasis Post Grant Review (PGR) Person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent Must identify all real parties in interest Raised or reasonably could have raised Applied to subsequent USPTO/district court/ITC action More likely than not OR Novel or unsettled legal question important to other patents/ applications 101, 102, 103, 112, double patenting but not best mode Inter Partes Review (IPR) Person who is not the patent owner, has not previously filed a civil action challenging the validity of a claim of the patent, and has not been served with a complaint alleging infringement of the patent more than 1 year prior (exception for joinder) Must identify all real parties in interest Raised or reasonably could have raised Applied to subsequent USPTO/district court/ITC action Reasonable likelihood 102 and 103 based on patents and printed publications Covered Business Method (CBM) Must be sued or charged with infringement Financial product or service Excludes technological inventions Must identify all real parties in interest Office—raised or reasonably could have raised Court-raised Same as PGRSame as PGR (some 102 differences)

7 IPR Statistics – Terminated thru 5/1/14 Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014

8 Cumulative AIA Petitions thru 5/1/14 Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014

9 Tech Breakdown of AIA Petitions thru 5/1/14 Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014

10 When to File? PGR: Within 9 months from patent grant or reissue IPR: –Pre-AIA: Available anytime after grant or reissue –Post-AIA: Later of: 9 months from patent grant or reissue, or termination date of all pending PGRs CBM: After PGRs available and complete Other timing issues –Must initiate before declaratory judgment challenge to patent –Speedy decision from PTAB

11 Finding other proceedings – Step 1

12 Finding other proceedings – Step 2

13 Finding other proceedings – Step 3

14 Finding other proceedings – Result

15 Finding other proceedings – Docket

16 Differences in Invalidity Standards Patent Trial and Appeals Board (PTAB) standard District Court standard Claim construction standard Expertise of Judges

17 Cumulative AIA Decisions thru 5/1/14 Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014

18 What to file Qualifying Art Your art or someone else’s Raised or Could have been raised 102 or 103?

19 Who / When to Hire Searching for invalidating art –Search firms –Bounty searchers Experts Lawyers

20 Joining other AIA Proceedings Rules for Joinder Pros/Cons of Joining –Cost savings –Estoppel issues –Divergent interests

21 AIA Petitions Statistics thru 5/1/14 Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014

22 Real Party in Interest Joint Defense Groups (JDG) Changes to JDG Agreements Patent Aggregation Groups Indemnity Claims –Indemnitor vs. Indemnitee Perspective –Changes to master agreements

23 Estoppel Issues Forum differences between IPR and PGR When does it attach? Scope differences between IPR and PGR

24 AIA Final Written Decisions thru 5/1/14 Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014

25 Settlement Issues Requirements for entry Settlement does not necessary prevent final decision Timing of settlement

26 AIA Settlement Statistics thru 5/1/14 Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014

27 Settlements with Adverse Judgments thru 5/1/14 Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014

28 Practical Considerations Always consider post grant challenges to problematic patents Threaten filing to NPE if you have good prior art Consider negative implications of challenge Coordinate with litigation / licensing strategy Consider timing issues in strategy

29 Questions?

30 Blogs and Digests aiablog.com/trials-by-ptab interpartesreviewblog.com ptabtrialblog.com ptabdigest.com


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