PTAB Litigation 2016 Part 5 – Motions Practice, Discovery, and Trial Management Issues 1

Motions - Require Board authorization before filing (Rule 42.20(b)) Can request call for authorization at any time via to with opposing counsel Explain in (a) reason for call (e.g., proposed motions to be discussed) and (b) materials needed (e.g., exhibits). Board paralegal will schedule call with one or more judges of the assigned panel to discuss. Board typically addresses issues raised by parties during the call or days later via a “Conduct of the Proceedings” order. Board discretion to permit or refuse call request. 2

Motions - Additional Discovery Additional discovery: –Must show “in the interests of justice” (Rule 42.51(b)(2)); –“[D]iscovery is limited as compared to that available in district court patent litigation.” Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR , Paper 20, at 2 (P.T.A.B. Feb. 14, 2013). 3

Motions – Additional discovery (cont.) Garmin factors: need smoke, no fishing (1) beyond speculation; (2) cannot seek litigation positions; (3) unavailability by other means; (4) instructions easily understandable; (5) not overly burdensome; Secondary considerations – e.g., request petitioner sales data to acquire evidence of invention’s commercial success and copying of invention by competitors; Real party in interest – request documents showing communications with parties not named by petitioner that evidence control of PTAB proceeding by unnamed party. 4

Mandatory Initial Disclosures 37 C.F.R (a) describes Mandatory Initial Disclosures. These disclosures are actually not mandatory and are seldom used or even referenced in a trial. The parties may agree, before the preliminary response preparation time ends, on what discovery they will make available to each other if trial is instituted. If trial is instituted, that agreed upon discovery is then available. 5

Mandatory Initial Disclosures The Trial Practice Guide includes suggestions of things that the parties can agree to provide discovery on as part of Mandatory Initial Disclosures. This suggested discovery, if agreed upon, could be quite expansive. In practice, the parties would initially identify items of potential relevance including identification of potentially relevant documents and identifying persons who might have relevant information before the preliminary response is filed. Upon trial institution, the opposing party would be entitled to discovery of the information identified in those initial disclosures. 6

Mandatory Initial Disclosures While Mandatory Initial Disclosures could be expansive, they are only required upon agreement of the parties. 37 C.F.R. §42.51(a)(2) states that “[w]here the parties fail to agree to the mandatory discovery set forth in paragraph (a)(1), a party may seek such discovery by motion.” As noted previously, the Board grants additional discovery only in very limited circumstances when in the interests of justice. Thus, a party can, in most cases, avoid the discovery listed in the Mandatory Initial Disclosures suggestions simply by not agreeing to such disclosures. 7

Trial Management Issues When Board institutes trial, it concurrently posts a trial scheduling order; Scheduling Order - Timing “The Board will enter a Scheduling Order … concurrent with the decision to institute a trial.” 77 Fed. Reg “The Scheduling Order will set due dates for the trial taking into account the complexity of the proceeding but ensuring that the trial is completed within one year of institution.” Id. 8

Trial Management Issues Scheduling Order –Stipulating different dates “The parties may stipulate different dates … (earlier or later, but no later than [Reply to opposition to motion to exclude]).” 77 Fed. Reg “A notice of the stipulation, specifically identifying the changed due dates, must be promptly filed.” Id. “The parties may not stipulate an extension of [Reply to opposition to motion to exclude, or the Oral argument].” Id. Parties can change due dates up to the last due date before oral hearing upon agreement and filing of a document noting the agreement into the docket. No Board approval is needed. The Board can be contacted to request schedule changes if the parties cannot agree. 9

Trial Management Issues Initial Conference Call Scheduling order will note whether the Board wishes to have an initial conference call. If no out of the ordinary issues, the Board will make that call optional; Discuss general trial procedure, handling of any special issues, and provides an opportunity to request leave to file motions that a party feels are necessary. 10

Trial Management Issues Supplemental Information “Once a trial has been instituted, a party may file a motion to submit supplemental information” (Rule ): –Not usually granted; –(1) Leave required, request within 1 month of institution; –(2) Must be relevant to instituted claim; –If (1) or (2) not met, must show why: –(a) reasonably could not be obtained earlier; and –(b) in the interests-of-justice. 11

Trial Management Issues Protective Order Parties can have a protective order entered when confidential information will be disclosed in course of trial; “Default” in Appendix B of Trial Practice Guide; Rule – The Board may, for good cause, issue an order, e.g.: –(1) Forbidding disclosure / discovery; –(2) Specifying terms (time, place) ; –(3) Prescribing different method ; –(4) Forbidding inquiry or limiting scope ; –(5) Designating persons who may be present ; –(6) Requiring deposition to be sealed ; –(7) Requiring trade secret / R&D / CBI not be revealed, or specify way for revealing; –(8) Requiring simultaneous filing of sealed documents or information. 12

Trial Management Issues Mandatory Initial Disclosures Initial Disclosures included in Trial Practice Guide; Optional, by agreement or by motion (Rule 42.51(a)); Not typically used. 13

Trial Management Issues Pro Hac Vice Admission Rule 42.10(c): –lead counsel must be registered practitioner, and –Pro hac vice motion to admit practitioner without a USPTO registration number must show: (a) experienced litigator having (b) established familiarity with subject matter at issue. See Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR , Paper 7, at 3-4 (PTAB Oct. 15, 2013) (setting forth the requirements for pro hac vice admission). 14

Settlement Process (Rule 42.74) Parties may settle at any time and request termination of the trial; May avoid final written decision, but depends mostly on posture of trial –Unlikely if Board substantially decided merits already; –Settlement before oral hearing recommended to avoid Board issuing a final written decision ; –See In Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR , Paper 43, at 2-3, n.1 (P.T.A.B. Oct. 19, 2015) (final written decision issued after Board denied pre-trial and post-trial motions to terminate proceedings). 15

Settlement Filing settlement agreement with Board Settlement must be: –Written; –Filed before termination of trial; –Original (no redactions); Confidentiality: –Party may request to be kept confidential; –If request timely filed, only available upon written request by: (a) Government agency and (b) person showing good cause and submitting fee; Inform Board of settlement via – Board may require conference call to discuss settlement procedures. 16

Settlement Refunds – Pre-Institution The PTAB divides fees for trials into two parts, paid by petitioners at the time of petition filing: –(1) a request fee (base $9,000 for IPRs); and –(2) a post-institution fee (base $14,000 for IPRs). If trial not instituted (e.g., based on Board decision or settlement), petitioner can request refund of post-institution fees. See, e.g., 37 C.F.R. § 1.26(c) (refunds upon denial of institution of reexamination requests). 17

Settlement Refunds – Post-Institution No clear Office policy on post-institution refunds; However, petitioner may still obtain refund where no substantial trial activity occurred (e.g., if settlement and request filed shortly after institution): –See Cree, Inc. v. Honeywell Int’l, Inc., IPR , Paper 14 (P.T.A.B. Nov. 5, 2015) (post-institution fee refunded where parties settled shortly after trial instituted). 18