PTAB Bootcamp: Nuts and Bolts of IPRs, PGRs, and CBMs

Agenda Overview of a PTAB Proceeding Discuss of the “nuts and bolts” of an IPR proceeding using papers from Garmin Int., Inc. et al. v. Cuozzo Speed Tech. LLC, IPR2012-00001 Observe a mock oral argument

Overview of PTAB Proceedings

“Preliminary Proceeding” Phase Also referred to as the “preliminary proceeding” Begins with the filing of a petition and ends with an institution decision A few rules depend on whether you are in the petition phase or trial phase (e.g., how long you have to object to evidence).

“Trial” Phase Begins with Institution Decision and ends with Final Written Decision Statutorily required to be completed within one year of institution, except that the time may be extended up to six months for good cause

Petition Easily the most important document filed by the petitioner during the proceeding. Must itself carry the threshold burden that the petitioner will prevail with respect to at least one challenged claim IPR: Reasonable likelihood of success (50/50) PGR/CBM: More likely than not (>50%)

Petition “Must Haves” Every petition must identify the petitioner, real-parties-in-interest, counsel, etc. CBM require additional analysis regarding why patent is a CBM and Petitioner has been charged with infringement Must include a statement of the precise relief requested Must include a full statement of the reasons for the relief requested (i.e., detailed explanation of why the claims are invalid) IPR/PGR/CBM – prior art analysis (102/103) PGR/CBM – analysis of additional grounds (112,101) Must set forth any claim constructions needed to interpret the claims

Petitions The petition must be size 14, font TNR, and double spaced. Claim charts, however, can be single spaced. Petitions have strict word limits (as oppose to page limits): IPR: 14,000 words PGR/CBM: 18,700 words No incorporation of arguments by reference E.g., cannot meet threshold burdens with arguments only incorporated by reference from expert declaration. While the PTAB will authorize corrected petitions to correct non-substantive issues, you only get one chance to submit a winning petition

Cuozzo Case Study – Petition Module Review IPR petition for issues related to: Petition paper requirements (e.g., word count, font, etc.). Availability of IPR, including statutory bars and standing Availability of prior art Claim construction Issues properly setting forth proposed grounds, e.g., anticipatory and obviousness positions Discuss petition “best practices” with roundtable Consult IPR Petition Module Overview Sheet for relevant statutes, regulations, and case law

Patent Owner Preliminary Response If filed, due within three months of a Notice of Filing Date Accorded (not petition filing date) Rules recently amended to allow Patent Owners to submit new testimonial evidence with its Preliminary Response The Board will find any dispute of material fact in favor of Petitioner for purposes of its institution decision Same word limits (equal to amount given for petition) IPR: 14,000 words PGR/CMB: 18,700 words

Patent Owner Preliminary Response Opportunity to make threshold arguments against institution, such as: Bars against petitioner (e.g., outside one year window (IPR), Patent Owner not sued or charged with infringement (CBM), and estoppel) Board should use discretion to deny (e.g., arguments already considered by office, redundant grounds, etc.) Incomplete petition Failure to meet petition content requirements (e.g., claim constructions) Failure to meet institution thresholds The Board has shown it is willing to hear arguments that the prior art lacks a material element of the claims, teaches away, or doesn’t actually qualify as prior art.

Cuozzo Case Study - Institution Decision Module Review annotated Institution Decision Discuss with roundtable: As patent owner, what arguments would you have raised in a patent owner preliminary response? Would you have submitted testimonial evidence with the patent owner preliminary response? Why or why not? What arguments would you have saved for a patent owner response?

Institution Decision PTAB will issue an Institution Decision within three months of the Patent Owner Preliminary Response Required by statute! Sets out which claims are instituted under what grounds offered by the petition Normally accompanied by a Scheduling Order for the “trial phase” Sets the one year clock to issue a Final Written Decision

Institution Decision Claim construction is important The Board likes to raise and decide petitions based on claim construction Board may adopt petitioner's claim construction because patent owner did not challenge it Board may also construe terms on its own When no constructions are proposed, or even when constructions are proposed… Request for Reconsideration an option, but very rarely successful Institution Decisions are “final and nonappealable”

Institution Decision The Institution Decision begins Patent Owner Discovery Period This typically includes cross examination of Petitioner’s expert Discovery is limited to three types: Routine Mandatory Additional

Routine Discovery Three general categories: A party must serve any exhibit cited in a paper or in testimony, unless it has already been served or the parties agree otherwise A party must serve relevant information that is inconsistent with a position advanced by the party concurrent with the filing of the documents that include the inconsistency And a party may cross-examine the other party's declarants

"Mandatory" Initial Disclosures Parties may agree to mandatory discovery that requires initial disclosures, but this rarely happens There are two options available for initial disclosures Option 1 is modeled after Rule 26(a) of the Federal Rules of Civil Procedure Option 2 is more extensive and generally requires the petitioner to identify persons and information relating to the basis of any alleged obviousness, secondary considerations, and, if a challenge is based on alleged prior nonpublished public disclosure, information relating to it

Additional Discovery Additional discovery is discovery that goes beyond routine discovery (or mandatory discovery, if applicable) For example, the production of documents referred to during cross-examination may be additional discovery Parties may agree to additional discovery between themselves, and when they do not agree, a party may move for additional discovery Opposed requests for additional discovery require a joint conference call with the Board to discuss the request

Additional Discovery A party seeking additional discovery must show that the additional discovery is in the interests of justice (for IPRs) or for good cause in the proceedings (for PGRs/CBMs) These two standards are closely related but, on balance, the interests-of-justice standard is slightly higher than the good-cause standard In addition, additional discovery in PGR proceedings is limited to evidence directly related to factual assertions advanced by either party

Cuozzo Case Study – Additional Discovery Module Consult Discovery Module Overview Sheet for overview of relevant statutes, regulations, and case law Discuss annotated Patent Owner’s Motion for Discovery Authorization Review the Board’s Decision on Motion for Additional Discovery

Patent Owner Response Patent Owner Response typically due within 2-3 months. Due date set by Scheduling Order Patent Owner is permitted to fully address the merits of the challenger’s petition on the instituted grounds The Patent Owner can present new evidence to more substantively address the instituted grounds Patent Owner can submit expert declaration(s)

Motion to Amend Claims due with the Patent Owner Response The Motion to Amend is optional, but the Patent Owner Response is not A single Motion to Amend Granted as of right, additional motions require a showing of "good cause“ Very rarely successful

Petitioner Reply to Patent Owner Response Limited to 25 pages Petitioner may submit a new evidence/expert declaration (triggers a new Patent Owner Discovery period) Scope limited to responding to Patent Owner Response Reply may explain petition arguments in responding to Patent Owner Response, but no new arguments are permitted

Cuozzo Case Study – Petitioner Reply Module Review annotated Petitioner’s Reply for issues including presentation of new arguments or evidence Consult Petitioner Reply Overview Sheet for overview of relevant statutes, regulations, and case law

Petitioner Opposition to Motion to Amend Limited to 25 pages Petitioner may argue reasons the claim amendments do not distinguish over all known prior art Petitioner may submit a new evidence/expert declaration (triggers a new Patent Owner Discovery period)

Patent Owner Reply ISO Motion to Amend Unless the PTAB grants supplemental briefing on some issue, the Patent Owner Reply to Petitioner Opposition is the final brief filed in a proceeding Patent Owner may submit a new evidence/expert declaration (triggers a new Petitioner discovery period) Scope limited to responding to Petitioner Opposition

Oral Hearing The parties may request oral arguments No live testimony unless requested by the Board The parties may file demonstrative exhibits (depending on panel), but these exhibits cannot include material outside the record The Board normally issues a Final Written Decision a month or two later

Final Written Decision Required within one year of institution Decides all instituted grounds If the claims are deemed unpatentable, the Board will order them “cancelled” (as opposed to invalid) Issuing the Final Written Decision creates estoppel for issues raised (or reasonably could have been raised for IPRs and PGRs)

Post-Decision Rehearing Any party dissatisfied with the Final Written Decision may file a request for reconsideration, but these are rarely granted Appeal Parties may appeal the PTAB’s Final Written Decision to the United States Court of Appeals for the Federal Circuit. Notice of Appeal is due within 63 days unless tolled by a timely filed Request for Rehearing

PTAB Practice and Procedure Resources PTAB Website: http://www.uspto.gov/ip/boards/bpai/index.jsp PTAB Rules and Trial Practice Guide: http://www.uspto.gov/ip/boards/bpai/board_trial_rules_and_practice_guide.jsp Fees: http://www.uspto.gov/about/offices/cfo/finance/fees.jsp “Quick Fixes” Rule Package https://www.gpo.gov/fdsys/pkg/FR-2015-05-19/pdf/2015-12117.pdf New Rules Package https://www.gpo.gov/fdsys/pkg/FR-2016-04-01/pdf/2016-07381.pdf