The New PTAB: Best Practices Los Angeles Intellectual Property Law Association “Washington in the West” Conference January 29, 2013 Los Angeles, California Jeffrey B. Robertson Administrative Patent Judge Patent Trial and Appeal Board United States Patent & Trademark Office

4/12/20152 Outline of Discussion Topics –Appeal Briefs –Oral Hearings –New Trial Proceedings

What should be the purpose of an appeal brief? Provide an easy roadmap for us to follow, providing key landmarks (facts), that lead to your advocated position –Simplify, if complex; e.g., appeals in inter partes reexaminations are generally complex (appeal records often comprise 1000’s of pages of documents) –Will help the Board decide cases in a timely fashion 4/12/20153

A brief should: Demonstrate reversible error (or lack thereof) on the part of the examiner with –Accuracy (law and facts) –Conciseness –Completeness 4/12/20154

Issues Minimum - identify claims and rejections/decision favorable to patentability being appealed Address all rejections (if a rejection is not being contested or if rejections are argued together, say so) DO NOT include matters outside the Board’s jurisdiction (Finality of a rejection, entry of amendments and/or evidence, SNQ in Inter Partes reexamination) 4/12/20155

Issue Statement Ex. 1 (Minimum) Whether the Examiner erred in rejecting claim 1 under Section 103 as obvious over References A & B? 4/12/20156

Issue Statement Ex. 2 (Better) Whether the Examiner, in rejecting claim 1 under Section 103 as obvious over References A & B, erred in failing to consider evidence that would have taught away from use of the claimed widget? Whether the Examiner, in rejecting claim 1 under obviousness, erred by failing to consider evidence of unexpected results and commercial success? 4/12/20157

Arguments – Ex. (Probably Not Persuasive) Patent Owner submits that the Examiner failed to establish a prima facie case of obviousness because Refs. A & B do not teach or suggest the desirability of using the claimed widget in the claimed apparatus. Therefore, the Board should reverse the Examiner’s rejection of claim 1. 4/12/20158

Arguments – Ex. (More Persuasive) The Examiner made two errors. First, the Examiner overlooked evidence showing that a person of ordinary skill in the art would have been taught away from using the claimed widget in the apparatus. (Explain evidence with citation to record). Second, the Examiner also erred in failing to consider and give proper weight to: (1) evidence of unexpected results (explain evidence with citation to record); and (2) evidence of commercial success that establishes a nexus between the claimed widget and the increased sales (Explain evidence with citation to record). These errors require reversal of the rejection. 4/12/20159

Evidence Relied Upon Should be gathered and submitted early in the prosecution Does it support the argument made? (If not, discuss with the client and supplement ASAP.) Identify when submitted and considered (hunting for documents in a voluminous record can be very time consuming) 4/12/201510

Evidence Relied Upon Un-entered evidence will not be considered Trial documents are NOT automatically part of the record. Evidence appendix – comply with applicable rules. Use specific citations to the record (specific document and page, line numbers). 4/12/201511

Declaration Evidence – Unexpected Results – Over the closest prior art? – Reasonably commensurate in scope with claims? – Is there evidence in the record establishing that the results would not have been expected by one of ordinary skill in the art? 4/12/201512

Declaration Evidence – Commercial Success –Nexus between the asserted difference and the commercial success (mere sales figures may not be enough)? –Comparative sales figures of devices with and without claimed feature would be especially helpful, all other factors held relatively constant. 4/12/201513

Do’s Be courteous to the Examiner, opposing party (if applicable), and Board personnel Consult and study the statutes and rules – e.g., appealable versus petitionable (e.g., entry of amendments/evidence) Continually update copending civil litigation, including any (in)validity or unenforceability rulings 4/12/201514

Do’s Group claims subject to the same ground of rejection to highlight strongest arguments. Clearly indicate which claims are being separately argued. 4/12/201515

Do’s Claim Construction – Specification and drawings have primacy over other sources (so discuss by reference to specification and drawings) Claim construction of key terms MPF limitations – (1) define function; and (2) identify corresponding structures by specific reference to the patent (figures, column and line numbers). See In re Aoyama, 656 F.3d 1293 (Fed. Cir. 2011). 4/12/201516

Do’s In an obviousness rejection, clearly address the examiner’s proposed combination Support the arguments with facts in the record (specific citations required) Include only the best arguments (weak arguments dilute the strength of the best arguments) Address/explain potential weaknesses in your case 4/12/201517

Don’ts Don’t disperse arguments relating to the same or similar issue throughout the brief Don’t merely recite claim language and state that the prior art does not disclose the claim element(s) without explanation Don’t make arguments that have no bearing or are not supported by the facts Arguments that are conclusory and rely on “catch phrases” e.g., “teaching away” and “analogous art” 4/12/201518

Don’ts Don’t be longwinded or repetitive (goal is to make it easy for the judges to rule in your favor, not more difficult) Don’t incorporate by reference arguments made in other papers Delete mere attorney arguments (not supported by specific citations to facts and evidence timely presented/considered below) 4/12/201519

Don’ts Don’t argue petitionable matters (finality of a rejection, entry of amendments, objections to drawings, etc.) Don’t file a reply brief to simply repeat arguments in the appeal brief (respond to Examiner’s Answer) Not advisable to raise new arguments in a reply brief Don’t use a request for rehearing to make new arguments-requests for rehearing limited to points that are “misapprehended or overlooked” 4/12/201520

4/12/ ORAL HEARING- IS IT NEEDED? 37 CFR §41.47(a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.

4/12/ IS IT NEEDED? Appellants or Respondents (Inter Partes Reexam) may be better served by relying on their briefs Cross appeals (inter partes reexam) by Third Party Requesters or Patent Owners may not need oral arguments Attending the hearing may provide as much feedback as arguing

4/12/ THINGS TO CONSIDER Limited Time –In ex parte appeals, limited to 20 minutes –In inter partes reexam, each party is limited to 30 minutes, which usually includes questions from the panel Limited to Arguments Previously Raised –Judges often inquire about where a particular argument can be found in the brief –Exceptions in certain circumstances See 37 CFR §41.73(e)(2) – recent relevant decision

4/12/ THINGS TO CONSIDER Open to the Public –Unless a petition under 37 CFR §41.3 has been granted, based on “sufficient reasons,” everyone gets to come Visual Aids –Must already be in the record or they will not be considered –Judges have the electronic file in front of them –Must make a request beforehand (AV)

4/12/ THINGS TO CONSIDER In person, or via telecommunications –The Board has the capability to hear cases telephonically or through video conference Structure of oral arguments –Not every issue in a brief may be covered in the time allotted –Issues that are more nuanced should be emphasized –Arguments that require visualization may be best served through oral hearings

4/12/ Do’s Be on time –multiple cases are heard on same day Be courteous to the opposing party and Board personnel (& the Examiner, potentially) Study and consult the statutes and rules –appealable versus petitionable, for example Be knowledgeable of the record and where the sources of arguments originate

4/12/ Do’s Presume that the panel has spent considerable time studying the issues and facts in the case, and in many instances, may have already formed some initial impressions about the issues Expect questions you might not have considered –“What’s your best argument?” –“What if we remand this case?” –“Hypothetically...” –“How can we provide the relief you seek?”

4/12/ Don’ts Don’t read from a script –Generally a waste of time because rarely, if ever, does it address the questions that the judges have on their minds Don’t ignore or sidestep questions from the bench –Questions often indicate concerns the judge may have in ruling in your favor –If you don’t know, or don’t have an answer, you should so state

4/12/ Don’ts Don’t request a change in hearing date or time unless exceptional circumstances (“convincing reasons”) Don’t expect to rely on oral testimony –One party argues (but can have multiple advocates) –Inventors and experts remain sidelined (unless pro se advocate)

Trial Rules Inter Partes Review §§ – Post-Grant Review §§ – Covered Business Method Patent Review §§ – Derivation Proceeding Proposed §§ – Umbrella Trial Rules §§ 42.1 –

Trial Structure Same basic structure for all the proceedings Reduction of burdens on the parties via: –Streamlining and converging issues for decision; –Use of page limits and electronic filing; –Use of conference calls; and –Institution of a trial on a claim-by-claim, ground-by-ground basis 31

Trial Proceedings 32 PO = Patent Owner

Who may practice Practice Before the Board in the Trial Proceedings The lead counsel must be a registered practitioner. The Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to the Office’s Code of Professional Responsibility and any other conditions as the Board may impose. § 42.10(c). –E.g., counsel is an experienced litigation attorney and has a familiarity with subject matter at issue. 33

Pro hac vice Timing: A motion may be filed after 21 days after service of the petition An opposition may be filed no later than one week after the filing of the motion for pro hac vice. Content of Motion: A motion for pro hac vice admission must have: A statement of facts showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding; and A declaration of the individual seeking to appear attesting to: –E.g., a Bar membership in good standing, no suspensions or disbarment, and no sanctions or contempt citations. (IPR , Paper 6.) Examples: CBM , Decision denying a motion, Paper 21; CBM , Decision granting a motion, Paper 13.

Inter Partes Review: Petition Requirements Fee Real parties in interest Claims challenged and grounds Claim construction and show how claim is unpatentable Evidence Certify not estopped 35

Examples of Defects in Petitions Improper claim charts (IPR ) –The element by element showing may be provided in a claim chart, which is permitted to be written with single spacing. –But placing arguments and claim construction in a claim chart to circumvent the double spacing requirement is not permitted. Redundant grounds (CBM ) –Alternative grounds may be presented if an actual need for presenting alternatives exists and is adequately explained. –References should be cited in support of the expert’s opinion because different grounds based separately on expert opinion and on references creates redundancy and inefficiency. Uploading wrong documents (IPR ) –The petition may not be accorded the original filing date.

Examples of Discovery Orders Requests for Additional Discovery: Specific documents with a sufficient showing of relevance – granted Specific class of documents with minimal relevance – the Board suggested that the parties work together to identify particular documents and sufficient relevance General class of documents – denied without prejudice See CBM , Paper 24.

Stays of Concurrent Proceedings Staying concurrent reexamination that involves the same patent to reduce duplicate efforts and minimize inconsistent results (IPR ) Denying request that the Board take jurisdiction over, or suspend, continuing applications of the involved patent because these applications are not “involved applications” as defined in § 42.3(a) (IPR )

Protective Orders The parties are encouraged to agree on the entry of a stipulated protective order (CBM ) –Absent such agreement, the default standing protective order will be automatically entered –Any modifications to the default standing protective order should be identified The protective order take effect upon the filing of a Motion to Seal by a party and remain in place until lifted or modified by the Board The Board has the authority to enforce the terms of the Protective Order, to provide remedies for its breach, and to impose sanctions

Lessons Learned Better to provide detailed analysis for limited number of challenges than identify large number of challenges for which little analysis is provided Better to request specific, focused discovery with showing of relevance than to request broad, open ended discovery. Remember to seek authorization to file motions.

Thank you! 4/12/201541