© 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Comments on Proposed Rules for Compact Prosecution U.S. Patent and Trademark Office – June 1, 2011 Public Meeting Robert Greene Sterne, S TERNE K ESSLER G OLDSTEIN & F OX June 1, 2011

© 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Proposed Compact Prosecution 2 A5. Requester’s Declaration and Other Evidence Will Be Mainly Limited to the Request A6. Patent Owner’s Amendments and Evidence Will be Mainly Limited to the First Action Response A7. Claim Amendments Will Not Be Entered Unless Accompanied by a Statement Explaining How the Proposed New Claim Language Renders the Claims Patentable in Light of an SNQ Streamlined Patent Reexamination Proceedings, 76 Fed. Reg , (April 25, 2011)

© 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Impact of Restrictions on Requesters – A5. A5. Restrictions on the Requester’s ability to admit evidence –Generally conforms with current practice –Properly restricts limited statutory role of Requesters to once commenting on Patent Owner responses and corresponding Office action –Any formal rule or procedure should recognize the Requester’s need to introduce rebuttal evidence 3

© 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Impact of Restrictions on Patent Owners – A6. A6. Restrictions on the Patent Owner’s ability to admit evidence and amend –Severe negative impact on Patent Owner, especially with concurrent litigation –Unrealistic to force amendments in advance of knowing whether substantive arguments or Rule 131 declarations will be persuasive –Particularly onerous where litigation is at an advanced stage (i.e., past Markman) or where significant past damages are in play –Recognized problem in past reexam rulemakings; potentially addressed if RCR’s are formalized 4

© 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Impact on Restrictions on Amendments – A7. A7. Restrictions scope of amendments –Seems like a reasonable restriction given In re Freeman –But, further cuts against unfettered application of broadest reasonable interpretation –There is a difference in the statutory language between inter partes and ex parte reexamination that would suggest different treatment—ex parte is narrower –Serves to ensure reexam is not converted into a de facto reissue 5

© 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Counter Proposal for IPR The CRU needs the opportunity to ask questions of the participants. Patent Owners need more than one opportunity to overcome the rejections Requesters need corresponding opportunities to rebut. Request for continued reexamination? Different tracks for reexam? 6

© 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Disclaimers Authors –Robert Greene Sterne –Michael Messinger –Lori Gordon –Jon Wright –Jason Eisenberg –Rich Coller This presentation is intended to foster dialog on the proposed rule topics. It does not necessarily reflect the views of the authors, their clients or their firm. 7