Connecticut Intellectual Property Law Association Scott E. Kamholz, M.D., Ph.D. Administrative Patent Judge Patent Trial and Appeal Board September 25, 2013 Presentation to the

State of the Board

Judges and Offices (as of September 25, 2013) 177 Administrative Patent Judges –Board has doubled in size in the past two years. –Selection continues from previous job postings. 5 Offices –Washington, DC (Alexandria and Arlington, VA) –Elijah J. McCoy Office (Detroit) –Denver –Dallas –Silicon Valley (Menlo Park)

Types of Proceedings Appeals in patent applications Appeals in ex parte and inter partes reexamination proceedings Inter partes reviews Covered business method reviews Derivations Interferences (Post-grant reviews)

Appeals Statistics

Board Backlog

Decisions by Type: FY2013

Appeals Developments

Rules for Appeals New rules effective January 23, 2012 based on Notice of Appeal date rules apply to cases in which Notice of Appeal was filed before January 23, Examples and FAQ’s at rules/rule.jsp rules/rule.jsp

Precedential Opinion Ex parte Mewherter, 107 U.S.P.Q.2d 1857 (2013) Precedential as to the treatment of the rejection under 35 U.S.C. § 101 for nonstatutory subject matter. This and other precedential decisions are at

Informative Opinions Ex parte Bayer Cropscience, LP (×2) Ex parte Talkowski Ex parte Cadarso Ex parte Smith Ex parte Erol, 107 U.S.P.Q.2d 1963 Ex parte Lakkala These and other informative opinions are at

AIA Trial Proceedings Statistics

AIA Progress (as of September 18, 2013) Number of AIA Petitions AIA Petition Technology Breakdown TotalIPRCBMPGRDER TechnologyNo. of PetitionsPercentage Electrical/ Computer % Mechanical7413.5% Chemical529.5% Bio/Pharma427.6% Design50.9%

AIA Progress (as of September 12, 2013) Patent Owner Preliminary Responses AIA Petition Dispositions FiledWaived IPR21857 CBM252 Instituted Trials DenialsJoindersTotal IPR * CBM * vs. 139 nationally in FY2012

AIA Progress (as of September 18, 2013) AIA Final Dispositions Petitions are being filed at the rate of about 3 per day (as of Sep. 18, 2013). Settlements Final Written Decisions IPR381 CBM31

Top Patent Litigation Venues Eastern District of Texas1266 District of Delaware 995 PTAB 550 Central District of California 514 Northern District of California 260 FY 2012 data used for District Courts PTAB data is for September 16, 2012 to September 18,

AIA: Faster and Cheaper? Time to Trial –Median 2.5 years in district court –18 mos. in PTAB Patent Litigation Cost (per AIPLA 2011 Survey) At riskAverage, all costs, per party < $1M $916,000 $1–25M$2,769,000 > $25M$6,018,000

Expanding Jurisdiction? Sen. Schumer’s Bill S. 866 –CBM’s no longer limited to “a financial product” –CBM’s no longer “provisional” White House Task Force –Supports Schumer bill Goodlatte Discussion Draft No. 2

Who is Paying Attention? Federal Circuit –Is Fresenius v. Baxter International (July 2, 2013) involving reexaminations a precursor? Congress –Rep. Goodlatte’s Patent Discussion Draft –S.866 (Schumer bill) Public –SAP v. Versata Final Hearing and Decision

Post Grant Resources Information concerning the Board and specific trial procedures may be found at: General information concerning implementation of the Leahy-Smith America Invents Act, including post grant reviews, may be found at: 20

Representative Decisions See representative_orders_and_opinions.jspwww.uspto.gov/ip/boards/bpai/ representative_orders_and_opinions.jsp Examples of orders, decisions, and notices at various stages of proceedings

Observations on Trial Practice

Standard Timeline

Petitions: Compliance Circumventing page limit: 37 C.F.R. § 42.6 Exhibit labeling and numbering: § Mandatory notices: § 42.8 –Include in petition; count toward page limit Related proceedings: § 42.8(b)(2) “any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.” Claim charts Claim construction required: § (b)(3)

Petitions: Substance Better to provide detailed analysis for limited number of challenges than identify large number of challenges for which little analysis is provided. Support conclusions with: –Sound, complete legal analysis. –Pinpoint citations to evidentiary record.

Claim Charts Purpose of claim charts is to summarize the evidence, not the argument. Claim charts support narrative analysis; they do not replace it. Use two-column format (see FAQ D13 at Provide pinpoint references to the evidence (see FAQ D12).

Claim Construction Standard: broadest reasonable construction in light of the specification of the patent in which claim appears. 37 C.F.R. § (b). Most cases require more construction than mere restatement of the standard. Justify a proposed construction with evidence. The Board will construe terms even if the parties do not.

Expert Declarations Focused tutorials may help. Provide underlying objective facts to support testimony. Unsupported testimony is entitled to little or no weight. 37 C.F.R (a); see IPR , Paper 43 (denying petition) Avoid merely “expertizing” claim charts and analysis.

Obviousness Challenges Apply the Graham factors. Explain the rationale to combine. Support the rationale to combine with evidence. Differentiate multiple grounds to avoid redundancy denials. See CBM , Paper 7 (denying redundant grounds).

Preliminary Response Patentability is not decided at institution stage. Focus arguments on dispositive issues: –Statutory bar –Reference is not prior art –Prior art lacks a material limitation –Teaching away –Unreasonable claim construction Arguments not raised in preliminary response are not waived.

Additional Discovery Five-factor test articulated in IPR , Garmin v. Cuozzo, Paper 26: 1.More than a possibility and mere allegation? 2.Seeking opponent’s litigation position early? 3.Ability to generate by other means? 4.Instructions clear? 5.Overly burdensome to answer? Documents: more likely to grant specific, relevant, requests than general requests.

Depositions Federal Rules of Evidence apply. Objections to admissibility waived Follow the Testimony Guidelines (Practice Guide Appendix D). –No “speaking” objections or coaching –Instructions not to answer are limited

Joinder Must be a like review proceeding. Requires filing a motion and petition. File within one month of institution. Impact on schedule important.

Thank You Scott E. Kamholz Administrative Patent Judge Patent Trial and Appeal Board