© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Post Grant Proceedings Before the USPTO and Litigation Strategies Under the AIA Panelists:David Beck Phillip Johnson Gary Griswold Steven Weisburd #

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Problems with determining strategies today UPSTO Rules on Post Grant Proceedings are not finalized Many issues (e.g., the scope of the estoppels) have not been addressed by the courts There is no directly applicable experience before the Patent Trial and Appeal Board While we can identify issues, no one can now provide meaningful recommendations as to whether to file a USPTO post grant proceeding rather than litigation

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Litigation Strategies: Effect of AIA on litigations filed prior to Sept. 16, 2011 False Marking –No longer qui tam actions –Actions for actual damages by competitors can continue Tax Strategies –Not patentable unless method or apparatus for filing tax returns

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Litigation Strategies: Affect of AIA on litigations filed on or after Sept. 16, 2011 Best Mode Joinder provisions –What is the “same product”? Why have trolls continued to file actions against large number of defendants? –Will cases remain joined for discovery purposes?

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Motions to Stay Over the last several years, courts have stayed about 60% of the cases when a motion to stay is filed early in the case. This percentage goes down to as low as 40% after 3 ½ years. Will that number go up or down under the AIA? –Automatic stays PGR IPR –Standards for Covered Business Methods

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Supplemental Examination

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Supplemental Examination Only the patent owner can file The purpose of this new procedure is to allow the patent owner to have the USPTO “consider, reconsider, or correct information believed to be relevant to the patent” –What is information? –Under what circumstances might a patent owner want to use this procedure? –Inequitable conduct Present “but for” standard Only effects patentability of otherwise valid claims

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Post Grant and Inter Partes Review

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. What unresolved issues are important to making Post Grant & IPR Proceedings Useful? Scope of required initial disclosures and permitted evidentiary supplementation Evidence permitted in preliminary response Construction of claims (BRCC) Scope and efficiency of discovery Extent and nature of motion practice Nature and effect of claim amendments Application of the estoppel provisions Manner in which Administrative Judges run the proceedings

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Post Grant Review Only applies to patents subject to the first to file rule –Not likely relevant for three or more years Must be filed within 9 months of patent issuance but before a DJ action Can challenge patent on any grounds Estoppel: any issue raised or that reasonably could have been raised

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Post Grant Review Will allow limited discovery –USPTO Rules not finalized –Present rules include mandatory and optional discovery Mandatory: –Submit supportive documents and testimony with Petition and various oppositions –Submit any noncumulative information that is inconsistent with a position advanced by either party “as soon as practical” Optional –Discovery in the interest of justice

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Some potential pros/cons of PGR vs. litigation Cost Speed Presumption of validity Highly focused vs. open issues Full vs. limited discovery Ability to amend claims in PGR Lay jury vs. technical/patent expert Estoppel (both for PGR and litigation) –One bite at apple vs. two

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Inter Partes Review

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Inter Partes Review When to file: –9 months or more after patent is granted/reissued –if a Post-Grant Review has been filed, the date of termination of a Post- Grant Review proceeding –but before any DJ action by the Requester challenging validity of the claims at issue Counterclaims for invalidity do not prevent a party from petitioning for IPR –Within one year after the petitioner is served with a complaint for infringement of the patent

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Inter Partes Review Grounds: validity under §§102 and 103 based upon prior art patents and publications Amendments: can petition to make one set of amendments –To issued claims –To add a “reasonable” number of new claims (presumption is that one new claim will be needed for each cancelled challenged claim) Estoppel: issues that were or reasonably could have been raised

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Inter Partes Review Discovery – same issues as PGR

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. IPR vs. Inter Partes Reexam Inter Partes Review Expedited Limited discovery Estoppel: any issue that was or reasonably could have been raised Before an Administrative Judge You are before the Board in the first instance Inter Partes Reexamination Not expedited No discovery Estoppel: any issue that was or could have been raised Before an examiner First the examiner makes a decision, then you go before Board

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Some potential pros/cons of IPR vs. litigation Cost Speed Presumption of validity Highly focused vs. open issues Full vs. limited discovery Ability to amend claims in IPR Lay jury vs. technical/patent expert Estoppel (both for PGR and litigation) –One bite at apple vs. two

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Covered Business Methods

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Covered Business Methods Only a transitional procedure: –Takes effect 1 year after enactment and expires 8 years thereafter Financial Industry Patents: –A patent that claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of financial products or services –Does not include patents for “technological inventions” Grounds for invalidity: –Any ground

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Covered Business Methods Who may file: –Petitioner must be the real party in interest that has been sued or charged with infringement under the patent Procedures: –Proceedings are same as Post-Grant Review and are conducted by the Patent Trial and Appeal Board Estoppel: –Petitioner cannot raise issues in a civil action that were raised in the proceeding once a final written decision of the Patent Trial and Appeal Board is issued

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Covered Business Methods Stays: –When either party requests a stay in a civil action, the court shall decide on whether or not to grant the stay based upon the following factors: Whether a stay will simplify the issues in question and streamline the trial Whether discovery is complete and whether a trial date has been set Whether a stay would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party Whether a stay will reduce the burden of litigation on the parties and on the court –A party may take an interlocutory appeal to the Federal Circuit to “ensure consistent application of established precedent” –The review on appeal is de novo

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. QUESTIONS