Inter Partes Review Part II: Trial

April 3, 2012

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we explore the implications of these rules as they relate to the trial phase of IPR, from the standpoints of both the challenger and the patent owner.

Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
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Webinar Summary

  • NOTE: this is not similar to the district court trial
  • Eligible practitioners – attorneys registered with the PTO (or registered patent agents) or admitted pro hac vice; both lead and back up counsels should be designated
  • Scheduling Order – 7 dates (1 through 5 can be stipulated to; 6-7 can’t be extended)
    • PO’s post-institution response & motion to amend (default 4 months)
    • Petitioner’s reply to PO’s response and opposition to amendment (default 2 months)
    • PO’s reply to petitioner opposition (default 1 month)
    • Petitioner’s motion for observation re cross-examination of reply witness (brining evidence to the attention of PTAB), motion to exclude evidence, request for oral argument (default 2 weeks)
    • PO’s response to observation, opposition to motion to exclude (default 2 weeks)
    • Reply to opposition to motion to exclude (default 1 week)
    • Oral argument (set upon request)
  • Sequential discovery
    • PO may begin discovery as soon as IPR is initiated
    • Limited, probably just depositions of declarants
    • Sequenced process, each party has their own discovery periods
    • For routine discovery – no PTAB authorization needed (production of exhibits, cross of opposing declarants, non-cumulative inconsistent information with either party’s position – either party has a duty to supply this information, point out the portion of the document and explain why it is inconsistent, and failure to produce is sanctionable)
    • Additional discovery – must file a motion, in the “interest of justice” which is very high
    • Compelled testimony, production of documents – third parties, requires PTAB authorization and explanation of relevance, expectation is that PTAB will rarely approve, tight schedule
    • Testimony – direct by affidavit, cross by depositions governed by FRE, objections are waived unless raised during a deposition
      • Recommendation – video tape the deposition!
    • Confidentiality – motion to seal and protective orders (similar to litigation) are available
      • Caveat – if PTAB decision relies on confidential information, the expectation is that it will be made public, so need to file a motion to expunge to maintain confidentiality
      • Assume that if you submit the information, it will highly likely be made public
  • Motions and Conference Calls
    • The expectation is that the process is handled via conference calls
    • Initial Conference Call – one month of initiation, discuss adjustments to the scheduling order, 2 business days prior to call parties identify the motions they intend to file
    • PTAB has to authorize filing a motion (authorization is granted via a conference call), except:
      • Motion to seal and waive the page limit – no authorization needed
      • Rehearing requests, exclude evidence, observation on cross-exam – authorization needed, but granted automatically
  • PO response & amendment
    • Response (default 2 months from institution), getting evidence on record
    • Amendment – only one motion to amend is allowed by right (then, good cause or by parties agreements)
      • Substitute claims – one for one
      • Amendments should express where the spec/drawings contain support
      • Must start from a conference call notification of amendment, must be responsive to grounds
      • Claims can be cancelled later in the proceedings
  • Petitioner reply/opposition
    • 15 pages, narrow down the issue, default 2 months to conduct discovery after PO response and file a reply, limited to arguments raised in PO Response
    • Petitioner may supplement evidence to respond to new issues arising from substitute claims or new declarations
  • PO reply to opposition
    • Generally 1 month from Petitioner’s reply, 15 pages, but no right for petitioner to do sur-reply
    • Last submission of the patent owner
    • But the petitioner is allowed to submit observations on cross-examinations – find evidence rebutting the arguments made by PO in the reply and bring to the attention of the PTAB
  • Oral Hearing
    • Similar to a hearing before the BPAI
    • Not required, the parties would request it, time is set in the scheduling order
    • General order: Petitioner, PO, Petitioner’s rebuttal
    • Can present Powerpoint slides, but there is no live testimony; just a q&a with the judges
    • NOTE: these proceedings are subject to settlements
  • Update on Post Grant Statistics
    • Continued acceleration in quantity of IPR and CBM filings
      • No PGR petitions filed yet
    • IPR / CBM instituted in almost all cases but almost always with (significantly) pared down grounds and/or claims
    • Subject matter of patents is about 70% electrical / computer ; only 8% Bio / Pharma
    • Stays in related district court proceedings
      • Granted ~73% ; Denied ~27%
      • Primary factor in favor of stay: IPR is fast
      • Factors against stay:
        • advanced stage of litigation
        • premature (i.e., wait until IPR institution decision is made)
        • prejudice to patent owner
        • desire to resolve all litigation issues, including those not eligible in IPR

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