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Joinder and CBM Eligibility

February 12, 2014

In this webinar, the co-chairs of Fish & Richardson’s post-grant practice considered two topics of interest to practitioners: joinder of multiple proceedings and CBM eligibility. The discussion included a review of significant PTAB rulings, including the PTAB’s recently issued final written decision in Liberty Mutual v. Progressive Casualty, as well as practice tips and pointers.

Speakers:
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Andrew Patrick, Associate, Washington, DC
Download Presentation Slides

Webinar Summary

  • Joinder
    • 3rd Party can file a motion to join a post grant proceeding up to 1 month after institution decision
      • Beware:  File Joinder Motions Early!
        • Likelihood of joinder being granted post-institution are far lower than pre-institution
        • Board’s over-arching concern is “to promote efficient determination” (e.g., to keep post grant proceeding on original schedule)
      • A primary use of the joinder mechanism is by would-be IPR petitioners who are time-barred from filing their own IPR petition (i.e., they were served an infringement complaint more than 1 year prior)
    • Joinder factors that Board Looks at in deciding joinder motion:
      • Are new grounds being asserted by joining party?
      • What impact would joinder have on trial schedule?
      • How, if at all, would briefing and discovery be simplified?
    • The impact on schedule appears to be the main decision driver
      • Strive to get joinder motion filed at least 3 months prior to institution decision
      • Joinder more likely to be granted if party seeking to join presents workable plan that minimizes impact on schedule
        • As a practical matter, party seeking joinder may have to take a “back seat” to petitioner in terms of driving the trial
    • If you are infringement defendant and have a timely IPR petition pending, then patent owner asserts new claims in litigation after 1 year time bar lapses, consider nevertheless filing a second IPR petition (and motion for joinder) to subject newly asserted claims to IPR.  (It worked in Microsoft v. Proxyconn)
  • CBM Eligibility
    • Advantages of CBM:
      • Estoppel is limited to grounds actually raised
      • Challenges on grounds other than patents and printed publications are allowed (e.g., 101 eligibility, 112 compliance, on sale or public use bar)
    • Only one claim in patent need be eligible for CBM review to make entire patent subject to CBM review
    • PTAB has never seen a patent that it didn’t regard as being eligible for CBM review
      • CBM eligibility factors are applied extremely broadly
        • “Financial in nature” – patent needs no mention of anything financial; only that invention could be used in a commercial context
        • “Non-technological invention” – extensive computerization using conventional technologies is insufficient; a specific claim element must be a novel technological invention
      • Unclear what recourse is available to challenge PTAB’s decision on CBM eligibility
        • Maybe none since decisions whether or not to institute are unappealable
    • In theory, institution of CBM is subject to higher standard (“more likely than not that at least one claim is unpatentable”) relative to IPR (“reasonable likelihood that at least one claim is unpatentable”), but PTAB’s institution decisions (and statistics relating thereto) appear not to reflect this difference.
  • Update on Post Grant Statistics
    • 20 IPR / CBM Final Written Decisions to date
      • Abandon all hope ye [patent owners] who enter here –
        • ALL claims found unpatentable – i.e., NO claim has survived trial in any case
    • Trending toward increasing quantity of IPR and CBM filings
      • No PGR petitions filed yet
    • IPR / CBM instituted in almost cases but almost always with (significantly) pared down grounds and/or claims based on redundancy doctrine
      • The few petitions denied in full tend to assert too many different grounds with conclusory treatment – better to rely on fewer grounds and treat each more thoroughly
      • Treat Petition as “trial brief” with a few finely honed positions, rather than as kitchen-sink listing of invalidity contentions
      • PTAB’s docket is getting heavy – may be seeing more petition denials as a docket control measure
      • Keep proposed grounds straightforward and simple – no compound or alternative rejections proposed as a single ground
    • Stays in related district court proceedings
      • Granted ~70% ; Denied ~30%
        • Many of denials are because petition not yet decided – i.e., premature
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