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  • 1.0 Law & Legal CLE Credit – A/V #1044509 Recording Date – March 2, 2017 Recording Availability – August 4, 2017

    Meeting Location Date Time Topic

    King County Bar Association 1200 Fifth Avenue - Suite 700

    Seattle, WA

    Thursday, March 2, 2017

    12:00 PM to 1:15 PM

    Challenging Patentability at the PTO

    AGENDA 12:00 PM Introductions/Lunch 12:10 PM Presentation: ‘Challenging Patentability at the PTO’, by Candice Claire Decaire,

    Kilpatrick Townsend and Stockton • Means by which to challenge patentability at the USPTO, focusing on challenging

    issued claims through post grant proceedings (Inter Partes Review, Covered Business Method patent review, and Post Grant Review).

    • Pros and cons of challenging patentability through Third Party Submissions during prosecution of a patent application.

    • Procedural basics, special strategic issues, and practical considerations, from the point of view of an entity seeking to assure its freedom to operate by challenging potentially problematic patent claims.

    1:15 PM Evaluations & Adjourn

    SPEAKER BIOGRAPHY: Candice Claire Decaire, Kilpatrick Townsend and Stockton - Candice is a partner in the Seattle office of Kilpatrick Townsend and Stockton, where she practices intellectual property law with a special focus on intellectual property strategy, patent law, and trade secret protection. She works with clients to build and defend strong intellectual property portfolios and licensing programs. Her practice includes counseling and representation in patent litigation, arbitration, ITC investigations, and USPTO post grant proceedings concerning diverse technologies such as computer hardware and software, biologics, pharmaceuticals, mechanical devices, and medical devices.

  • HOW DO I EARN CREDIT FOR SELF-STUDY

    OR AUDIO/VISUAL (A/V) COURSES?

    For pre-recorded A/V (self-study) programs, although the sponsor should apply for accreditation, lawyers need to report the credits earned for taking the course.

    To add an approved course to your roster, follow the procedures below:

     Go to the "mywsba" website at www.mywsba.org/.  Log in.  Click on the "Access MCLE" link in the "MCLE Info" box on your home profile

    page.  Click on "Add Activity." Search to find the approved course in our system. (See

    search suggestions on the screen.)

    Adding a Recorded Course Select Recorded Course from the Add New Activity screen. This will prompt you to search for the activity in case the activity has already been accredited in the MCLE system. You can search by Activity ID or by specific Activity Details. For the Activity Details search, you can use keywords for the title, sponsor name and date. After entering your search criteria and selecting Search at the bottom of the screen, a list of possible activities will be provided. You can select the correct one by clicking the Activity ID. This will take you to the specific activity. Entered the date(s) on which you began and ending viewing this recorded activity. Then claim the correct credits for which you attended this activity in the Credits Claimed fields and click the Submit button at the bottom of the page. You will receive a confirmation message at the top of your screen stating, “The activity has been added to your roster.

    http://www.mywsba.org/

  • © 2017 Kilpatrick TownsendCandice Decaire March 2, 2017

    Post Grant Proceedings in the USPTO Overview, Selected Issues, and Traps for the Unwary Presented to

  • • Provided by AIA • Any party (some timing constraints) • Challenge validity of patent claims

    – Inter Partes Review (IPR) – Covered Business Method (CBM) – Post Grant Review (PGR)

    • Expedited (~18 months) • Less expensive than litigation

    PTO Post-Grant Proceedings (Patent):

  • PTO Post-Grant Basics

  • IPR, CBM, PGR Basics: Timeline

  • Timing Bases

    I P R

    • Within 1 year of service of a complaint; and

    • More than 9 months after issuance for patents filed on or after 3/16/13

    • § 102/103 Only Patents and Printed Publications

    C B M

    • Once sued or charged with infringement; and

    • More than 9 months after issuance for patents filed on or after 3/16/13

    • § 101 Subject Matter Eligibility • § 112 Written Description • § 102/103 Patents and Printed

    Publications

    P G R

    • Effective filing date of March 16, 2013 or after

    • Within 9 months of issuance

    Post Grant Challenges Overview

  • Standard Estoppel

    I P R

    • Reasonable likelihood that at least 1 claim is unpatentable (50/50)

    • USPTO, District Court, & ITC • Raised or reasonably could

    have been raised during the proceeding

    • Estoppel attaches with final written decision

    • Issue preclusion in PTO attaches with termination of appeal rights

    C B M

    • More likely than not that at least 1 claim is unpatentable (>50%); or

    • Novel or open legal question

    • USPTO • Raised or reasonably could

    have been raised during the proceeding

    • District Court & ITC • Actually raised

    • Estoppel attaches with final written decision

    • Issue preclusion in PTO attaches with termination of appeal rights

    P G R

    Post Grant Challenges Overview

  • Discovery Litigation Stay

    I P R

    • Depositions of declarants and as necessary in interest of justice

    • Not guaranteed for pending cases but often granted

    • For later actions for patent invalidity filed by petitioner

    C B M

    • Evidence directly related to factual assertions by either party

    • Not guaranteed for pending cases but often granted

    • Immediate interlocutory appeal from denial of stay (will delay litigation)

    P G R

    Post Grant Challenges Overview

  • Comparison to Litigation:

  • • Claim Construction (BRI standard) • Secondary Considerations - Nexus • Estoppel

    Selected issues specific to post-grant proceedings:

  • • Claim Construction (BRI standard) • Secondary Considerations - Nexus • Estoppel

    Selected issues specific to post-grant proceedings:

  • Broadest REASONABLE Interpretation:

    • PPC Broadband, Inc. v. Corning Optical Comms. RF, LLC, 815 F.3d 747 (2016) – PTAB used dictionary in applying BRI – construed “reside around” as “in the immediate vicinity of”

    or “near”

    – Patentee argued this was too broad in light of the claims and specification and should mean “encircle or surround”

    • Reversed: – BRI is not simply broadest definition from dictionary – BRI must be “consistent with the specification” and plain

    meaning

    – BRI ≠ “broadest” interpretation

    – BRI = broadest reasonable interpretation consistent with the specification

  • Prosecution history is relevant:

    • D’Agostino v. MasterCard Int’l Inc., 844 F.3d 945 (2016) – PTAB interpreted “single merchant” so broadly as to

    read on a “chain of stores”

    – Prosecution history had distinguished single merchant from a chain

    • Vacated and remanded: – Interpretation was unreasonable and improper in light

    of prosecution history

    – Prosecution history of an IPR patent should factor into the BRI analysis (especially when consistent with the plain meaning of the claim term)

  • • Claim Construction (BRI standard) • Secondary Considerations - Nexus • Estoppel

    Selected issues specific to post-grant proceedings:

  • Secondary considerations:

    • Secondary considerations of non-obviousness “can be the most probative evidence of non- obviousness in the record, and enables the ... court to avert the trap of hindsight.”

    – Crocs, Inc. v. Int’l Trade Comm’n., 598 F.3d 1294, 1310 (Fed. Cir. 2010)

    – Commercial success – Industry Praise – Long felt but unsolved needs – Failure of others

  • Nexus requirement:

    • “The burden of proof as to . . . nexus resides with the

    patent [owner].”

    – Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)

    • “In meeting its burden of proof, the patent [owner] in the first instance bears the burden of coming forward with evidence sufficient to constitute a prima facie case of the requisite nexus.”

  • Presumption of nexus in IPR?

    PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016)

  • • Claim Construction (BRI standard) • Secondary Considerations - Nexus • Estoppel

    Selected issues specific to post-grant proceedings:

  • • After final written decision • Petitioner is precluded from raising invalidity

    arguments (in District Court, in ITC, in proceedings before the PTO) that were raised or reasonably could have been raised in the IPR – 35 U.S.C. §315(e)

    • Initially thought to be sweeping preclusion • But seems to be narrowing -

    Estoppel (IPR)

  • Grounds raised duri

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