connecticut intellectual property law association
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Presentation to the . Connecticut Intellectual Property Law Association. Scott E. Kamholz, M.D., Ph.D. Administrative Patent Judge Patent Trial and Appeal Board September 25, 2013. State of the Board. Judges and Offices (as of September 25, 2013). 177 Administrative Patent Judges - PowerPoint PPT PresentationTRANSCRIPT
Connecticut Intellectual Property Law Association
Scott E. Kamholz, M.D., Ph.D.Administrative Patent JudgePatent Trial and Appeal BoardSeptember 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)
AppealsStatistics
Board Backlog
24,500
25,000
25,500
26,000
26,500
27,000
27,500
26,644
26,78626,82826,82526,807
26,664
26,85426,86926,896
26,618
26,80226,802
26,476
26,014
26,34526,452
26,50826,431
26,35326,42626,432
26,379
26,12926,24226,243
26,141
25,976
26,18126,248
26,315
26,07626,05826,04126,05126,046
25,86625,943
25,803
25,554
Decisions by Type: FY2013
55%
12%
30%
0% 1% 2%
Decisions
AffirmedAffirmed-in-PartReversedPanel RemandAdministrative RemandDismissed
AppealsDevelopments
Rules for Appeals
• New rules effective January 23, 2012 based on Notice of Appeal date.
• 2004 rules apply to cases in which Notice of Appeal was filed before January 23, 2012.
• Examples and FAQ’s at www.uspto.gov/ip/boards/bpai/procedures/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 www.uspto.gov/ip/boards/bpai/decisions/prec/.
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 www.uspto.gov/ip/boards/bpai/decisions/inform/
AIA Trial ProceedingsStatistics
AIA Progress (as of September 18, 2013)
• Number of AIA Petitions
• AIA Petition Technology Breakdown
Total IPR CBM PGR DER550 493 56 0 1
Technology
No. of Petitions
Percentage
Electrical/Computer
377 68.5%
Mechanical 74 13.5%Chemical 52 9.5%Bio/Pharma 42 7.6%Design 5 0.9%
AIA Progress (as of September 12, 2013)
• Patent Owner Preliminary Responses
• AIA Petition Dispositions
Filed WaivedIPR 218 57CBM 25 2
Instituted Trials Denials Joinder
s Total
IPR 150 23 7 180*CBM 12 3 15
* 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
IPR 38 1CBM 3 1
16
Top Patent Litigation Venues
• Eastern District of Texas 1266• 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, 2013
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 risk Average, 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
20
Post Grant Resources
• Information concerning the Board and specific trial procedures may be found at:www.uspto.gov/ptab
• General information concerning implementation of the Leahy-Smith America Invents Act, including post grant reviews, may be found at:www.uspto.gov/aia_implementation
Representative Decisions
• See www.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: § 42.63• 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: § 42.104(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 atwww.uspto.gov/ip/boards/bpai/prps.jsp).
• 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. § 42.100(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. 42.65(a); see IPR2013-00022, 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 CBM2012-00003, 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 IPR2012-00001, 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. KamholzAdministrative Patent JudgePatent Trial and Appeal Board