Скачать презентацию American Intellectual Property Law Association PTAB Update IPR Скачать презентацию American Intellectual Property Law Association PTAB Update IPR

45b0e75eb879d1eba8dd9bd718815078.ppt

  • Количество слайдов: 20

American Intellectual Property Law Association PTAB Update: IPR & CBM Sponsored by the Japan American Intellectual Property Law Association PTAB Update: IPR & CBM Sponsored by the Japan Patent Office Ron Harris, The Harris Firm AIPLA IP Practice in Japan Committee Tokyo, Japan Firm Logo April 7, 2014 AIPLA

AIA Monthly Filings (as of March 27, 2014) Total IPR CBM DER 1, 128 AIA Monthly Filings (as of March 27, 2014) Total IPR CBM DER 1, 128 983 140 5 Firm Logo 2 AIPLA 2

AIA Progress (as of March 27, 2014) Firm Logo 3 AIPLA 3 AIA Progress (as of March 27, 2014) Firm Logo 3 AIPLA 3

IPR and CBM (as of March 27, 2014) Firm Logo 4 AIPLA 4 IPR and CBM (as of March 27, 2014) Firm Logo 4 AIPLA 4

IPR Stages • Petition (…then after 3 months) – PO Preliminary Response (…no more IPR Stages • Petition (…then after 3 months) – PO Preliminary Response (…no more than 3 months) – Decision on Petition (… 3 months [PO Discovery]) • Response/Motion to Amend (3 months [Petitioner Discovery]) – Petitioner Reply to PO Response/Opposition to Amend (… 1 month [PO Discovery Period]) – Set Hearing (observations/motions to exclude evidence) • Oral Hearing […up to 1 year after granting petition] • Final written decision […~ 2 months] Firm Logo – Appeal to Federal Circuit only 5 AIPLA 5

IPR Petition Requirements (1) • Petition must show: – Patent is eligible for IPR IPR Petition Requirements (1) • Petition must show: – Patent is eligible for IPR review – A “reasonable likelihood” that at least one claim is unpatentable under Section 102 or 103 based on prior art patents or publications • Must comply with relatively strict formal requirements. • Preparation of successful petition requires extensive preparation. Firm Logo 6 AIPLA 6

IPR Petition Requirements (2) • Timing: – Petition must be filed within one year IPR Petition Requirements (2) • Timing: – Petition must be filed within one year of service of a complaint asserting the patent. – IPR not available if patent was previously asserted in DJ action filed by petitioner (or its “privies”) • Petition must identify “real party in interest” – Petitioner and “privies” estopped as to arguments raised or reasonably could have been raised – Fact specific inquiry as to other parties that might be bound by outcome of IPR. Firm Logo 7 AIPLA 7

IPR Petition Requirements (3) • Motivation to combine references for 103 should be explained IPR Petition Requirements (3) • Motivation to combine references for 103 should be explained and supported by evidence • Claim charts: – helpful but supporting argument required. • Expert declarations may: – – (1) explain technology; (2) explain BRC; (3) explain prior art; (4) support motivation to combine Firm Logo 8 AIPLA 8

IPR Petition Requirements (4) • Claim construction: Board applies “broadest reasonable construction” (BRC) – IPR Petition Requirements (4) • Claim construction: Board applies “broadest reasonable construction” (BRC) – Petition should identify proposed construction of terms that affect 102/103 issues – Even if BRC is proposed, advisable to provide technical definitions from dictionaries available at priority date of patent. • Publications should be shown to qualify as prior art • Petitioner must disclose “inconsistent statements” – E. g. , address inconsistent claim construction, Firm Logo inconsistent findings from prior proceedings 9 AIPLA 9

IPR Preliminary Response • The Patent Owner’s Preliminary Response is both optional and limited IPR Preliminary Response • The Patent Owner’s Preliminary Response is both optional and limited – Optional: about 25% of patent owners do not file a preliminary response (A preliminary response might alert the petitioner’s expert before you can depose him/her) • Limited – in scope and content – Principal purpose is to persuade the Board not to institute trial – no trial at all, or that trial should not include certain redundant grounds, claims, or references – Cannot include new testimonial evidence Firm Logo – Cannot amend claims – Should include argument/evidence on claim construction 10 AIPLA 10

IPR Experts/Routine Discovery • Experts from outset in Petition/Prelim Response • Routine discovery – IPR Experts/Routine Discovery • Experts from outset in Petition/Prelim Response • Routine discovery – Production of exhibits cited in a paper or testimony – Cross-examination of opposing declarants by deposition – “Non-cumulative information that is inconsistent with a position advanced during the proceeding” • IPR expert reports should be tailored to PTAB – PTAB will pay more attention to nexus between secondary considerations & claim limitations – PTAB will pay more attention to commensurateness in Firm Logo relation to claim scope 11 AIPLA 11

IPR Additional Discovery To establish “in the interest of justice” (1) More than a IPR Additional Discovery To establish “in the interest of justice” (1) More than a possibility or mere allegation that something useful will be found, (2) Not merely seeking early identification of the other party’s litigation positions, (3) No ability to gather equivalent information otherwise, (4) Easily understandable requests, and (5) Requests are not overly burdensome. See Garmin International Inc. v. Cuozzo Speed Technologies LLC, slip. op. IPR 2012 -00001 Firm Logo 12 AIPLA 12

IPR Response • Single, very best opportunity to defeat the petition – BUT, only IPR Response • Single, very best opportunity to defeat the petition – BUT, only ONE chance to amend (cannot broaden) – PO must prove with (potentially constraining) arguments about (a) prior art and (b) amendment language claim construction/support, that it overcomes all grounds – Presumption: substitution of no more claims than in original patent (ought to prosecute at least 20 in US) • IPR instituted most challenged claims likely die – Proposed claims can be made contingent upon original claims being found unpatentable Firm Logo • Possible to settle with petitioner – if done before filing a response, likely to terminate IPR 13 AIPLA 13

IPR Response - Recent Decisions (1) • Idle Free Systems, Inc. v. Bergstrom, Inc. IPR Response - Recent Decisions (1) • Idle Free Systems, Inc. v. Bergstrom, Inc. , IPR 2012 -00027 – Motion to Amend was denied • Bergstrom failed to set forth what one of ordinar skill in the art would have known about features in amended claims • PTAB did not address differences from claims and prior art – General teachings from PTAB: • Presumption that a challenged claim may be replaced by only one substitute claim (one-for-one substitution); PO must specify what claims are being replaced with what substitute claims • Proposed amendments must respond to surviving petition ground of Firm Logo unpatentability • All limitations from original claim must be present or narrowed 14 AIPLA 14

IPR Response - Recent Decisions (2) • See also Nichia Corp. v. Emcore Corp. IPR Response - Recent Decisions (2) • See also Nichia Corp. v. Emcore Corp. , IPR 201200005, and • Microsoft v. Proxyconn, IPR 2012 -00026 – insufficient arguments/evidence prima facie case of patentability made, – failed to: • • construe newly added claim terms, address way the claims are patentable generally over the art, identify closest prior art known, address the level of ordinary skill in the art at time of the invention, Firm Logo • discuss how such a skilled artisan would have viewed the newly recited elements in the claims 15 AIPLA 15

IPR Hearing • Demonstrative Exhibits – “The Board has found that elaborate demonstrative exhibits IPR Hearing • Demonstrative Exhibits – “The Board has found that elaborate demonstrative exhibits are more likely to impede than help an oral argument. The most effective demonstrative exhibits tend to be a handout or binder containing the demonstrative exhibits. ” • Exhibits must be served on opposing counsel 5 business days before the oral argument • Live testimony not likely granted • More like extended appellate hearing than Firm Logo evidentiary proceeding 16 AIPLA 16

CBM Increased Filings Firm Logo 17 AIPLA 17 CBM Increased Filings Firm Logo 17 AIPLA 17

CBM • Any ground available to challenge a claim – Practically any patent having CBM • Any ground available to challenge a claim – Practically any patent having a claim with a financial term such as “buy”, “sell”, is deemed to be a “financial business method” patent; no “technological invention[s]” • More likely than not at least one claim unpatentable – Higher threshold, but most petitions instituted • Similar schedule, discovery, litigation stays as IPR – 1 year after institution – Limited vis-a-vis litigation; mainly written discovery – Like IPR, stays generally granted because less than 2. 5 Firm Logo years through appeal to Federal Circuit 18 AIPLA 18

CBM • Redundancy doctrine (also applied to IPR) – 422 grounds for rejections contrary CBM • Redundancy doctrine (also applied to IPR) – 422 grounds for rejections contrary to regulatory requirements for efficiency • Horizontal – multiple references applied as alternatives – If Ref. X and Ref. Y anticipate, cumulative; thus must differentiate to have both considered • Vertical – base reference covers all features but you needlessly apply a second reference. • See Liberty Mutual, which requires presentation of best art, not both, or where varying claim constructions require both references. – If construction 1, use X Firm Logo – If construction 2, use y 19 AIPLA 19

Thanks for your attention. Questions? Ron C. Harris, Jr. The Harris Firm 922 N Thanks for your attention. Questions? Ron C. Harris, Jr. The Harris Firm 922 N Street, NW, Suite 101 Washington, DC • 20001 T: +1 202 470 0126 F: +1 202 478 2725 Firm Logo 3 -3 -3 Higashiazabu, 3 F Minato-ku, Tokyo 106– 0044 T: +81 3 4455 7215 F: +81 3 6800 6868 www. harrisfirm. net 20 AIPLA 20