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Trial Practice Before the Patent Trial and Appeal Board

Marc Hubbard
Marc Hubbard

An introduction to the trial procedures at the USPTO Patent Trial and Appeal Board. October 17, 2012. Dallas Bar Association IP Section

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Trial practice before the PTAB in contested proceedings INTELLECTUAL PROPERTY LAW SECTION Marc A . Hubbard DALLAS BAR ASSOCIATION HUBBARD LAW, PLLC October 18, 2012 Dallas, Texas Hubbard ip
Inter partes reviews 鍖led through Oct. 14, 2012 2 Hubbard ip
Covered business method reviews 鍖led through Oct. 15, 2012 3 Hubbard ip
4 Hubbard ip
5 Hubbard ip
Topics Overview of timing of basic trial procedures in context of reviews Overview of motion practice, evidence and discovery Discussion of some key issues 6 Hubbard ip
Rules governing trial procedures at PTAB Part 42, Subpart A, of 37 C.F.R. governs trial in four types of contested proceedings: Inter partes review (IPR) Post grant review (PGR) Transitional covered business method patent review (CBMR) Derivation proceeding Detailed guidance: O鍖ce Patent Trial Practice Guide 7 Hubbard ip
Petition Filed Optional PO 3 months PTAB Contested response < 3 months Proceeding Overview Decision on authorization No Rehearing Yes Decision on rehearing No No appeal / Trial <12 months, unless Try again extended by 6 months Yes Trial Yes Settlement Dismissal* No *Unless board has already Final decision made a decision Motion for rehearing / Appeal to Fed. Cir. 8 Hubbard ip
Petition Standing Must certify that patent/application available for review and demonstrate that statutory requirements for bringing proceeding have met Must certify that petitioner is not barred or estopped Mandatory notices (Real party in interest, related matters, lead and backup counsel, service information) Challenge to one or more claims Evidence All evidence relied upon must be 鍖led with petition (subject to limited opportunities to supplement) Filing fee Must accompany petition; non-refundable 9 Hubbard ip
Challenge For each challenged claim Proposed claim construction Can be su鍖cient to state simply broadest reasonable interpretation, as understood by one of ordinary skill in the art and consistent with the disclosure Board will apply the broadest reasonably interpretation standard If speci鍖c term should have a meaning other than a plain meaning, must identify support in disclosure for it Speci鍖c statutory grounds (則102, 則103 for IPR, PGR and CBM; 則則101 and112 for PGR and CBMR) How claim is unpatentable Must specify exhibit # and speci鍖c portions of evidence to support challenge Claim charts recommended, but count toward page limits (unless attached as evidence from other case) 10 Hubbard ip
Patent owners preliminary response Optional Evidence can be attached, but no testimony can be taken prior to authorization of trial May disclaim one or more claims May waive response early in time period in order to expedite decision by Board on whether to authorize trial 11 Hubbard ip
Types of responses for a patent owner to consider The petitioner is statutorily barred The references are not in fact prior art The prior art lacks a material limitation found in all of the independent claims The prior art teaches or suggests away from a combination The claim interpretation is unreasonable For post-grant review raising 則101 grounds, a brief explanation as to how the challenged claims are directed to a patent-eligible invention 12 Hubbard ip
Institution of trial For IPR Petition must demonstrate a reasonable likelihood that petition would prevail as to at least one of the challenged claims Viewed by PTAB as giving it more discretion (can be 50/50) For PGR/CBMR Petition must demonstrate that it is more likely than not that at least one challenged claim is unpatentable Board will identify claims and speci鍖c grounds on which trial is being authorized 13 Hubbard ip
Trial management Board has broad discretion manage the proceeding as it sees 鍖t, but within con鍖nes of statutory requirements Scheduling order (see model in Trial Guide) sets up stages All relief must be sought through petition or motion Motions may only be entered with Board approval 14 Hubbard ip
Due Dates Set By Scheduling Order (Parties may stipulate to different dates for 1 to 5) Standard 0 Board decides to institute trial and issues scheduling order Schedule for Initial conference call PO Discovery Period IPR/PGR/ (1) 3 months PO: (1) response to petition; (2) motion to amend claims CBMR Petitioner Discovery Period Petitioner: (1) reply to PO response (2) 6 months and (2) opposition to motion to amend PO Discovery Period PO: reply to opposition to (3) 7 months amendment Pet: motion for observations on (4) 7 months + 3 weeks cross-x of reply witnesses PO/Pet: motion to exclude evidence / req. hearing Pet/PO: Opposition to motion to (5) 8 months + 1 week exclude PO: response to observations (6) 8 months + 2 weeks Replies to motions to exclude Oral Hearing (only upon request) 12 months Final Decision 15 Hubbard ip
Patent owners response to petition Identify all involved claims that are believed to be patentable State basis for that belief Include any a鍖davits and other additional factual evidence to be relied upon Explain relevance of the evidence May include claim charts 16 Hubbard ip
Motion practice No motion will not be entered without prior Board authorization, except if impractical to seek prior Board authorization (e.g. motions to seal and motions 鍖led with petition) motions for which authorization is automatically granted by rules or in scheduling order (e.g. requests for rehearing, observations on cross-examination, and motions to exclude evidence) Generally, however, time limits are imposed for making these motions Authorization for all other motions obtained during initial conference call or subsequent call. Initial conference about one month from the date of institution to discuss the motions that the parties intend to 鍖le and to determine if any adjustment needs to be made to the Scheduling Order Procedural issues likely to be decided during conference calls to avoid need for additional brie鍖ng 17 Hubbard ip
Motions to amend claims Only one motion to amend as of right (statutory) Timing Although permission to 鍖le is not required, patent owners expected to confer with Board before making it (preferably during initial conference call) as it may impact schedule Motion expected to be presented with patent owners response Good cause required for motions to amend sought later in proceeding (amendment to advance settlement usually good enough) 18 Hubbard ip
Nature of amendment limited Generally, one substitute claim per challenged claim, unless need for more than one demonstrated Motion must identify support for each claim that is added or amended Motion can be denied if Amendment does not respond to a ground of unpatentability involved in the trial Enlarges the scope of the claim or introduces new subject matter Petitioner may respond with additional evidence that addresses new issues Amendments are subject to 則252 intervening rights 19 Hubbard ip
Evidence Admissibility of evidence generally governed by Federal Rules of Evidence Testimony Uncompelled direct testimony by a鍖davits All other (compelled direct, cross-examination, redirect) by deposition Objections must be made to preserve right to move to exclude evidence To deposition evidence: at time of deposition 10 business days of institution of trial for evidence 鍖led with Petition; otherwise 5 days of service May respond to objection by serving supplemental evidence within 10 business days 20 Hubbard ip
Discovery Discovery not permitted except For routine discovery On agreed upon mandatory initial disclosures, if agreed to by the parties prior to patent owners preliminary response On motion May ask for any type of discover permitted by FRCP As otherwise agreed by the parties Board expects to enter standard E-discovery order modeled after the Federal Circuits model order when party seeks ESI beyond routine discovery 21 Hubbard ip
Routine discovery Cross-examination of a鍖davit testimony within time period authorized by Board in scheduling order Any exhibit cited in paper or in testimony must be served with paper or testimony, unless previously served or otherwise agreed by parties Mandatory disclosure of relevant information inconsistent with position advanced by party Must be served prior to or with paper containing inconsistent statement Does not apply to privileged documents This apparent duty extends to inventors, corporate o鍖cers and persons involved with preparation of documents 22 Hubbard ip
Agreed upon mandatory initial disclosures Parties may agree to mandatory discovery in the form of initial disclosures To be done not later than 鍖ling of patent owner preliminary statement or time for 鍖ling the statement Upon institution of trial, parties may automatically take discovery of information identi鍖ed in the initial disclosure Two options (1) FRCP Rule 26(a)(1)(A) (2) Much more extensive list of disclosures set out in the Trial Guide Initial disclosures must be 鍖led as exhibits 23 Hubbard ip
Discovery upon motion Any types of discovery available under the Federal Rules of Civil Procedure can be sought, but motion must be 鍖led Grant of motion requires showing of interests of justice for IPR and derivations (high threshold) good cause for in PGR and CBM (lower threshold) Example of when it might be sought: when a party raises an issue, where the evidence on that issue is uniquely in the possession of the party that raised it 24 Hubbard ip
Supplemental information Within 1 month of institution of trialparties may move to submit supplemental information relevant to a claim that is subject of trial Otherwise, party must request authorization to 鍖le a motion to submit the information; motion must show why the supplemental information reasonably could not have been obtained earlier that consideration of the supplemental information would be in the interests-of- justice (a relatively high standard) 25 Hubbard ip
Con鍖dentiality / protective orders Petition may be 鍖led with motion to seal (with proposed protective order: either its own or PTO default protective order) PO cannot see con鍖dential information unless agrees to protective order supplied by Petitioner, or parties agree on one If not order agreed to prior to institution of trial, Board will enter default standard protective order Con鍖dential information that is subject to a protective order will become public 45 days after denial of a petition or 45 days after 鍖nal judgment Party may 鍖le a motion to expunge the information from the record prior to the information becoming public Redaction preferred over sealing of document 26 Hubbard ip
Fees / Page limits on petitions Filing fees IPR: $27,200 + $600 per excess claim (over 20) PGR/CBM: $35,800 + $800 per excess claim Page limits: Petitions for IPR and Derivation limited to 60 pages; 80 pages for PGR/CBM (double-spacing; 14 point font; excludes exhibits) Claim charts can be single spaced Use claim charts from other proceedings as exhibits Omit extensive discussions of basic legal principles Break down claims and 鍖le multiple petitions Board might decline to institute proceeding if too many claims or too many references on grounds that it cannot be completed within 1 year 27 Hubbard ip
Miscellaneous Counsel requirements Must specify lead and back up counsel Non-registered attorneys may apply for pro hac vice admission, but Board will condition admission on having lead counsel be registered with PTO Patent owner estoppel: PO may not take action inconsistent with an adverse judgment by obtaining patent: with patentably indistinct claims with an amendment to speci鍖cation or drawing denied during trial 28 Hubbard ip
Conclusion No trials have yet been authorized, so we dont yet have anything to judge how well these will work Rules are geared toward keeping a tight control over the parties and to prevent abuses PTO is serious about its 1 year mandate Board seems to be very open and encourages interaction with it 29 Hubbard ip
Marc A. Hubbard Hubbard Law PLLC 740 E. Campbell Road, Suite 550 | Richardson, TX 75081 (214) 396-6001 direct (214) 208.2601 mobile (214) 785-6958 fax www.hubbardip.com 息 2012 Marc A. Hubbard 30

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Trial Practice Before the Patent Trial and Appeal Board

  • 1. Trial practice before the PTAB in contested proceedings INTELLECTUAL PROPERTY LAW SECTION Marc A . Hubbard DALLAS BAR ASSOCIATION HUBBARD LAW, PLLC October 18, 2012 Dallas, Texas Hubbard ip
  • 2. Inter partes reviews 鍖led through Oct. 14, 2012 2 Hubbard ip
  • 3. Covered business method reviews 鍖led through Oct. 15, 2012 3 Hubbard ip
  • 4. 4 Hubbard ip
  • 5. 5 Hubbard ip
  • 6. Topics Overview of timing of basic trial procedures in context of reviews Overview of motion practice, evidence and discovery Discussion of some key issues 6 Hubbard ip
  • 7. Rules governing trial procedures at PTAB Part 42, Subpart A, of 37 C.F.R. governs trial in four types of contested proceedings: Inter partes review (IPR) Post grant review (PGR) Transitional covered business method patent review (CBMR) Derivation proceeding Detailed guidance: O鍖ce Patent Trial Practice Guide 7 Hubbard ip
  • 8. Petition Filed Optional PO 3 months PTAB Contested response < 3 months Proceeding Overview Decision on authorization No Rehearing Yes Decision on rehearing No No appeal / Trial <12 months, unless Try again extended by 6 months Yes Trial Yes Settlement Dismissal* No *Unless board has already Final decision made a decision Motion for rehearing / Appeal to Fed. Cir. 8 Hubbard ip
  • 9. Petition Standing Must certify that patent/application available for review and demonstrate that statutory requirements for bringing proceeding have met Must certify that petitioner is not barred or estopped Mandatory notices (Real party in interest, related matters, lead and backup counsel, service information) Challenge to one or more claims Evidence All evidence relied upon must be 鍖led with petition (subject to limited opportunities to supplement) Filing fee Must accompany petition; non-refundable 9 Hubbard ip
  • 10. Challenge For each challenged claim Proposed claim construction Can be su鍖cient to state simply broadest reasonable interpretation, as understood by one of ordinary skill in the art and consistent with the disclosure Board will apply the broadest reasonably interpretation standard If speci鍖c term should have a meaning other than a plain meaning, must identify support in disclosure for it Speci鍖c statutory grounds (則102, 則103 for IPR, PGR and CBM; 則則101 and112 for PGR and CBMR) How claim is unpatentable Must specify exhibit # and speci鍖c portions of evidence to support challenge Claim charts recommended, but count toward page limits (unless attached as evidence from other case) 10 Hubbard ip
  • 11. Patent owners preliminary response Optional Evidence can be attached, but no testimony can be taken prior to authorization of trial May disclaim one or more claims May waive response early in time period in order to expedite decision by Board on whether to authorize trial 11 Hubbard ip
  • 12. Types of responses for a patent owner to consider The petitioner is statutorily barred The references are not in fact prior art The prior art lacks a material limitation found in all of the independent claims The prior art teaches or suggests away from a combination The claim interpretation is unreasonable For post-grant review raising 則101 grounds, a brief explanation as to how the challenged claims are directed to a patent-eligible invention 12 Hubbard ip
  • 13. Institution of trial For IPR Petition must demonstrate a reasonable likelihood that petition would prevail as to at least one of the challenged claims Viewed by PTAB as giving it more discretion (can be 50/50) For PGR/CBMR Petition must demonstrate that it is more likely than not that at least one challenged claim is unpatentable Board will identify claims and speci鍖c grounds on which trial is being authorized 13 Hubbard ip
  • 14. Trial management Board has broad discretion manage the proceeding as it sees 鍖t, but within con鍖nes of statutory requirements Scheduling order (see model in Trial Guide) sets up stages All relief must be sought through petition or motion Motions may only be entered with Board approval 14 Hubbard ip
  • 15. Due Dates Set By Scheduling Order (Parties may stipulate to different dates for 1 to 5) Standard 0 Board decides to institute trial and issues scheduling order Schedule for Initial conference call PO Discovery Period IPR/PGR/ (1) 3 months PO: (1) response to petition; (2) motion to amend claims CBMR Petitioner Discovery Period Petitioner: (1) reply to PO response (2) 6 months and (2) opposition to motion to amend PO Discovery Period PO: reply to opposition to (3) 7 months amendment Pet: motion for observations on (4) 7 months + 3 weeks cross-x of reply witnesses PO/Pet: motion to exclude evidence / req. hearing Pet/PO: Opposition to motion to (5) 8 months + 1 week exclude PO: response to observations (6) 8 months + 2 weeks Replies to motions to exclude Oral Hearing (only upon request) 12 months Final Decision 15 Hubbard ip
  • 16. Patent owners response to petition Identify all involved claims that are believed to be patentable State basis for that belief Include any a鍖davits and other additional factual evidence to be relied upon Explain relevance of the evidence May include claim charts 16 Hubbard ip
  • 17. Motion practice No motion will not be entered without prior Board authorization, except if impractical to seek prior Board authorization (e.g. motions to seal and motions 鍖led with petition) motions for which authorization is automatically granted by rules or in scheduling order (e.g. requests for rehearing, observations on cross-examination, and motions to exclude evidence) Generally, however, time limits are imposed for making these motions Authorization for all other motions obtained during initial conference call or subsequent call. Initial conference about one month from the date of institution to discuss the motions that the parties intend to 鍖le and to determine if any adjustment needs to be made to the Scheduling Order Procedural issues likely to be decided during conference calls to avoid need for additional brie鍖ng 17 Hubbard ip
  • 18. Motions to amend claims Only one motion to amend as of right (statutory) Timing Although permission to 鍖le is not required, patent owners expected to confer with Board before making it (preferably during initial conference call) as it may impact schedule Motion expected to be presented with patent owners response Good cause required for motions to amend sought later in proceeding (amendment to advance settlement usually good enough) 18 Hubbard ip
  • 19. Nature of amendment limited Generally, one substitute claim per challenged claim, unless need for more than one demonstrated Motion must identify support for each claim that is added or amended Motion can be denied if Amendment does not respond to a ground of unpatentability involved in the trial Enlarges the scope of the claim or introduces new subject matter Petitioner may respond with additional evidence that addresses new issues Amendments are subject to 則252 intervening rights 19 Hubbard ip
  • 20. Evidence Admissibility of evidence generally governed by Federal Rules of Evidence Testimony Uncompelled direct testimony by a鍖davits All other (compelled direct, cross-examination, redirect) by deposition Objections must be made to preserve right to move to exclude evidence To deposition evidence: at time of deposition 10 business days of institution of trial for evidence 鍖led with Petition; otherwise 5 days of service May respond to objection by serving supplemental evidence within 10 business days 20 Hubbard ip
  • 21. Discovery Discovery not permitted except For routine discovery On agreed upon mandatory initial disclosures, if agreed to by the parties prior to patent owners preliminary response On motion May ask for any type of discover permitted by FRCP As otherwise agreed by the parties Board expects to enter standard E-discovery order modeled after the Federal Circuits model order when party seeks ESI beyond routine discovery 21 Hubbard ip
  • 22. Routine discovery Cross-examination of a鍖davit testimony within time period authorized by Board in scheduling order Any exhibit cited in paper or in testimony must be served with paper or testimony, unless previously served or otherwise agreed by parties Mandatory disclosure of relevant information inconsistent with position advanced by party Must be served prior to or with paper containing inconsistent statement Does not apply to privileged documents This apparent duty extends to inventors, corporate o鍖cers and persons involved with preparation of documents 22 Hubbard ip
  • 23. Agreed upon mandatory initial disclosures Parties may agree to mandatory discovery in the form of initial disclosures To be done not later than 鍖ling of patent owner preliminary statement or time for 鍖ling the statement Upon institution of trial, parties may automatically take discovery of information identi鍖ed in the initial disclosure Two options (1) FRCP Rule 26(a)(1)(A) (2) Much more extensive list of disclosures set out in the Trial Guide Initial disclosures must be 鍖led as exhibits 23 Hubbard ip
  • 24. Discovery upon motion Any types of discovery available under the Federal Rules of Civil Procedure can be sought, but motion must be 鍖led Grant of motion requires showing of interests of justice for IPR and derivations (high threshold) good cause for in PGR and CBM (lower threshold) Example of when it might be sought: when a party raises an issue, where the evidence on that issue is uniquely in the possession of the party that raised it 24 Hubbard ip
  • 25. Supplemental information Within 1 month of institution of trialparties may move to submit supplemental information relevant to a claim that is subject of trial Otherwise, party must request authorization to 鍖le a motion to submit the information; motion must show why the supplemental information reasonably could not have been obtained earlier that consideration of the supplemental information would be in the interests-of- justice (a relatively high standard) 25 Hubbard ip
  • 26. Con鍖dentiality / protective orders Petition may be 鍖led with motion to seal (with proposed protective order: either its own or PTO default protective order) PO cannot see con鍖dential information unless agrees to protective order supplied by Petitioner, or parties agree on one If not order agreed to prior to institution of trial, Board will enter default standard protective order Con鍖dential information that is subject to a protective order will become public 45 days after denial of a petition or 45 days after 鍖nal judgment Party may 鍖le a motion to expunge the information from the record prior to the information becoming public Redaction preferred over sealing of document 26 Hubbard ip
  • 27. Fees / Page limits on petitions Filing fees IPR: $27,200 + $600 per excess claim (over 20) PGR/CBM: $35,800 + $800 per excess claim Page limits: Petitions for IPR and Derivation limited to 60 pages; 80 pages for PGR/CBM (double-spacing; 14 point font; excludes exhibits) Claim charts can be single spaced Use claim charts from other proceedings as exhibits Omit extensive discussions of basic legal principles Break down claims and 鍖le multiple petitions Board might decline to institute proceeding if too many claims or too many references on grounds that it cannot be completed within 1 year 27 Hubbard ip
  • 28. Miscellaneous Counsel requirements Must specify lead and back up counsel Non-registered attorneys may apply for pro hac vice admission, but Board will condition admission on having lead counsel be registered with PTO Patent owner estoppel: PO may not take action inconsistent with an adverse judgment by obtaining patent: with patentably indistinct claims with an amendment to speci鍖cation or drawing denied during trial 28 Hubbard ip
  • 29. Conclusion No trials have yet been authorized, so we dont yet have anything to judge how well these will work Rules are geared toward keeping a tight control over the parties and to prevent abuses PTO is serious about its 1 year mandate Board seems to be very open and encourages interaction with it 29 Hubbard ip
  • 30. Marc A. Hubbard Hubbard Law PLLC 740 E. Campbell Road, Suite 550 | Richardson, TX 75081 (214) 396-6001 direct (214) 208.2601 mobile (214) 785-6958 fax www.hubbardip.com 息 2012 Marc A. Hubbard 30