Inter Partes Review: Claim amendments at the Patent Trial and Appeal Board. October 8, 2015

Transcription

1 Inter Partes Review: Claim amendments at the Patent Trial and Appeal Board October 8, 2015

2 Today s presenters Mike Stimson Norton Rose Fulbright San Antonio, Texas Brandy Nolan Norton Rose Fulbright Dallas, Texas Gita Srivastava Norton Rose Fulbright Dallas, Texas 2

3 Continuing education information We have applied for one hour of California and Texas CLE credit, and one hour of New York non-transitional CLE credit. Newly-admitted New York attorneys may not receive non-transitional CLE credit. For attendees outside of these states, we will supply a certificate of attendance that may be used to apply for CLE credit in the applicable bar or other accrediting agencies. Norton Rose Fulbright will supply a certificate of attendance to all participants who: Participate in the web seminar by phone and via the web Complete our online evaluation that we will send to you by within a day after the event has taken place 3

4 Administrative information Today s program will be conducted in a listen-only mode. To ask an online question at any time throughout the program, click on the question mark icon located on the tool bar in the bottom right side of your screen. Time permitting, we will answer your question during the session. Everything we say today is opinion. We are not dispensing legal advice, and listening does not establish an attorney-client relationship. This discussion is off the record. You may not quote the speakers without our express written permission. If the press is listening, you may contact us, and we may be able to speak on the record. 4

5 Discussion topics LEGAL FOUNDATION Process Idle Free and beyond Practice tips and other considerations 5

6 Legal foundation 35 U.S.C. 316(a)(9) The Director shall prescribe regulations... setting forth standards and procedures for allowing the patent owner to move to amend the patent... to cancel a challenged claim or propose a reasonable number of substitute claims U.S.C. 316(d)(1) During an inter partes review... the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: (A) Cancel any challenged patent claim. (B) For each challenged claim, propose a reasonable number of substitute claims. 6

7 Discussion topics Legal foundation PROCESS Idle Free and beyond Practice tips and other considerations 7

8 Process Comparison to other Patent Office proceedings Prosecution and reissue Amend or add new claims until prosecution closes Broaden existing claims (only within first 2 years for reissue) Patent Office has burden of showing claims are unpatentable 8

9 Process Comparison to other Patent Office proceedings Prosecution and reissue Amend or add new claims until prosecution closes Broaden existing claims (only within first 2 years for reissue) Patent Office has burden of showing claims are unpatentable Ex parte reexamination Claims can be amended or added, but not broadened 9

10 Process Comparison to other Patent Office proceedings Prosecution and reissue Amend or add new claims until prosecution closes Broaden existing claims (only within first 2 years for reissue) Patent Office has burden of showing claims are unpatentable Ex parte reexamination Claims can be amended or added, but not broadened Inter partes review Cancel or substitute independent and/or dependent claims, but not amend Substitute are simply proposed; not added as a matter of right Burden is on PO to show that substitute claims are patentable Substitution on one-to-one basis unless there are special circumstances Focused proceeding Rules are interpreted to secure just, speedy, and inexpensive resolution Board seeks to streamline and converge issues at all phases 10

11 Process Timing Before institution No motions to amend before institution (i.e., not in PO s Preliminary Response) Normal disclaimer procedure is still available See 37 C.F.R (d)-(e),1.321, 35 U.S.C

12 Process Timing Before institution No motions to amend before institution (i.e., not in PO s Preliminary Response) Normal disclaimer procedure is still available See 37 C.F.R (d)-(e),1.321, 35 U.S.C After institution Permitted before or with PO s Response to Petition Default deadline is 3 months after institution Board may provide a different deadline 12

13 Process Requirements Confer with Board (required) Rationale: Enhances efficiency by saving PO s time and resources to prepare a motion that would otherwise be denied Board may adjust schedule or authorize additional discovery Board is likely to provide guidance or parameters for amendment Confer with Petitioner (optional) Settlement opportunity File first motion to amend (matter of right) Rules require conference, not authorization 13

14 Process Requirements Include Claim listing Clearly show changes sought Proposed claims must be traceable to an original challenged claim PO can replace broader set with a narrow set of claims PO can argue amended claim is substantially identical to the original claim 14

15 Process Requirements Include Claim listing Clearly show changes sought Proposed claims must be traceable to an original challenged claim PO can replace broader set with a narrow set of claims PO can argue amended claim is substantially identical to the original claim Written description support In original patent application or earlier filed priority application Claim construction for new claim terms Arguments supporting patentability 15

16 Process Requirements Be reasonable in number amendments Presumption is reasonable = one-to-one claim substitution General rule is rebuttable by demonstrating a special need Extra claims must be patentably distinct from one another Generally NOT reasonable = desire for new claim hierarchy 16

17 Process Requirements Be reasonable in number amendments Presumption is reasonable = one-to-one claim substitution General rule is rebuttable by demonstrating a special need Extra claims must be patentably distinct from one another Generally NOT reasonable = desire for new claim hierarchy State whether proposed amendments are contingent or noncontingent Claim cancellations are non-contingent 17

18 Process Requirements Be reasonable in number amendments Presumption is reasonable = one-to-one claim substitution General rule is rebuttable by demonstrating a special need Extra claims must be patentably distinct from one another Generally NOT reasonable = desire for new claim hierarchy State whether proposed amendments are contingent or noncontingent Claim cancellations are non-contingent PO must Identify prior art; and Show amended/substituted claim is patentably distinct 18

19 Process Requirements Do not include New matter Amendments related to claims or challenges not involved in the trial Amendments that enlarge scope of challenged claim(s) Excessive substitute claims 19

20 Process Formalities PO s motion Up to 25 pages Use appendix for listing of claims; does not count toward the page limit Expert declaration in support permitted Opposition Up to 25 pages Can include new evidence of unpatentability, e.g., prior art and expert declarations Reply Up to 12 pages Board s decision As part of final written decision 20

21 Discussion topics Legal foundation Process IDLE FREE AND BEYOND Practice tips and other considerations 21

22 Idle Free and beyond 2013 Idle Free decision PO files a motion to amend without conferring with the Board Violation of 37 C.F.R (a) Accordingly, motion to amend dismissed Nonetheless, Board takes opportunity to provide a general discussion of several important requirements for a patent owner s motion to amend claims Board gives PO another chance to file motion to amend Idle Free Sys., Inc. v. Bergstrom, Inc., IPR , Paper No. 26 (PTAB, June 11, 2013) 22

23 Idle Free and beyond Guidance on claim amendments PO s burden to show patentability of substitute claims by a preponderance of the evidence [The Board] expect[s] a patent owner: (1) in all circumstances, to make a showing of patentable distinction over the prior art; (2) in certain circumstances, to make a showing of patentable distinction over all other proposed substituted claims for the same challenged claim; and (3) in certain circumstances, to make a showing of patentable distinction over a substitute claim for another challenged claim. 23

24 Idle Free and beyond The Idle Free decision The burden is not on the petitioner to show unpatentability, but on the patent owner to show a patentable distinction over the prior art of record and also prior art known to the patent owner Issues What prior art must be identified? How to show a patentable distinction over the prior art? 24

25 Idle Free and beyond What prior art must be identified? [P]rior art known to the patent owner : no more than the material prior art that the Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R , in light of a Motion to Amend Same duty of candor and good faith No additional affirmative duty for PO MasterImage 3D, Inc., et al. v. RealD Inc., IPR , Paper 42 (July 15, 2015) 25

26 Idle Free and beyond How to show a patentable distinction? Specifically identify features added to the substitute claims Present technical facts and reasoning Persuade the Board that the proposed substitute claim is patentable over the prior art Provide claim construction for new claim terms Unsurprisingly, conclusory statements are inadequate 26

27 I hope the MasterImage decision gives people a little bit more of a sense of comfort when they make such a motion.... There is no affirmative duty to search the prior art and go find for us something that you re not aware of. -- Judge Nathan Kelley, acting chief judge of the PTAB August 20, 2015 R. Davis, Don t Be Shy In Seeking AIA Amendments, PTAB Chief Says, Law360, available at

28 Idle Free and beyond First motion to amend granted after Idle Free One year later May 2014 decision in Int l Flavors & Fragrances Inc. v. U.S.A. Unopposed motion to amend Granted as to all but one proposed substitute claim Substitute claims were either clearly narrower or supported by publications and an expert declaration showing they were not obvious over the prior art 28

29 Idle Free and beyond Recently granted motion to amend Another year passes June 2015 decision in REG Synthetic Fuels LLC v Neste Oil OYJ Patent directed to the manufacture of diesel range hydrocarbons PO filed a contingent motion to amend Petitioner opposed PO and Petitioner submitted declarations in support of motion and opposition See other representative decisions on the Patent Office s website 29

30 Idle Free and beyond Generally High grant rate for PO motions to amend via claim cancellation Low grant rate for PO motions to amend via claim substitutions No emerging pattern for successful substitutions Numerous ways for PO to fail Numerous ways for Petitioner to challenge sufficiency of motion 30

31 Discussion topics Legal foundation Process Idle Free and beyond PRACTICE TIPS AND OTHER CONSIDERATIONS 31

32 Practice tips and other considerations Additional motions to amend Only first motion is a matter of right Subsequent motions permitted under limited circumstances By joint request of PO and Petitioner to materially advance a settlement To remedy procedural deficiencies (potentially) For good cause 32

33 Practice tips and other considerations Additional motions to amend establishing good cause Factors considered by Board Actions of Petitioner Whether a petitioner has submitted supplemental information after the time period set for filing a first motion to amend Effect on trial Time remaining for the trial Strength of evidence Impact of additional evidence on patentability of the claims PO s unreasonable delay Whether additional evidence was known to PO before original deadline See Office Patent Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012) 33

34 Practice tips and other considerations Intervening rights Estoppel Substitution and cancellation vs. amendment Timeliness Specificity and clarity Staying focused Scope of reply Supporting documents and evidence Burden of PO Standard for claim construction Addressing the prior art Withdrawing motion to amend 34

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