A Practitioner’s Guide to Patent Challenges at the U.S. Patent & Trademark Office: CHAPTER 4 (DRAFT): Initiating a Post-Grant Proceeding at the USPTO

DISCLAIMER

This document is in draft form and subject to further revision by the author.  This document is not to be used as a legal reference and does not constitute legal advice. You should consult a lawyer if you have legal issues requiring attention. Nothing in this document creates an express or implied contract.  The outcome of particular legal matters is dependent upon the facts and law applicable to the matters.

 

 

Table of Contents

 

CHAPTER 4: Initiating a post-grant proceeding at the USPTO.. 1

4.1       Initiating an IPR?. 2

4.1.1        Who May File a Petition for IPR?. 2

4.1.2        When Can You File an IPR Petition?. 5

4.1.3        Where Can You File the IPR Petition?. 6

4.1.4        What Should You Include in the IPR Petition?. 7

4.1.5        Will the IPR Proceedings Record be Publicly Available?. 28

4.1.6        Can You Join an Existing IPR?. 33

4.2        Initiating a Post-Grant Review Proceeding. 33

4.3        Initiating a Covered Business Method Proceeding. 33

4.3.1        Distinctions Between CBMs and IPRs. 34

4.4        Effect of Post Grant Proceeding on other PTO Proceedings. 36

4.4.1        Pending Patent Applications. 36

4.4.2        Ex Parte Reexamination. 36

 

 

 

CHAPTER 4: Initiating a post-grant proceeding at the USPTO

Chapters 31 and 32 of Title 35 of the United States Code and Part 42 of Title 37 of the Code of Federal Regulations provide the statutory and regulatory framework for three types of post-grant challenges of United States patents at the USPTO, including inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM). The following diagram (provided on the next page) from the USPTO website shows the various stages and timeline for all three types of post-grant proceedings at the USPTO.

The post-grant proceedings (i.e., IPR, PGR, CBM) may be broken down into eight phases, the first of which is covered in this chapter.  As described in the Office Patent Trial Practice Guide, Federal Register, Vol. 77, No. 157, 48757 (Aug. 14, 2014):

Generally, the proceedings begin with the filing of a petition that identifies all of the claims challenged and the grounds and supporting evidence on a claim-by-claim basis.  Within three months of notification of a filing date, the patent owner in an IPR, PGR, or CBM proceeding may file a preliminary response to the petition, including a simple statement that the patent owner elects not to respond to the petition.  The Board acting on behalf of the Director will determine whether to institute a trial within three months of the date the patent owner’s preliminary response was due or was filed, whichever is first.

In instituting a trial, the Board will narrow the issues for final decision by authorizing the trial to proceed only on the challenged claims for which the threshold standards for the proceeding have been met. Further, the Board will identify, on a claim-by-claim basis, the grounds on which the trial will proceed. Any claim or issue not included in the authorization for review will not be part of the trial. A party dissatisfied with the Board’s determination to institute a trial may request rehearing as to points believed to have been overlooked or misapprehended. See The Board will enter a Scheduling Order (Appendix A) concurrent with the decision to institute a trial. The Scheduling Order will set due dates for the trial taking into account the complexity of the proceeding but ensuring that the trial is completed within one year of institution. For example, a Scheduling Order for an IPR or PGR might, consistent with §§ 42.120 and 42.220, provide a three month deadline for patent owner discovery and for filing a patent owner response and motion to amend. Once the patent owner’s response and motion to amend have been filed, the Scheduling Order might provide the petitioner with three months for discovery and for filing a petitioner’s reply to the response and the petitioner’s opposition to the amendment. The Scheduling Order might then provide the patent owner with one month for discovery and for filing a patent owner reply to petitioner’s opposition to a patent owner amendment.§ 42.71(d) and (c). A representative timeline is provided below:

4.1       Initiating an IPR?

Chapter 31 of Title 35 of the U.S.C., §§ 311-319 and Part 42, Subpart B, §§ 42.100-42.123 provide the framework for inter parte review (IPR) proceedings.

4.1.1    Who May File a Petition for IPR?

Anyone other than the owner of a patent may file a petition to institute an IPR of the patent in the USPTO.[1]  As noted above, there are exceptions to this rule[2], such as: (a) where the petitioner or the petitioner’s real party-in-interest filed a civil action before the petition filing date that challenged the validity of a claim of the patent[3]; (b) the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner was served with a complaint alleging infringement of the patent more than one year before the petition filing date[4]; and (c) the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.

4.1.1.1             Effect of Prior Civil Action on IPR

Section 315(a)(1) prohibits an IPR from being instituted where the petitioner or the petitioner’s real party-in-interest filed a “civil action” before the filing date of the petition, challenging the validity of a claim of the patent.[5]  This prohibition, however, is limited by Section 315(a)(3) to exclude counterclaims that challenge the validity of a claim of the patent from the definition of “civil action.” This limitation extends to both a counterclaim brought by the petitioner in a patent infringement action initiated by the patent owner and a counterclaim brought by the petitioner in a Declaratory Judgment action for non-infringement initiated by the petitioner.[6]

Relying on the statutory language in § 315(a), the statutory history for this section, and the Supreme Court’s distinct treatment of an affirmative defense of invalidity from a counterclaim of invalidity in Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83 (1993), the Board concluded in Ariosa Diagnostics v. Isis Innovation Limited that § 315(a) “allow[s] a petitioner to file an inter partes review, and still have their choice of venue by allowing the petitioner to file a declaratory judgment action that same day.”[7]

In Ariosa Diagnostics, the patent owner, Isis, challenged the petitioner’s standing in an IPR proceeding based on a Declaratory Judgment (DJ) action of non-infringement that the petitioner, Ariosa, filed in a district court before filing an IPR petition for the same patent.[8]  Ariosa filed the DJ action against Sequenom, the exclusive licensee of the patent under review, seeking a declaration that it did not infringe any claim of the patent.[9] After Sequenom counterclaimed for infringement, Ariosa answered by raising the affirmative defense of invalidity of the patent.  The Board held that filing a Declaratory Judgment of non-infringement in District Court does not bar a petitioner from later filing a petition for IPR for the same patent under 35 U.S.C. § 315(a), and that the express mention of a counterclaim of invalidity in § 315(a)(3) does not mandate interpreting the statue such that raising an affirmative defense of invalidity in response to a compulsory counterclaim of infringement deprives the petitioner of standing to file for IPR.[10]

4.1.1.2             Effect of Timing of “Civil Action” on IPR

Section 315(b) prohibits institution of an IPR where the petition is filed more than a year after the date on which the petitioner, real party-in-interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.  The Board has strictly construed this statute to prohibit institution of IPR proceedings where a fully compliant petition is not filed within 1 year after date on which the petitioner, real party-in-interest, or privy of the petitioner is served with a complaint.[11]  The Board’s denial of an IPR is not appealable[12].

The Board has construed “service” under 35 U.S.C. § 315(b) to require that the petitioner be served with a summons and a complaint.  For instance, in Motorola Mobility LLC, IPR2013-00010, the Board held that the petitioner must be served with a summons and complaint before the time for filing an IPR petition begins to run[13]. However, where the petitioner has waived service of a summons, the one-year time period begins on the date on which such a waiver is filed.[14]

In TRW Automotive US LLC, IPR2014-00293, the Board clarified that where an amended complaint is at issue in the district court litigation, the “service” date shall be the date on which a court grants the patent owner’s Motion to Leave and the Clerk of the Court files the amended complaint, and not the date on which the amended complaint with Motion to Leave is sent to the petitioner’s attorneys of record who, in accordance with local rules received a transmission of the Notice of Electronic Filing via the court’s electronic fiddling system.[15] In TRW Automotive US LLC, the patent owner served the petitioner with a Motion for Leave to file its amended complaint together with a copy of the complaint on December 20, 2012, but the Clerk of Court did not file the Court’s decision granting the motion until December 26, 2012. The Board identified the December 26 date as the date on which the petitioner was “served” for purposes of 35 U.S.C. § 315(b), reasoning that the defendant petitioner was not brought under the court’s authority, by formal process, until the court granted and filed its decision granting the patent owner’s Motion for Leave.[16]

In Brinkmann Corp. v. A&J Manufacturing, LLC, IPR 2015-00056, the Board held that service of a Notice of Investigation by the International Trade Commission (ITC) is not service of a complaint in a “civil action.”[17] Rather, the Board concluded that an ITC proceeding is an administrative proceeding,[18]reasoning that “because Congress used different language to identify or encompass proceedings before the ITC,” an ITC proceeding is not a “civil action” for purposes of 35 U.S.C. § 315(b).[19]

In Zoll Lifecor Corp. v. Philips Electronics North America Corp., IPR2013-00606, the Board denied the IPR petition filed by Zoll Lifecor Corporation as untimely, relying on 35 U.S.C. § 315(b). In that case, Philips filed a complaint on June 18, 2010 against Zoll Medical Corporation in the federal district in Massachusetts.  Zoll Lifecor, a wholly-owned subsidiary of Zoll Medical, filed IPR petition(s) on September 23, 2013, more than three years later, seeking to invalidate one of eight patents.  The Board rejected the petition as untimely.

The petitioner appealed from the Board’s decision to deny the petitions, and Philips, the patent owner, moved to dismiss the appeal.  In an Order issued as a mandate on August 25, 2014, the CAFC granted Philips’ motion to dismiss, concluding “that the petitioner could not appeal from a decision to deny institution based on § 315(b).”[20]

Where an IPR is already filed and instituted by the Board for a patent, the Board has broad discretion to join a later filed petition, even where the joining petition is filed more than one year after the date on which the petitioner was served with a complaint alleging infringement of the patent.[21]  As noted by the Board in Microsoft Corp. v. Proxyconn, Inc., “the one-year time bar does not apply to a request for joinder.”[22]

Before considering joinder, the Board may require the requesting party to submit Motions For Joinder, explaining the reasons why joinder is appropriate, identifying any new ground of unpatentability being raised in concurrently filed corresponding petitions for IPR, and explaining how joinder will minimize impact on the schedule and costs of the current proceedings.[23]

4.1.1.3             Estoppel of Grounds Identified in IPR

Under Section 315(e), a petitioner in an IPR of a claim in a patent that results in a final written decision under 35 U.S.C. § 318(a), or the real party-in-interest or privy of the petitioner, may not request or maintain a proceeding before the USPTO with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that IPR.[24]  Thus, a petitioner is prohibited from presenting grounds in a subsequent IPR that the petitioner raised or reasonably could have raised during the prior IPR.

4.1.2    When Can You File an IPR Petition?

When you can file an IPR petition will depend on, among other things, whether the patent at issue is subject to first inventor to file provisions of the AIA. If so, then you may not file the petition within the 9-month window following patent grant, or if a post-grant review has been instituted for the patent, until the date of the termination of such post-grant review.[25]

If the patent is not subject to first inventor to file provisions of the AIA, then timing will be dictated by whether the petitioner, real party-in-interest or privy of the petitioner has been served with a complaint for patent infringement of the challenged patent, or if the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent.[26]  Under the statute, the petitioner will have 1 year within which to file the petition – i.e., within 1 year of the petitioner, real party-in-interest, or privy of the petitioner being served by the patent owner with the complaint for patent infringement of the challenged patent.[27]   If the petitioner or real party-in-interest has filed a civil action challenging the validity of any claim in the patent, then the petition will not be considered by the Board.[28]  A counterclaim challenging the validity of a claim of the patent, however, is not considered a “civil action.”[29]

4.1.3    Where Can You File the IPR Petition?

A petition for an IPR should be filed electronically via the Board’s Patent Review Processing System (PRPS), which is the Board’s e-Filing (EF) and case management (CM) system for trial proceedings. PRPS is accessible from the Board’s website at http://www.uspto.gov/PTAB.[30]

However, if PRPS is unavailable during normal business hours, the petition may be submitted to the Board via email at [email protected].[31]  A petition submitted via email must include: name of point of contact; email address of point of contact; patent number to which the petition corresponds; application number of the patent; number of claims challenged; type of trial proceeding; power of attorney; and fee (e.g., a deposit account authorization).[32]

If both PRPS and the Board’s email address are unavailable, then paper filing may be available via EXPRESS MAIL® (or by means at least as fast and reliable as EXPRESS MAIL®).[33]

A petition submitted via email (or other means) must: (1) be accompanied by a motion requesting acceptance of the submission, and (2) identify a date of transmission where a party seeks a filing date other than the date of receipt at the Board. It is important to note that a petition will not be accorded a filing date unless it is accompanied by a payment of the appropriate fees (e.g., a deposit account authorization).[34]

After filing, the petition is reviewed for compliance with formalities requirements.  If it is found to comply with the rules, the Board will accord the petition a filing date and mail a Notice of Filing Date Accorded to Petition and a Notice for Setting the Time Period for Filing Patent Owner Preliminary Response to the parties.[35]  The Notices will generally identify the Administrative Patent Judge designated to manage the proceeding and advise the patent owner of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.[36]

The notice for Setting the Time Period for Filing Patent Owner Preliminary Response will typically advise that (i) the patent owner may file a preliminary response to the petition within three months from the date of the Notice, (ii) the preliminary response is limited to setting forth the reasons why the requested review should not be instituted, and (iii) the patent owner may file an election to waive the preliminary response to expedite the proceeding.[37]   

If the Board determines that the petition fails to satisfy a requirement, the Board may send a Notice of Incomplete Petition and provide the petitioner with a set period (e.g., one month) to correct the identified deficiency.[38]  If the petitioner corrects the deficiency within the period of time, the petition will be accorded the filing date of the supplemental submission. If the deficiency is not corrected within the set period of time, the petition will be denied.

4.1.4    What Should You Include in the IPR Petition?

In order for a petition to be accorded a filing date, the petition must comply with all statutory requirements.[39]  In the case of IPRs, the petition must comply with 35 U.S.C. § 312, which requires a petition to, among other things, (1) be accompanied by payment of the IPR petition fee,[40] (2) identify all real parties–n-interest,[41] (3) identify, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.[42]

In addition to Section 312, for the PTAB to consider the petition, the petition must comply with requirements in 37 C.F.R. §§ 42.6, 42.8, 42.22, 42.24, 42.104 and 42.105.  Checklists have been provided as Appendices A and B, that may be used in verifying compliance with formalities and content requirements for an IPR petition.

If the petition complies with statutory requirements, but fails to comply with 37 C.F.R., the Office will accord a filing date of the original submission and notify the petitioner of the defects.[43]  The petitioner must then correct the defects within the time period set forth in the notice.

When preparing the petition, the petitioner should keep in mind that the Board “will address only the basis, rationale, and reasoning put forth by the Petitioner in the petition, and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner.”[44]

Although the petitioner has wide latitude in how the case is presented, the Board recommends that the petitioner should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record. Another factor to keep in mind is that the judges of the Board are familiar with the general legal principles involved in issues which come before the Board. Accordingly, extended discussions of general patent law principles are not necessary.[45]

The following is an example of an outline that may be used for an IPR petition:

 

  1. Introduction
    1. Brief overview of the patent being challenged
    2. Brief overview of the prosecution history of the patent
  2. Grounds for standing (see 37 C.F.R. § 42.104(a))
  3. Mandatory notices (see 37 C.F.R. §§ 42.8, 42.104)
    1. Real party-in-interest (see 37 C.F.R. §§ 42.8(b)(1), 42.104)
    2. Related matters (see 37 C.F.R. §§ 42.8(b)(2), 42.104)
    3. Lead and backup counsel and service information (see 37 C.F.R. §§ 42.8(b)(3), 42.104)
    4. Notice of Service Information (see 37 C.F.R. § 42.8(b)(4))
  4. Statement of precise relief requested for each claim challenged (see 37 C.F.R. §§ 42.22(b), 42.104)
    1. Identification of the challenge (see 37 C.F.R. § 42.104(b))
    2. Statement of non-redundancy
  5. Level of ordinary skill in the art
  6. Claim construction (see 37 C.F.R. § 42.104(b)(3))
  7. Scope and content of the prior art
    1. Relevant overview and summary of each prior art reference
  8. Grounds of unpatentability (see 37 C.F.R. §42.104(b)(2), (b)(4))
    1. Statement of the prior art prior to the earliest effective date of patent
    2. Each ground of unpatentability, demonstrating reasonable likelihood of prevailing against the challenged claims
  9. Conclusion

4.1.4.1             Introduction

While not required, the petition should begin with a brief introduction.  The introduction should identify the petitioner and the relief the petitioner desires.  For instance, the introduction may begin by stating: “NewCo, Inc. petitions for inter partes review (“IPR”), seeking cancellation of claims 1-10 (“the challenged claims”) of U.S. Patent No. 9,876,543 to Patentee et al. (“the ’543 patent”) (Ex. 1001), which is owned by Patent Holder Inc.”

 

The introduction should include a general overview of the petition, including an executive summary of the underlying patent, the prosecution history of the application that issued into the patent, and the overarching basis for invalidity of the patent.  Since the prosecution history of a patent can sometimes be extensive, the summary should focus on those portions of the prosecution file that are germane to the challenge.

4.1.4.1.1          Patent Overview

The patent overview should provide a brief summary of the patent, including the subject matter claimed in the challenged claims.  The summary should inform the Board of the subject matter generally covered in the patent, as well as the subject matter claimed in the challenged claims that the Patent Owner is likely to rely on in defending against the challenge.

4.1.4.1.2          Patent Prosecution History Overview

A well-drafted overview of the patent prosecution history should help the Board identify issues that are likely to be material in the IPR proceedings.  The overview should also help the Board understand any milestones that may have occurred during prosecution of the underlying patent application. Examples of milestones may include instances of claim scope disavowal, claim term definitions, descriptions of the state of the art, to name a few.

4.1.4.2             Grounds for Standing

Under 37 C.F.R. § 42.104(a), the petitioner must certify that the patent for which review is sought is available for IPR and that the petitioner is not barred or estopped from requesting an IPR challenging the patent claims on the grounds identified in the petition.  The petitioner’s certification may be satisfied by simply stating in the petition that, e.g., the “Petitioner certifies that (1) the ’543 patent is available for IPR and (2) Petitioners are not barred or estopped from requesting IPR of any claim of the ’543 patent.”

35 U.S.C. § 315 bars institution of an IPR where, before the filing of the petition, “the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent,”[46] or where the petition “is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”[47]  Section 315 also bars institution of an IPR on grounds that were raised or reasonably could have been raised during a prior IPR that resulted in a final written decision under 35 U.S.C. § 318(a).[48]  In determining privity, the Board has held that privity under § 315(b) is not determined only at the time of service of a complaint alleging infringement, but may exist where the petitioner becomes a privity after service.[49]

4.1.4.3             IPR Petition Fee

In order for the PTAB to consider an IPR petition, the petition must be accompanied by payment of the fee established by the Director.[50]  The established fee has four components, including: (1) a fee for the IPR request; (2) a fee for the IPR post-institution; (3) a fee for each claim in excess of 20 in the underlying patent; and (4) a post-institution request fee for each claim in excess of 15 in the underlying patent.[51]  Failure to pay the required IPR fee will likely result in refusal by the Board to accord a filing date to the petition.[52]  However, insufficient payment of IPR fees, can result in refusal by the Board to consider less than all claims challenged in the petition.

In FLIR Systems, Inc., the Petitioner filed the IPR petition on October 16, 2014 challenging 16 claims, but paid a fee of $23,000 for only 15 claims.[53]  The PTAB informed the Petitioner of the deficiency on November 7, 2014 and the Petitioner filed an authorization to charge fees to Petitioner’s deposit account on November 10, 2014.  The PTAB accorded a filing date of October 16, 2014, following submission of the fee authorization.  The Board ordered the Petitioner to state which dependent claim it was withdrawing from consideration, thereby reducing the number of claims challenged to the claims paid for with the petition filed on October 16, 2014.[54]

4.1.4.4             Mandatory Notices

37 C.F.R. § 42.8 requires that the IPR petition include, as part of the petition, notices identifying the real party-in-interest, related matters, lead and backup counsel, and service information.  If any change occurs to the identified information after a petition is filed, the petitioner is required to submit a notice to the Board within 21 days of the change of the information.[55]

 

 

4.1.4.4.1          Real Party-in-Interest 

 

The IPR petition must include a mandatory notice identifying the “real party in interest.”[56]  As noted by the PTAB in Intellectual Ventures Management, IPR2012-00018, Paper No. 12, “[a] petition for inter partes review may be considered only if, among other requirements, the petition identifies all real parties in interest.”[57]  Failing to identify all real parties-in-interest will result in loss of filing date for the IPR petition.[58] Generally, the real parties-in-interest identified in the petition are presumed to be correct.[59] The presumption, however, may be rebutted by the patent owner upon submission of sufficient evidence that reasonably brings into question the accuracy of the petitioner’s identification of real parties-in-interest.[60]

The Board distinguished a “real party in interest” in IPR proceedings and under the Federal Rules of Civil Procedure, Rule 7.1, noting that that the petitioner Xilinx had “not demonstrated that the considerations of whether a non-party is a party in interest for an inter partes review proceeding are the same or even similar to those considerations or requirements of … Federal Rule of Civil Procedure 7.1.”[61]  The PTAB noted that “[t]he Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest.  Considerations may include whether a non-party exercises control over a petitioner’s participation in a proceeding.  Other considerations may include whether a non-party is funding the proceeding or directing the proceeding.”[62]

Under the Office Patent Trial Practice Guide,

[t]he core functions of the ‘‘real party-in-interest” and “privies” requirement to assist members of the Board in identifying potential conflicts, and to assure proper application of the statutory estoppel provisions. The latter, in turn, seeks to protect patent owners from harassment via successive petitions by the same or related parties, to prevent parties from having a “second bite at the apple,” and to protect the integrity of both the USPTO and Federal Courts by assuring that all issues are promptly raised and vetted…. The USPTO will apply traditional common-law principles with these goals in mind and parties will be well-served to factor in these considerations when determining whom to identify.

Whether a party who is not a named participant in a given proceeding nonetheless constitutes a “real party-in-interest” or “privy” to that proceeding is a highly fact-dependent question. See generally Taylor v. Sturgell, 553 U.S. 880 (2008); 18A Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice & Procedure §§ 4449, 4451 (2d ed. 2011) (hereinafter “Wright & Miller). Such questions will be handled by the Office on a case-by-case basis taking into consideration how courts have viewed the terms “real party-in-interest” and “privy.” See, e.g., Taylor, 553 U.S. at 893–895 and 893 n.6 (noting that “[t]he list that follows is meant only to provide a framework [for the decision], not to establish a definitive taxonomy”). Courts invoke the terms “real party-in-interest” and “privy” to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Accordingly, courts have avoided rigid definitions or recitation of necessary factors.  Similarly, multiple Federal Rules invoke the terms without attempting to define them or what factors trigger their application. See, e.g., Fed. R. Civ. P. 17; Fed. Cir. R. 47.4.

The typical common-law expression of the “real party-in-interest” (the party “who, according to the governing substantive law, is entitled to enforce the right”) does not fit directly into the AIA trial context. See 6A Charles Alan Wright, Arthur R. Miller, Mary Kay Kane, & Richard L. Marcus, Federal Practice & Procedure Civil section 1543 (3d ed. 2011) (discussing Fed. R. Civ. P. 17). That notion reflects standing concepts, but no such requirement exists in the IPR or PGR context, although it exists in the CBM context. In an IPR or PGR proceeding, there is no “right” being enforced since any entity (other than the patent owner) may file an IPR or PGR petition. However, the spirit of that formulation as to IPR and PGR proceedings means that, at a general level, the “real party-in-interest” is the party that desires review of the patent. Thus, the “real party-in-interest” may be the petitioner itself, and/or it may be the party or parties at whose behest the petition has been filed. In this regard, the Office’s prior application of similar principles in the inter partes reexamination context offers additional guidance. See generally In re Guan et al. Inter Partes Reexamination Proceeding, Control No. 95/001,045, Decision Vacating Filing Date (Aug. 25, 2008). Similar considerations apply to CBM proceedings, although the statute governing those proceedings also requires that the party seeking the proceeding, or its real party-in-interest or privy, have been sued for infringing the subject patent, or been charged with infringement under that patent.

The notion of “privity” is more expansive, encompassing parties that do not necessarily need to be identified in the petition as a “real party-in-interest.” The Office intends to evaluate what parties constitute “privies” in a manner consistent with the flexible and equitable considerations established under federal caselaw. Ultimately, that analysis seeks to determine whether the relationship between the purported “privy” and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels. This approach is consistent with the legislative history of the AIA, which indicates that Congress included “privies” within the parties subject to the statutory estoppel provisions in an effort to capture “the doctrine’s practical and equitable nature,” in a manner akin to collateral estoppel. In that regard, the legislative history endorsed the expression of “privy” as follows:

The word “privy” has acquired an expanded meaning. The courts, in the interest of justice and to prevent expensive litigation, are striving to give effect to judgments by extending “privies” beyond the classical description. The emphasis is not on the concept of identity of parties, but on the practical situation. Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case; there is no universally applicable definition of privity. The concept refers to a relationship between the party to be estopped and the unsuccessful party in the prior litigation which is sufficiently close so as to justify application of the doctrine of collateral estoppel.

154 Cong. Rec. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (citing Cal. Physicians’ Serv. v. Aoki Diabetes Research Inst., 163 Cal.App.4th 1506 (Cal. App. 2008)); see also 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (incorporating prior 2008 statement). Subsequent legislative history expanded on the prior discussion of “privy” by noting that “privity is an equitable rule that takes into account the ‘practical situation,’ and should extend to parties to transactions and other activities relating to the property in question.” 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl). There are multiple factors relevant to the question of whether a non-party may be recognized as a “real party-in-interest” or “privy.” See, e.g., Taylor, 553 U.S. at 893–895 and 893 n.6 (noting that “[t]he list that follows is meant only to provide a framework [for the decision], not to establish a definitive taxonomy”). A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding. See, e.g., id. at 895; see generally Wright & Miller section 4451. The concept of control generally means that “it should be enough that the nonparty has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.” Wright & Miller § 4451. Courts and commentators agree, however, that there is no “bright-line test” for determining the necessary quantity or degree of participation to qualify as a “real party-in-interest” or “privy” based on the control concept.  Gonzalez v. Banco Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994). See also Wright & Miller section 4451 (“The measure of control by a nonparty that justifies preclusion cannot be defined rigidly.”). Accordingly, the rules do not enumerate particular factors regarding a “control” theory of “real party-in-interest” or “privy” under the statute.

Additionally, many of the same considerations that apply in the context of “res judicata” will likely apply in the “real party-in-interest” or “privy” contexts. See Gonzalez, 27 F.3d at 759; see generally Wright & Miller section 4451. Other considerations may also apply in the unique context of statutory estoppel. See generally, e.g., In re Arviv Reexamination Proceeding, Control No. 95/001,526, Decision Dismissing section 1.182 and section 1.183 Petitions, at 6 (Apr. 18, 2011); In re Beierbach Reexamination Proceeding, Control No. 95/000,407, Decision on section 1.182 and section 1.183 Petitions, at 6 (July 28, 2010); In re Schlecht Inter Partes Reexamination Proceeding, Control No. 95/001,206, Decision Dismissing Petition, at 5 (June 22, 2010); In re Guan Inter Partes Reexamination Proceeding, Control No. 95/001,045, Decision Vacating Filing Date, at 8 (Aug. 25, 2008).

The Office has received requests to state whether particular facts will qualify a party as a “real party-in-interest” or “privy.” Some fact-combinations will generally justify applying the “real party-in-interest” or “privy” label. For example, a party that funds and directs and controls an IPR or PGR petition or proceeding constitutes a “real party-in-interest,” even if that party is not a “privy” of the petitioner [emphasis added]. But whether something less than complete funding and control suffices to justify similarly treating the party requires consideration of the pertinent facts. See, e.g., Cal. Physicians, 163 Cal. App. 4th at 1523–25 (discussing the role of control in the “privy” analysis, and observing that “preclusion can apply even in the absence of such control”). The Office will handle such questions on a case-by-case basis taking into consideration how courts have viewed the terms. Similarly, while generally a party does not become a “real party-in-interest” or a “privy” of the petitioner merely through association with another party in an unrelated endeavor, slight alterations in the facts, as well as consideration of other facts, might result in a different conclusion. So, for example, if Trade Association X files an IPR petition, Party A does not become a “real party-in-interest” or a “privy” of the Association simply based on its membership in the Association. Similarly, if Party A is part of a Joint Defense Group with Party B in a patent infringement suit, and Party B files a PGR petition, Party A is not a “real party-in-interest” or a “privy” for the purposes of the PGR petition based solely on its participation in that Group. That is not to say that Party A’s membership in Trade Association X, or the Joint Defense Group, in those scenarios is irrelevant to the determination; deeper consideration of the facts in the particular case is necessary to determine whether Party A is a “real party-in-interest” or a “privy” of the petitioner. Relevant factors include: Party A’s relationship with the petitioner; Party A’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. In short, because rarely will one fact, standing alone, be determinative of the inquiry, the Office cannot prejudge the impact of a particular fact on whether a party is a “real party-in-interest” or “privy” of the petitioner.[63]

While there is no bright line test for determining a “real party-in-interest,” it is clear from the Office Patent Trial Practice Guide and the Board’s decisions that any entity that exercises control over a petitioner’s participation in a proceeding, or that funds or directs the proceeding or directing must be identified as a “real party-in-interest.”  In determining whether an entity should be identified a real party-in-interest, the Board has noted six factors that are relevant to determining the real party-in-interest (citing the Practice Guide at 48, 759 and Taylor v. Sturgell, 553 U.S. 880 (2008)), including:

(1) whether the third party agrees to be bound by the determination of issues in the proceeding;

(2) whether a pre-existing substantive legal relationship with the party named in the proceeding justifies binding the third party;

(3) “in certain limited circumstances,” whether the third party is adequately represented by someone with the same interests;

(4) whether the third party exercised or could have exercised control over the proceeding;

(5) whether the third party is bound by a prior decision and is attempting to rehear the matter through a proxy; and

(6) whether a statutory scheme forecloses successive hearing by third parties.[64]

The Board emphasized that “[a] common focus of inquiry is the fourth factor, namely whether the third party exercised or could have exercised control over the proceeding. But ‘[c]ourts and commentators agree . . . that there is no bright-line test for determining the necessary quantity or degree of participation to qualify as a ‘real party-in-interest’ . . . based on the control concept.’ (Citing to Office Patent Trial Practice Guide at 48,759 and Gonzalez v. Banco Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994)).[65]  In deciding whether to identify a non-party as a real party-in-interest, the Board noted that consideration should be given to the “existence of a financially controlling interest in the petitioner … the non-party’s relationship with the petitioner; the nonparty’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition.”[66] An unnamed party is a real party-in-interest where there is “availability of a significant degree of effective control in the prosecution or defense of the case–what one might term, in the vernacular, the power–whether exercised or not–to call the shots.”[67]

As an example of the potential consequences for failing to identify all real parties-in-interest, the Board terminated IPRs of five patents related to food bottling after finding the petitioner, GEA Process Engineering Inc.’s legal costs for the IPRs were charged to an Italian sister company, GEA Procomac SpA, that was not listed as a party in the IPR.[68] Failing to list a real party-in-interest can result in a petition being considered “incomplete,” thereby not being entitled to a filing date.[69]

If the petition is not barred by one of the other statutory provisions, the deficiency can be corrected by filing an updated notice listing all real parties-in-interest.  A “new filing date will be set as of the date the updated mandatory notice is filed.”[70]

However, under certain circumstances misidentification of real parties-in-interest may be correctable without according a new filing date, even if the correction is made after the 1-year window set forth under Section 315(b). For instance, in several IPRs instituted against Magna Electronics Inc., the petitioners incorrectly identified Valeo Inc. as a real-party-interest, but failed to identify its successor in interest, Valeo North America Inc.  The identified party Valeo Inc. ceased to exist as a result of a merger and name change, which resulted in the formation of the non-party Valeo North America Inc.[71]

The petitioners argued that they did not learn of the name change from Valeo Inc. to Valeo North America Inc. until recently and then promptly updated their mandatory notices[72]. The petitioners further argued that correction did not prejudice the patent owner “as all real parties in interest known to the Petitioners were properly identified at the time the petitions were filed,” and that any error was minor “because the current entities are legal successors to their original entities.”[73]

The Board agreed with the petitioners, noting that “the Petition was correct substantively, in that it identified the real party of interest.”  The Board reasoned that “Valeo North America, Inc. is the legal successor to Valeo, Inc.”[74]

4.1.4.4.2          Notice of Related Matters

 

In accordance with 37 C.F.R. § 42.8(b)(2), the petition must identify all other judicial and administrative matters that would affect, or be affected by, a decision in an IPR proceeding.  Judicial matters include actions involving the patent in federal court.[75]  Administrative matters include every application and patent claiming, or which may claim, the benefit of the priority of the filing date of the party’s involved patent or application, as well as any ex parte and inter partes reexaminations for an involved patent.[76]  The notice must include all district court, International Trade Commission (ITC), and USPTO matters that relate to the challenged patent.

If there are no related matters, then the petition must state that there are no related matters.[77]  Failure to state that there are no related matters will likely result in a Notice of Defective Petition being sent by the Board.[78]  The Board may give the petitioner a set period (e.g., 5 business days) from the notice to correct the error.[79]

4.1.4.4.3          Lead and Back-Up Counsel

 

Pursuant 37 C.F.R. § 42.10(a), “[i]f a party is represented by counsel, the party must designate a lead counsel and a back-up counsel who can conduct business on behalf of the lead counsel.” The petition must identify the names of the lead and backup counsel, as well as service information for both the lead and backup counsel.[80]  The petition must also be accompanied with a power of attorney, designating the counsel.[81]  However, an additional power of attorney should not be filed if the designated counsel is already counsel of record in the subject patent.[82]

Under 37 C.F.R. § 42.10(d), the Board may disqualify counsel for cause after notice and opportunity for rehearing.  A disqualification decision, however, is not final for the purposes of judicial review until certified by the Chief Administrative Patent Judge.[83]

Should counsel desire to withdraw from the proceeding, he/she must first request authorization from the Board to withdraw.[84]

Failure to identify lead and back-up counsel in the petition or a separate paper will likely result in a Notice of Defective Petition being sent by the Board.[85] The Board will likely give the petitioner a shortened period, such as 5 business days from the notice to correct the error.[86]

4.1.4.4.3.1       Pro hac vice Admission

The Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, and subject to the requirement that lead counsel is a registered practitioner.[87]  While lead counsel must be a registered practitioner, the Board has broad discretion to recognize non-registered counsel pro hac vice upon a showing of good cause, and any other conditions as the Board may impose.[88]

For instance, where the lead counsel is a registered practitioner, a non-registered practitioner may be admitted pro hac vice by the Board on motion, where the non-registered practitioner shows that he/she is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.[89] The party moving for pro hac vice admission bears the burden of showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding.[90]

In authorizing motions for pro hac vice, the Board may require the parties to provide a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice and an affidavit or declaration of the individual seeking to appear.[91] For instance, in Unified Patents, Inc., the PTAB required the motion for pro hac vice admission to:

    1. include a statement of facts showing good cause for the Board to recognize counsel pro hac vice during the proceeding;
    2. be accompanied by an affidavit or declaration of the individual seeking to appear attesting to the following:
      1. Membership in good standing of the Bar of at least one State or the District of Columbia;
      2. No suspensions or disbarments from practice before any court or administrative body;
      3. No application for admission to practice before any court or administrative body ever denied;
      4. No sanctions or contempt citations imposed by any court or administrative body;
      5. The individual seeking to appear has read and will comply with the Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
      6. The individual will be subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.01 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
      7. All other proceedings before the Office for which the individual has applied to appear pro hac vice in the last three (3) years; and
      8. Familiarity with the subject matter at issue in the proceeding.
  • Where the affiant or declarant is unable to provide any of the information requested above in part 2(b) or make any of the required statements or representations under oath, the individual should provide a full explanation of the circumstances as part of the affidavit or declaration.[92]

 

In Bloomberg Inc., CBM2013-00005, the Board granted pro hac vice admission where the patent owner, Markets-Alert Pty Ltd, submitted a motion stating that “Counsel, …, is an experienced litigator and has an established familiarity with the subject matter at issue in the proceeding,” and supported the motion with counsel’s declaration stating that counsel is (i) a member in good standing of a state Bar, (ii) admitted to practice in a federal court, (iii) a member of a local intellectual property law association, (iv) has been in private practice and litigating patent cases, and (v) is lead counsel in a related district court litigation.[93]

On the other hand, in SAP America, Inc., CBM2012-00001, the Board denied pro hac vice admission to counsel where the Patent Owner was unable to persuade the Board that the counsel’s admission would not affect compliance with a protective order in related district court litigation[94]. In that case, the petitioner, SAP, opposed the counsel’s pro hac vice admission, stating that the counsel’s participation could effectively circumvent the restrictions of the underlying district court’s protective order.[95]  “To better understand what, if any, impact the district court’s protective order … [had upon the] proceeding, the Board requested additional information regarding the protective order.”[96] After some thought, the Board denied the Patent Owner’s motion for pro hac vice admission, because the motion and counsel’s declaration in support thereof were premised in apart on counsel’s position as lead counsel in the related district court litigation and did not “address or mention the district court’s finding of a pattern of protective order violations in the related litigation.”[97]

4.1.4.4.3.2       Timing for Pro hac vice Admission

As noted by the PTAB in Unified Patents, “the time for filing pro hac vice motions is no sooner than twenty one (21) days after service of the petition, which is the time for filing patent owner mandatory notices.”[98]    However, “[p]arties seeking to oppose a motion for pro hac vice admission must file their opposition no later than one week after the filing of the underlying motion.” [99]

4.1.4.4.4          Notice of Service Information

The petition must include service information.[100]  The service information should include (if applicable) an email address, a postal mailing address, a hand-delivery address (if different from the postal mailing address), a telephone number and a facsimile number.[101]  The petition may indicate whether the petitioner consents to electronic service.[102]

37 C.F.R. § 42.105 requires that, in addition to meeting the requirements set forth in § 42.6, the petitioner must serve the petition and exhibits on the patent owner at the correspondence address of record for the subject patent.[103] The petitioner may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service.[104]

In Micron Technology, Inc. v. e.Digital Corp., the petitioner served papers on the patent owner’s prior patent counsel with a courtesy copy provided to patent owner’s litigation counsel.[105]  The Board concluded that the service on the patent owner’s prior patent counsel was ineffective, but found that the statutory requirement under 35 U.S.C. § 315(a)(5) was met because the “courtesy copy” provided to patent owner’s litigation counsel was a copy provided “to the designated representative of the patent owner.”[106]

Where the parties have agreed, service may be made electronically.[107] Service may also be made by EXPRESS MAIL® or by means as fast and reliable as EXPRESS MAIL®.[108]  Personal service is not required.[109]

4.1.4.5             Statement of Relief Requested

The petition must include a statement of the precise relief petitioner requests.[110]  The petition must identify, with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.[111]  The evidence should include copies of the patents and printed publications that the petitioner relies upon in support of the petition, and any affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.[112]

 

 

4.1.4.5.1          Identification of Challenge

 

The petitioner should identify all of the claims that the petitioner challenges in the petition.  For instance, the petitioner may state: “Petitioner challenges claims 1-18 and 23-36 of the ’123 patent, and requests review of those claims under 35 U.S.C. § 311.”

The petitioner may summarize all of the petitioner’s grounds of challenge in a table. For instance, the petitioner may summarize the grounds as follows:  “Petitioner’s grounds of challenge are that each of the claims 1-18 and 23-36 should be cancelled as unpatentable as follows:

GroundClaimsDescription
11-18Anticipated and obvious over US 1,234,567
223-36Obvious over Reference 1 in view of Reference 2
31-18 and 23Obvious over Reference 3 in view of Reference 4

 

In support of these grounds of unpatentability, this Petition is accompanied by the declarations of Dr. Expert One.”

For purposes of 35 U.S.C. § 318(a), the Board has interpreted “claim challenged” or “challenged claims” to refer to only those claims for which IPR is instituted.[113]

4.1.4.5.2          Statement of Non-Redundancy

 

While not required, it may be helpful in certain instances to include a brief statement of non-redundancy together with supporting rationale.  Such a statement may be helpful where the petition includes multiple grounds of rejection based on prior art that could be considered to include overlapping teachings.  The Board has cautioned “that multiple grounds, which are presented in a redundant manner by a petitioner who makes no meaningful distinction between them, are contrary to the regulatory and statutory mandates, and therefore are not all entitled to consideration.”[114]

In Liberty Mutual Insurance Co., the Board identified two types of redundancy, which it referred to as “horizontal” and “vertical” redundancies.[115]  The Board defined “horizontal” redundancy to involve a plurality of prior references that are “applied not in combination to complement each other but as distinct and separate alternatives….  [a myriad of references that] provide essentially the same teaching to meet the same claim limitation, and the associated arguments do not explain why one reference more closely satisfies the claim limitation at issue in some respects than another reference, and vice versa.”[116]  It defined “vertical” redundancy to involve “a plurality of prior art applied both in partial combination and in full combination.[117]  In the former case, fewer references than the entire combination are sufficient to render a claim obvious, and in the latter case the entire combination is relied on to render the same claim obvious.”[118]  The Board cautioned that “[t]here must be an explanation of why the reliance in part may be the stronger assertion as applied in certain instances and why the reliance in whole may also be the stronger assertion in other instances.  Without a bi-directional explanation, the assertions are vertically redundant.”[119]

Thus, when analyzing “the petition on a claim-by-claim, ground-by-ground basis, to eliminate redundant grounds,” the Board may eliminate those grounds the petitioner regards to be stronger and consider those grounds the petitioner may regard to be weaker.[120]

In supporting a statement of horizontal non-redundancy, the petition may explain why the references are not identical, and describe, e.g., why each reference more closely satisfies a claim limitation at issue in some respects than other references, and vice versa.[121] As noted by the Board in Liberty Mutual Insurance Co., “[b]ecause the references are not identical, each reference has to be better in some respect or else the references are collectively horizontally redundant.”[122]

Regarding the statement of vertical non-redundancy, where the grounds of unpatentability are based on “a plurality of prior art applied both in partial combination and in full combination,” the petition should explain “why the reliance in part may be the stronger assertion as applied in certain instances and why the reliance in whole may also be the stronger assertion in other instances.  Without a bi-directional explanation, the assertions are vertically redundant.”[123]

4.1.4.6             Level of Ordinary Skill in the Art

Where the petition includes at least one ground of rejection under 35 U.S.C. § 103, the petition should set forth the level of ordinary skill in the art related to the challenged patent at the time of the earliest effective date of the patent.  The statement should be supported by, for example, expert testimony in the form of a supporting affidavit or declaration.

4.1.4.7             Claim Construction

The petition must identify how the challenged claims are to be construed, and, where a claim contains a means-plus-function or step-plus-function limitation, the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.[124]  Where the petitioner believes claim terms should be presumed to take on their ordinary and customary meaning, then petitioner should so state.[125] That ordinary and accustomed meaning applies unless the inventor, as a lexicographer, has set forth a special meaning for a term.[126]

For instance, the petitioner may state: “The claim terms in the ’123 patent are presumed to take on their ordinary and customary meaning based on the ‘broadest reasonable construction in light of the specification of the patent in which it appears.’ 37 C.F.R. § 42.100(b) and Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 49766 (Aug. 14, 2012).  Petitioner sets forth the construction of the following claim phrases according to their broadest reasonable interpretation.”  The petitioner may then proceed to identify those claim terms that should be construed in a manner different from the ordinary and customary meaning of the words that make up the claim term, supporting the proposed construction with supporting evidence, including citations to relevant portions of the patent specification, where possible.

Consistent with the statute and the legislative history of the AIA, the Board will interpret claims using the broadest reasonable construction[127]. There is a “heavy presumption” that a claim term carries its ordinary and customary meaning[128]. However, as further explained by the Federal Circuit: “[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.”[129]

4.1.4.7.1          Broadest Reasonable Interpretation Standard

 

As noted by the Federal Circuit in In re Cuozzo Speed Technologies, LLC, Appeal No. 2014-1301, 11 (Fed. Cir. 2015), “[t]he America Invents Act (‘AIA’) created IPR, but the statute on its face does not resolve the issue of whether the broadest reasonable interpretation standard is appropriate in IPRs; it is silent on the issue.”  However, as noted by the court, “the statute conveys rulemaking authority to the PTO … and the PTO has promulgated 37 C.F.R. § 42.100(b), which provides that ‘[a] claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears’.”[130]

“Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure.”[131]  “An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision.”[132]  “In the absence of such a definition, limitations are not to be read from the specification into the claims.”[133]

4.1.4.7.2          Ordinary and Customary Meaning Standard

The Federal Circuit noted in In re Cuozzo Speed Technologies, “[t]he claims of an expired patent are the one exception where the broadest reasonable interpretation is not used [by the PTO] because the patentee is unable to amend the claims.”[134]  The Federal Circuit reasoned that expired patents should be treated differently from unexpired patents because the patentee is unable to make claim amendments in an expired patent.[135]  The Board has held that, “[i]n this circumstance, the Board’s review of the claims is similar to that of a district court…. Specifically, the claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record.”[136]

4.1.4.7.3          Claims Not Amenable to Construction

 

As noted in Microsoft Corp. v. Enfish, LLC, IPR2013-00559, slip op. 14 (PTAB Mar. 3, 2015), Paper 65, if the Board determines that a claim is not amenable to construction, the Board will terminate the proceeding with respect to that claim.

As explained in BlackBerry Corporation, IPR2013-00036, the specification must disclose enough of a specific algorithm to provide the necessary structure under § 112, sixth paragraph[137]. The Board reasoned that in the circumstance when the specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of the claims cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained.[138] The Board terminated the proceedings under 37 C.F.R. § 42.72, concluding that certain independent claims were not amenable to construction[139] The Board also terminated the proceedings with respect to the dependent claims because the dependent claims depended directly or indirectly from the independent claims[140].

4.1.4.8             Overview of Prior Art

As a practice point, the petitioner may consider including a summary of each prior art document relied upon for the grounds of rejection.  The summary should include citations to the relevant portions of the prior art documents, as well as any other documents that support the petitioner’s invalidity positions, including affidavits or declarations.

The petitioner should seriously consider engaging an expert witness and supporting all salient arguments with expert testimony.  While the rules do not require expert testimony, unsubstantiated attorney argument regarding the meaning of technical evidence is no substitute for competent, substantiated expert testimony.

4.1.4.9             Grounds of Unpatentability

To prevail in challenging claims of a patent in an IPR, the petition must demonstrate by a preponderance of the evidence that the claims are unpatentable.[141]

As a practice point, the petitioner should consider providing a description of the general background for the subject matter claimed in the challenged claims, with citations to supporting expert testimony.  The description should tell a story that will help the Board understand the evolution of the related technology/space leading up to the earliest effective date of the claimed subject matter.  The description should then summarize the state of the art of the challenged patent at the time of the earliest effective filing date.

4.1.4.9.1          Prior Art: Patents or Printed Publications 

 

Pursuant to 35 U.S.C. § 311(b), grounds of unpatentability in an IPR are limited to only those grounds that could be raised under 35 U.S.C. §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.  Whether a document qualifies as a “patent” is obvious.  However, whether a prior art document qualifies as a “printed publication” is a legal conclusion based on underlying factual determinations.[142]  Since a reference can be disseminated to the public in many ways, “public accessibility” has been called the touchstone in determining whether a reference constitutes a “printed publication.”[143]  According to the Federal Circuit, “[a] given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”[144]

When it comes to “printed publications,” the petitioner must show by a preponderance of the evidence that the reference in question was “published” and available to the public prior to the earliest effective filing date.[145]

4.1.4.9.2          Statement of the Prior Art Prior 

 

As a practice point, the petitioner may consider including a summary of each prior art document relied upon for the grounds of rejection.  The summary should include citations to the relevant portions of the prior art documents, as well as any other documents that support the petitioner’s invalidity positions, including affidavits or declarations.

The petitioner should seriously consider engaging an expert witness and supporting all salient arguments with expert testimony.  While the rules do not require expert testimony, unsubstantiated attorney argument regarding the meaning of technical evidence is no substitute for competent, substantiated expert testimony.

4.1.4.9.3          Expert Testimony

 

Supporting expert testimony goes a long way in this regard.  While patent judges may be able to read and understand the challenged patent and prior art without the benefit of expert testimony, they generally appreciate a summary of the state of the art relevant to the patent, as well as a summary of the evolution of the art leading up to the earliest effective date of the challenged patent.

Fed. R. Evid. 702 “provides that a witness qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion if (a) the expert’s knowledge will help the trier of fact to understand the evidence or to determine a fact in issue, (b) the testimony is based upon sufficient facts or data, (c) the testimony is the product of reliable principles and methods, and (d) the witness has applied the principles and methods reliably to the facts of the case.”[146]  Testimony by a witness on the issue of patentability is not admissible under Fed. R. Evid. 702 if the witness is not “qualified in the pertinent art.”[147]

To testify as an expert under Fed. R. Evid. 702 and 37 C.F.R. § 42.65, a witness does not have to be a person of ordinary skill in the art, but, rather, should be “qualified in the pertinent art.”[148]  In determining whether a person is qualified to be an expert in the pertinent art under Fed. R. Evid. 702, the Board advised in CaptionCall that there need not be “complete overlap between the witness’s technical qualifications and the problem confronting the inventor or the field of endeavor.”[149]

4.1.4.9.4          Demonstration of Each Ground for Unpatentability 

Since the Board “analyzes the petition on a claim-by-claim, ground-by-ground basis,” the petition should articulate each ground of rejection and demonstrate how each challenged claim is rendered unpatentable under the particular ground of rejection.[150]  The petition should include specific citations to the prior art patents and printed publications where each element of the claim is found[151].  The petitioner should consider including claim charts that map each and every limitation in the challenged claims to the identified prior art. Where the petition fails to address how the prior art individually or collectively meets every claim limitation, it is likely to be denied by the Board.[152]

4.1.4.9.5          Claim Charts

While note required, a petition may include a claim chart to explain clearly and succinctly what the petitioner believes a claim means in comparison to something else, such as another claim, a reference, or a specification.[153]  Where appropriate, claim charts can streamline the process of identifying key features of a claim and comparing those features with specific evidence.[154] Claim charts submitted as part of a petition count towards the page limits, but are not required to be double-spaced.[155]

4.1.4.10           Burden of Proof for Statutory Institution Threshold

The burden of proof in a proceeding before the Board is a preponderance of the evidence standard.[156]  The standard for instituting inter partes review is set forth in 35 U.S.C. § 314(a), which provides:

THRESHOLD — The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

Thus, in addition to meeting the formalities and content requirements of Part 42 of Title 37 C.F.R., the petition, together with all supporting documentation, should present sufficient grounds to persuade the Board that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the challenged claims.[157]

4.1.5    Will the IPR Proceedings Record be Publicly Available?

The rules aim to strike a balance between the public’s interest in maintaining a complete and understandable file history and the parties’ interest in protecting truly sensitive information.  Under the rules, the record of an IPR proceeding, including documents and things, shall be made available to the public, except as otherwise ordered.[158]  Accordingly, a document or thing will be made publicly available, unless the petitioner files a motion to seal that is then granted by the Board.[159] The rules identify confidential information in a manner consistent with Federal Rule of Civil Procedure 26(c)(1)(G), which provides for protective orders for trade secret or other confidential research, development, or commercial information.[160]

Petitioner, intending a document or thing to be sealed, may file a motion to seal concurrent with the filing of the document.[161]  The document or thing will be provisionally sealed on receipt of the motion and remain so pending the outcome of the decision on the motion by the Board.[162]

Petitioner may file a motion to seal and include a proposed protective order. If filing a motion to seal, the petitioner must include with its supporting papers a proposed protective order, signed by the petitioner or representative of record, certifying that the party accepts and agrees to the terms of the protective order.[163]  The proposed protective order shall remain in effect until superseded by a protective order entered by the Board.[164]

The following is an example of terms that may be included in the proposed protective order:

(1) Designation of Confidential Information. The producing party shall have the obligation to clearly mark as “PROTECTIVE ORDER MATERIAL” any documents or information considered to be confidential under the Protective Order.

(2) Persons Entitled to Access to Confidential Information. A party receiving confidential information shall strictly restrict access to that information to the following individuals who first have signed and filed an Acknowledgement as provided herein:

(A) Parties. Persons who are owners of a patent involved in the proceeding and other persons who are named parties to the proceeding.

(B) Party Representatives. Representatives of record for a party in the proceeding.

(C) Experts. Retained experts of a party in the proceeding who further certify in the Acknowledgement that they are not a competitor to any party, or a consultant for, or employed by, such a competitor with respect to the subject matter of the proceeding.

(D) In-house counsel. In-house counsel of a party.

(E) Other Employees of a Party. Employees, consultants, or other persons performing work for a party, other than in-house counsel and in-house counsel’s support staff, who sign the Acknowledgement, shall be extended access to confidential information only upon agreement of the parties or by order of the Board upon a motion brought by the party seeking to disclose confidential information to that person. The party opposing disclosure to that person shall have the burden of proving that such person should be restricted from access to confidential information.

(F) The Office. Employees and representatives of the U.S. Patent and Trademark Office who have a need for access to the confidential information shall have such access without the requirement to sign an Acknowledgement. Such employees and representatives shall include the Director, members of the Board and staff, other Office support personnel, court reporters, and other persons acting on behalf of the Office.

(G) Support Personnel. Administrative assistants, clerical staff, court reporters, and other support personnel of the foregoing persons who are reasonably necessary to assist those persons in the proceeding. Such support personnel shall not be required to sign an Acknowledgement, but shall be informed of the terms and requirements of the Protective Order by the person they are supporting who receives confidential information.

(3) Protection of Confidential Information. Persons receiving confidential information shall take reasonable care to maintain the confidentiality of that information, including:

(A) Maintaining such information in a secure location to which persons not authorized to receive the information shall not have access;

(B) Otherwise using reasonable efforts to maintain the confidentiality of the information, which efforts shall be no less rigorous than those the recipient uses to maintain the confidentiality of information not received from the disclosing party;

(C) Ensuring that support personnel of the recipient who have access to the confidential information understand and abide by the obligation to maintain the confidentiality of information received that is designated as confidential; and

(D) Limiting the copying of confidential information to a reasonable number of copies needed to conduct the proceeding and maintaining a record of the locations of such copies, which similarly must be kept secure.

(4) Treatment of Confidential Information. Persons receiving confidential information shall use the following procedures to maintain confidentiality of documents and other information—

(A) Documents and Information Filed With the Board.

(i) A party may file documents or information with the Board under seal, together with a non-confidential description of the nature of the confidential information that is under seal and the reasons why the information is confidential and should not be made available to the public. The submission shall be treated as confidential and remain under seal, unless upon motion of a party and after a hearing on the issue, or sua sponte, the Board determines that the documents or information do not qualify for confidential treatment.

(ii) Where confidentiality is alleged as to some but not all of the information submitted to the Board, the submitting party shall file confidential and non-confidential versions of its submission, together with a Motion to Seal the confidential version setting forth the reasons why the information redacted from the non-confidential version is confidential and should not be made publicly available. The non-confidential version of the submission shall clearly indicate the locations of information that has been redacted. The confidential version of the submission shall be filed under seal. The redacted information shall remain under seal, unless upon motion of a party and after a hearing on the issue, or sua sponte, the Board determines that some or all of the redacted information does not qualify for confidential treatment.

(B) Documents and Information Exchanged Among the Parties. Information designated as confidential that is disclosed to another party during discovery or other proceedings before the Board shall be clearly marked as “PROTECTIVE ORDER MATERIAL” and shall be produced in a manner that maintains its confidentiality.

(5) Confidential Testimony. Any person providing testimony in a proceeding may, on the record during the testimony, preliminarily designate the entirety of the person’s testimony and all transcriptions thereof as confidential, pending further review. Within ten days of the receipt of the transcript of the testimony, that person, or that person’s representative, shall advise the opposing party of those portions of the testimony to which a claim of confidentiality is to be maintained, and the reasons in support of that claim. Such portions shall be treated as confidential and maintained under seal in any filings to the Board unless, upon motion of a party and after a hearing on the issue, or sua sponte, the Board determines that some or all of the redacted information does not qualify for confidential treatment.

(6) Other Restrictions Imposed By the Board. In addition to the foregoing, the Board may, in its discretion, include other terms and conditions in a Protective Order it enters in any proceeding.

(7) Requirement of Acknowledgement. Any person receiving confidential information during a proceeding before the Board shall, prior to receipt of any confidential information, first sign an Acknowledgement, under penalty of perjury, stating the following:

(A) The person has read the Protective Order and understands its terms;

(B) The person agrees to be bound by the Protective Order and will abide by its terms;

(C) The person will use the confidential information only in connection with that proceeding and for no other purpose;

(D) The person shall only extend access to the confidential information to support personnel, such as administrative assistants, clerical staff, paralegals, and the like, who are reasonably necessary to assist him or her in the proceeding. The person shall inform such support personnel of the terms and requirements of the Protective Order prior to disclosure of any confidential information to such support personnel and shall be personally responsible for their compliance with the terms of the Protective Order; and

(E) The person agrees to submit to the jurisdiction of the Office for purposes of enforcing the terms of the Protective Order and providing remedies for its breach.

(8) Duty To Retain Acknowledgements. Each party to the proceeding shall maintain a signed Acknowledgement from each person acting on its behalf who obtains access to confidential information after signing an Acknowledgement, as set forth herein, and shall produce such Acknowledgements to the Office upon request.

(9) Motion to Seal. A party may file an opposition to the motion that may include a request that the terms of the proposed Protective Order be modified including limiting the persons who are entitled to access under the Order. Any such opposition shall state with particularity the grounds for modifying the proposed protective order. The party seeking the modification shall have the burden of proving that such modifications are necessary. While the motion is pending, no disclosure of confidential information shall be made to the persons for whom disclosure is opposed, but the filing of the motion shall not preclude disclosure of the confidential information to persons for whom disclosure is not opposed and shall not toll the time for taking any action in the proceeding.

(10) Other Proceedings. Counsel for a party who receives confidential information in a proceeding will not be restricted by the Board from representing that party in any other proceeding or matter before the Office. Confidential information received in a proceeding, however, may not be used in any other Office proceeding in which the providing party is not also a party.

(11) Disposal of Confidential Information. Within one month after final termination of a proceeding, including any appeals, or within one month after the time for appeal has expired, each party shall assemble all copies of all confidential information it has received, including confidential information provided to its representatives and experts, and shall destroy the confidential information and provide a certification of destruction to the party who produced the confidential information.[165]

The terms of a protective order take effect upon the filing of a Motion to Seal by a party, and remain in place until lifted or modified by the Board either on the motion of a party for good cause shown or sua sponte by the Board.[166] The terms govern the treatment of the confidential portions of documents, testimony, and other information designated as confidential, as well as the filing of confidential documents or discussion of confidential information in any papers filed with the Board.[167] The Board shall have the authority to enforce the terms of the Protective Order, to provide remedies for its breach, and to impose sanctions on a party and a party’s representatives for any violations of its terms.[168]

4.1.6    Can You Join an Existing IPR?

Pursuant to 35 U.S.C. § 315(c), an IPR may be joined with another IPR.  Joinder may be requested by the patent owner or the petitioner.[169] However, any request for joinder must be filed as a motion under 37 C.F.R. § 42.22 within one month of institution of the IPR for which joinder is requested.[170]  The time period set forth in 37 C.F.R. 42.101(b) does not apply to petitions that are accompanied by a request for joinder.[171]

“A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review.”[172]

4.2       Initiating a Post-Grant Review Proceeding

Chapter 32 of Title 35 of the U.S.C., §§ 321-329 and Part 42, Subpart C, §§ 42.200-42.224 provide the framework for Post-Grant Review (PGR) proceedings. The statutes and rules that set the frame work for PGR proceedings are very similar to those for IPR proceedings, with at least two significant distinctions.  First, unlike IPR proceedings, claims of a patent in a PGR proceeding may be challenged on any ground that could be raised under paragraphs (2) or (3) of 35 U.S.C. § 282(b), relating to invalidity of the patent or any claim, including 35 U.S.C. §§ 101, 102, 103, and 112. Second, the petition for a PGR proceeding must be filed within the 9-month window beginning on the issue date of the patent to be challenged.[173]

4.3       Initiating a Covered Business Method Proceeding

AIA § 18 (related to 35 U.S.C. § 321) and Part 42, Subpart D, §§ 42.300-42.304 provide the framework for the Transitional Program for Covered Business Method Patents (CBM) proceedings.  Under AIA § 18, “[t]he transitional proceeding … shall be regarded as, and shall employ the standards and procedures of, a post-grant review under chapter 32 of title 35, United States Code, subject to” requirements outlined in § 18(a)(1)(A)-(E).[174] Section 18 limits review to persons or their privies that have been sued or charged with infringement of a “covered business method patent,” which does not include patens for “technological inventions.”[175]  As the moving party, the petitioner bears the burden of proving that it is entitled to the requested relief.[176]

4.3.1    Differences Between CBMs and IPRs

Unlike IPRs, CBMs are available under the transitional program set forth under AIA § 18 (related to 35 U.S.C. § 321) and 37 C.F.R. § 42.300 et seq.  The transitional program is scheduled to expire on September 15, 2020.[177]

4.3.1.1             Standing

“Section 18 of the AIA provides for the creation of a transitional program for reviewing covered business method patents. Section 18 limits review to persons or their privies that have been sued or charged with infringement of a “covered business method patent,” which does not include patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1).  37 C.F.R. § 42.302 states “[c]harged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that a petitioner would have standing to bring a declaratory judgment in Federal court.”[178]

4.3.1.2             Financial Product or Service

A covered business method patent is a patent that “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.”[179] The “legislative history explains that the definition of covered business method patent was drafted to encompass patents ‘claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.’”[180] According to the legislative history, “financial product or service” should be interpreted broadly.[181] To be eligible for CBM review, a patent need have only one claim that is directed to a covered business method.[182]

4.3.1.3             Technological Invention

“A covered business method patent is ‘a patent that claims a method or corresponding apparatus for performing data processing’ or other operations used in the practice, administration, or management of a financial product or service.”[183] “A covered business method patent ‘does not include patents for technological inventions.’”[184]  In determining whether a patent claim is for a technological invention, the Board will consider “whether the subject matter of a particular claim as a whole recites a technical feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution.”[185] The Board has noted “[t]he following claim drafting techniques, for example, typically do not render a patent a ‘technological invention’:”

(a) Mere recitation of known technologies, such as computer hardware, communication or computer networks, software, memory, computer-readable storage medium, scanners, display devices or databases, or specialized machines, such as an ATM or point of sale device.

(b) Reciting the use of known prior art technology to accomplish a process or method, even if that process or method is novel and non-obvious.

(c) Combining prior art structures to achieve the normal, expected, or predictable result of that combination.[186]

4.3.1.4             Applicability of § 101 Challenges

“Under the AIA, any ground that could be raised under §§ 282(b)(2) or (3) can be raised in a post-grant review or (with exceptions not relevant here) in a covered business method patent review. The final rules implementing post-grant review and covered business method patent review in the Federal Register state that the “grounds available for post-grant review include 35 U.S.C. [§§] 101 and 112, with the exception of compliance with the best mode requirement.”[187] This interpretation is consistent with both the relevant case law and the legislative history.[188] Thus, Section 101 is a proper ground for a review under the transitional program for covered business method patents.[189]

4.4       Effect of Post Grant Proceeding on other PTO Proceedings

4.4.1    Pending Patent Applications

Pursuant to 37 C.F.R. § 42.3(a), the Board has broad discretion to “exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order.”[190] An “involved” patent means a patent that is the subject of the post-grant proceeding.[191] The Board clarified in Chi Mei Innolux Corp., IPR2013-00028, however, that “involved” does not include pending patent applications that are progeny of the patent under review in the IPR.[192]

For example, in Chi Mei Innolux Corp. the Board refused to (1) take jurisdiction over, and suspend prosecution of two patent applications that were progeny of the patent under consideration in the IPR, or (2) review and authorize any further patent application filings, or claim changes to the applications prior to submitting such papers to the examiner handling the applications[193].  The Board declined to exercise jurisdiction because the progeny patent applications were not “involved, since those applications are not the subject of the proceeding.”[194] Regarding the petitioner’s alternative request (2), the Board denied the request, reasoning that the petitioner had “not explained how the claims currently present in either of the … applications are patentably indistinct from the claims of the involved 480 patent.”[195]

4.4.2    Ex Parte Reexamination

While the Board will not ordinarily stay an ex parte reexamination because, in absence of good cause reexaminations are conducted with special dispatch, it will likely stay the reexamination if conducting the reexamination concurrently with the IPR proceeding “would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings.”[196]

 

[1] 35 U.S.C. § 311(a) and 37 C.F.R. § 42.101.

[2] 35 U.S.C. § 315 and 37 C.F.R. § 42.101.

[3] 37 C.F.R. § 42.101(a).

[4] 37 C.F.R. § 42.101(b).

[5] 35 U.S.C. § 315(a)(1) and 37 C.F.R. 42.101(b).

[6] See Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022 (P.T.A.B. Mar. 12, 2013), Paper 20 (held “section 315(a) does not deprive the petitioner Isis of standing to bring the instant inter partes review” where Isis brought invalidity challenge as counterclaim in response to patent owner’s counterclaim of infringement in declaratory judgment action for non-infringement action initiated by Isis).

[7] See Ariosa Diagnostics, Paper 20 at 8.

[8] Id. at 2.

[9] Id.

[10] Id. at 4 and 8.

[11] See, e.g., VMWare, Inc. v. Good Technology Software, Inc., IPR2015-00027 (P.T.A.B. Mar. 6, 2015), Paper 11 (held “Because AirWatch, a privy of Petitioner, was served with the Complaint alleging infringement of the ’386 patent more than a year before the Petition challenging the ’386 patent was filed, … the Petition is not timely under § 315(b).”).

[12] See 35 U.S.C. § 314(d); In re Cuozzo Speed Technologies, LLC, Appeal No. 2014-1301, Slip Opinion at 6 (CAFC Feb. 4, 2015) (holding “that § 314(d) prohibits review of the decision to institute IPR even after final decision.  On its face, the provision is…written to exclude all review of the decision whether to institute review.” see also Zoll Lifecor Corp. v. Philips Electronics North America Corp., Appeal No. 2014-1588 (CAFC Aug. 25, 2014 Order).

[13] Motorola Mobility LLC v. Arnouse, IPR2013-00010 (P.T.A.B. Jan. 30, 2013), Paper 20.

[14] Id. at 6 (citing Rule 4(d)(4) of the Federal Rules of Civil Procedure).

[15] TRW Automotive US LLC v. Magna Electronics, Inc., IPR2014-00293 (P.T.A.B. Jun. 27, 2014), Paper 18.

[16] Id. at 10.

[17] Brinkmann Corp. v. A&J Manufacturing, LLC, IPR 2015-00056 (P.T.A.B. Mar. 23, 2015), Paper 10, at 7-8.

[18] Id. at 7.

[19] Id. at 7-8.

[20] Zoll Lifecor Corp. v. Philips Electronics North America Corp., Appeal No. 2014-1588 (CAFC Aug. 25, 2014 Order) at 4.

[21] 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b); 42.122(b); see also Kyocera Corp. v. Softview LLC, IPR2013-00004 (P.T.A.B. Apr. 24, 2013), Paper 15, at 3.

[22] Microsoft Corporation v. Proxyconn, Inc., IPR 2013-00109 (P.T.A.B. Feb. 25, 2013), Paper 15 at 4.

[23] Kyocera Corp., IPR2013-00004, Paper 15, at 4.

[24] 35 U.S.C. § 315(e).

[25] 35 U.S.C. § 311(c).

[26] 35 U.S.C. §§ 315(a)(1), (b).

[27] 35 U.S.C. § 315(b).

[28] 35 U.S.C. § 315(a)(1).

[29] 35 U.S.C. § 315(a)(3).

[30] 37 C.F.R. § 42.6(b)(1).

[31] See http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-review-processing-system-prps-0#heading-9.

[32] Id.; see also 37 C.F.R. 42.6(b).

[33] Id.

[34] Id.

[35] See e.g., CBS Interactive, Inc. v. Helfrerich Patent Licensing, LLC, IPR2013-00033, Paper 14 (P.T.A.B. Oct. 29, 2012).

[36] Id.

[37] Id.

[38] See e.g., Ariosa Diagnostics v. Isis Innovation Ltd., IPR 2012-00022, Paper 5 (P.T.A.B. Sep. 26, 2012).

[39] 37 C.F.R. § 42.106(a)

[40] 35 U.S.C. § 312(a)(1) and 37 C.F.R. §§ 42.103, 42.15.

[41] 35 U.S.C. § 312(a)(2) and 37 C.F.R. §§ 42.8, 42.104.

[42] 35 U.S.C. § 312(a)(3) and 37 C.F.R. § 42.104(b).

[43] See http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-review-processing-system-prps-0#heading-9.

[44] Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003, Paper 8, at 10; see also 37 C.F.R. § 42.20(c).

[45] Official Trial Practice Guide, 77 Fed. Reg. 157, 48763 (Aug. 14, 2012).

[46] 35 U.S.C. § 315(a)(1).

[47] 35 U.S.C. § 315(b).

[48] 35 U.S.C. § 315(e)(1).

[49] See, e.g., VMWare, Inc. v. Good Technology Software, Inc., IPR2015-00027 (PTAB Mar. 6, 2015), Paper 11.

[50] 35 U.S.C. § 312(a)(1); 37 C.F.R. §§ 42.15(a) and 42.106(a)(3).

[51] See 37 C.F.R. § 42.15(a).

[52] 37 C.F.R. § 42.103(b).

[53] FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2015-00065, slip. op. at 8 (PTAB Feb 25, 2015), Paper 25.

[54] Id.

[55] 37 C.F.R. § 42.8(a)(3); see also 35 U.S.C. § 312(a)(2).

[56] 35 U.S.C. § 312(a)(2) and 37 C.F.R. §§ 42.8 and 42.104.

[57] Intellectual Ventures Management, LLC v. Xilinx, Inc., IPR2012-00018 (P.T.A.B. Jan. 24, 2013), Paper No. 12, at 2.

[58] See Askeladden LLC v. Sean I. McGhie, IPR2015-00122 (P.T.A.B. Mar. 6, 2015), Paper 30.

[59] Id. at 8.

[60] Id.; see also 37 C.F.R. § 42.62(a) and Fed. R. Evid. 301.

[61] Id. at 3.

[62] Id., citing to 77 Fed. Reg. 157 (August 14, 2014) 48759-60.

[63] Office Patent Trial Practice Guide, 77 Fed. Reg. 157 (August 14, 2014) 48759-60; see also Cf. Fed. R. Civ. P. 17(a) (Advisory Committee Note to 1966 Amendment to Rule 17(a)) (“[T]he modern function of the rule in its negative aspect is simply to protect the defendant against a subsequent action by the party actually entitled to recover, and to insure generally that the judgment will have its proper effect as res judicata.”).

[64] Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453 (P.T.A.B. Jan. 6, 2015), Paper No. 88, at 8-9.

[65] Id. at 9.

[66] Zoll Lifecor Corp. v. Philips Electronics North America Corp., IPR2013-00606 (P.T.A.B. Mar. 20, 2014), Paper No. 13, see also Askeladden LLC v. Sean I. McGhie, IPR2015-00122 (PTAB Mar. 6, 2015), Paper 30.

[67] Gonzales, 27 F.3d at 758 (emphasis added).

[68] GEA Process Eng’g, Inc. v. Steuben Foods, Inc., IPR2014-00041 (P.T.A.B. Feb. 11, 2015), Paper No. 140.

[69] Petroleum Geo-Services Inc. v. Westerngeco LLC, IPR2014-00689 (P.T.A.B. Aug. 12, 2014), Paper No. 22.

[70] Id. at 6.

[71] See e.g., Valeo, Inc. v. Magna Electronics, Inc., IPR2014-01203 (P.T.A.B. Jul. 25, 2014), Paper No. 7.

[72] Id., Paper No. 10 (P.T.A.B. Nov. 18, 2014).

[73] Id. at 2.

[74] Valeo North America, Inc. v. Magna Electronics, Inc., IPR2014-01206 (P.T.A.B. Dec. 23, 2014), Paper No. 13.

[75] Office Patent Trial Practice Guide, 77 Fed. Reg. 157, at 48760 (Aug. 14, 2012).

[76] Id.

[77] See e.g., Macauto USA v. Baumeister & Ostler GmbH & Co., IPR2012-00004 (P.T.A.B. Sep. 27, 2012), Paper 6; see also 37 C.F.R. § 42.8(b)(2).

[78] Id.

[79] Id.

[80] 37 C.F.R. § 42.8(b)(3).

[81] 37 C.F.R. § 42.10(b).

[82] Id.

[83] 37 C.F.R. §42.10(d).

[84] 37 C.F.R. § 42.10(c).

[85] Macauto USA, IPR2012-00004, Paper 6; see also 37 C.F.R. §§ 42.8(b)(3), 42,10.

[86] Id.

[87] 37 C.F.R. § 42.10(c).

[88] Id.

[89] 37 C.F.R. § 42.10(c).

[90] SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001 (P.T.A.B. Nov. 16, 2015), Paper 21, at 4.

[91] Id. at 2.

[92] Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639 (P.T.A.B. Oct. 15, 2013), Paper 7, at 3-4.

[93] Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005 (P.T.A.B. Nov. 13, 2012), Paper 8.

[94] Id. at 3.

[95] Id.

[96] Id.

[97] Id. at 4.

[98] Unified Patents, Inc., IPR2013-00639, Paper 7, at 2-3.

[99] Id.

[100] 37 C.F.R. § 42.8(b)(4).

[101] 37 C.F.R. § 42.8(b)(4).

[102] 37 C.F.R. § 42.6(e)(1).

[103] 37 C.F.R. § 42.105(a).

[104] 37 C.F.R. § 42.105(a); see also Micron Technology, Inc. v. e.Digital Corp, IPR2015-00519 (PTAB Mar 24, 2015), Paper 14.

[105] Id.

[106] Id. at 4.

[107] See 37 C.F.R. § 42.105(b).

[108] Id.

[109] Id.

[110] 37 C.F.R. §§ 42.22 and 42.104(b).

[111] 35 U.S.C. § 312(a)(3).

[112] Id.

[113] Compass Bank v. Intellectual Ventures II LLC, IPR2014-00719 (P.T.A.B. Mar. 9, 2015), Paper 22, at 3.

[114] Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00003 (P.T.A.B. Oct. 25, 2012), Paper 7, at 2.

[115] Id. at 3.

[116] Id.

[117] Id.

[118] Id.

[119] Id.

[120] Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (P.T.A.B. Jun. 11, 2013), Paper 26, at 4-5.

[121] Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00003 (P.T.A.B. Oct. 25, 2012), Paper 7, at 2-3.

[122] Id.

[123] Id. at 3.

[124] 37 C.F.R. § 42.104(b)(3).

[125] Office Patent Trial Practice Guide, 77 Fed. Reg. 157, 48764 (Aug. 14, 2012).

[126] Phillips v. AWH Corp., 415 F.3d 1303, 1326 (Fed. Cir. 2005)(en banc); Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).

[127] Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 C.F.R. § 100(b); Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 (P.T.A.B. Dec. 21, 2012), Paper 17, at 12.

[128] CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)

[129] Id. (citation omitted).

[130] Id.

[131] Broadcom Corp. v. Wi-Fi One, LLC, IPR2013-00601 (P.T.A.B. Mar. 6, 2015), Paper 66 at 9 (citing In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)).

[132] Id. (citing In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)).

[133] Id. (citing In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)).

[134] In re Cuozzo Speed Technologies, LLC, 2014-1301, 13 (Fed. Cir. 2015) (citing Rambus, 753 F.3d at 1256 (“If, as is the case here, a reexamination involves claims of an expired patent, a patentee is unable to make claim amendments and the PTO applies the claim construction principles outlined by this court in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).”).

[135] Id.

[136]  Sega of America, Inc. v. Uniloc USA, Inc., CBM2014-00183 (PTAB Mar. 10, 2015), Paper 11, at 2 (citing In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) and Phillips v. AWH Corp., 415 F.3d 1303, 1313-17 (Fed. Cir. 2005)(en banc)).

[137] BlackBerry Corporation v. Mobile Media Ideas, LLC, IPR2013-00036 (PTAB Mar. 7, 2014), Paper 65.

[138] Id.

[139] Id.

[140] Id.

[141] 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).

[142] SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008).

[143] Id. at 1194 (quoting In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986).

[144] Id. (quoting Brukelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 1989) (“[D]issemination and public accessibility are the keys to the legal determination whether a prior art reference was ‘published.’”);  see also See Palo Alto Networks Inc. v. Juniper Networks Inc., IPR2013-00369, Paper 39 (P.T.A.B., Feb. 14, 2014).

[145] Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00417 (P.T.A.B., Jan. 7, 2015), Paper 78.

[146] CaptionCall, LLC v. Ultratec, Inc., IPR2013-00540 (PTAB Mar. 3, 2015), Paper 78, at 11-12.

[147] Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363-64 (Fed. Cir. 2008); See also Id. at 12.

[148] CaptionCall, LLC, at 13 (citing Sundance, Inc. v. DeMonte Fabricating Ltd.,, 550 F.3d 1356, 1363-64 (Fed. Cir. 2008) and SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372-73 (Fed. Cir. 2010)).

[149] CaptionCall, LLC v. Ultratec, Inc., IPR2013-00540 (PTAB Mar 3, 2015), Paper 78 at 12 (citing SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372-73 (Fed. Cir. 2010) (upholding admission of the testimony of an expert who admittedly lacked expertise in the design of the patented invention, but had experience with materials selected for use in the invention); and Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886-87 (Fed. Cir. 2011)(non-precedential)(upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art)).

[150] Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (P.T.A.B. Jun. 11, 2013), Paper 26, at 4-5.

[151] 37 C.F.R. § 42.104(b)(4).

[152] See e.g., Microstrategy, Inc. v. Zillow, Inc., IPR2013-00034 (P.T.A.B. Apr. 22, 2013), Paper 23, at 2 (denying petition where “the petition failed to address how references Dugan and Kim collectively meet … two limitations of claim 18.”).

[153] Office Patent Trial Practice Guide, 77 Fed. Reg. 157, 48764 (Aug. 14, 2012).

[154] Id.

[155] Id.; see also 37 C.F.R. § 42.6(a)(2)(iii).

[156] 37 C.F.R. § 42.1(d).

[157] See e.g., Garmin Int’l, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001 (P.T.A.B. Jan. 9, 2013), Paper 15, at 2; see also 37 C.F.R. § 42.108(c).

[158] See 37 C.F.R. § 42.14; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 157, 48760 (Aug. 14, 2012).

[159] Id.

[160] See 37 C.F.R. § 42.54; see also Fed. R. Civ. P. 26(c)(1)(G).

[161] 37 C.F.R. § 42.14.

[162] See Office Patent Trial Practice Guide, 77 Fed. Reg. 157, 48760 (Aug. 14, 2012).

[163] Id. at 48761.

[164] See Id.

[165] Office Patent Trial Practice Guide, 77 Fed. Reg. 157, 48770-71 (Aug. 14, 2012); see e.g., Square, Inc. v. Protegrity Corp., CBM2014-00182 (P.T.A.B. Dec. 10, 2014), Paper 9 and Exhibit 2037.

[166] Office Patent Trial Practice Guide, 77 Fed. Reg. 157, 48761-62 (Aug. 14, 2012).

[167] Id.

[168] Id.

[169] 37 C.F.R. § 42.122(b).

[170] Id.

[171] Id.

[172] Microsoft Corp. v. IPR Licensing, Inc., IPR2015-00074 (PTAB Mar. 4, 2015), Paper 21, at 4.

[173] 35 U.S.C. 321(c).

[174] AIA § 18.

[175] AIA §§ 18(a)(1)(B), 18(d)(1).

[176] 37 C.F.R. § 42.20(c).

[177] 37 C.F.R. § 42.300(d).

[178] Square, Inc. v. Protegrity Corp., CBM2014-00182 (P.T.A.B. Mar. 5, 2015), Paper 16, at 11.

[179] See AIA § 18(d)(1).

[180] Transitional Program for Covered Business Method PatentsDefinitions of Covered Business Method Patent and Technological Invention, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (Final Rule) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).

[181] Id.

[182] Id. at 48,736 (Response to Comment 8).

[183] SAP America, Inc. v. Lakshmi Arunachalam, CBM2014-00018 (PTAB Mar. 6, 2015) Paper 33, at 12; see also 37 C.F.R. § 42.301(a).

[184] Id.

[185] Square, Inc. v. Protegrity Corp., CBM2014-00182 (PTAB Mar. 5, 2015), Paper 16, at 11 (citing 37 C.F.R. § 42.301(b)).

[186] Id. (citing 77 Fed. Reg. 48,756, 48,763-64 (Aug. 14, 2012).

[187] Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,682 (Aug. 14, 2012).

[188] See, e.g., Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1305 (2012) (addressing invalidity under § 101 when it was raised as a defense to an infringement claim); Graham v. Deere, 383 U.S. 1, 12 (1966) (stating that the 1952 Patent Act “sets out the conditions of patentability in three sections,” citing 35 U.S.C. §§ 101, 102, and 103); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3 (Fed. Cir. 2012); H.R. Rep. No.112-98, at 47 (2011); 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011).

[189] Square, Inc., CBM2014-00182 (PTAB Mar. 5, 2015), Paper 16, at 18.

[190] 37 C.F.R. § 42.3(a).

[191] 37 C.F.R. § 42.2 (definition of involved); see also Chi Mei Innolux Corp. v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00028 (P.T.A.B. Nov. 28, 2012), Paper 8, at 3.

[192] See e.g., Chi Mei Innolux Corp., IPR2013-00028 (P.T.A.B. Nov. 28, 2012), Paper 8, at 3.

[193] Id. at 2.

[194] Id.

[195] Id. at 3.

[196] CBS Interactive et al. v. Helferich Patent Licensing, IPR2013-00033 (P.T.A.B. Nov. 6, 2012), Paper 15, at 2.