Post-Grant Proceedings Under The America Invents Act

1. Post-Grant Proceedings Under The America Invents Act Los Angeles Intellectual Property Law Association “Washington in the West” ConferenceJanuary 29, 2013, Los Angeles, California Panelists:Jeffrey Robertson – Administrative Patent Judge Brent Babcock – Knobbe Martens Mehrand Arjomand – Morrison Foerster

2. America Invents Act (AIA) Signed into law September 16, 2011 General Themes (depending on whom you ask) “Harmonization” Simplify and reduce cost of patent litigation; alternative to patent litigation Reduce influence of non-practicing entities Varying effective dates Some uncertainty Technical Amendments (2013)

3. Changes to Post-Grant Disputes Before AIA Inter Partes Reexam Ex Parte Reexam Interferences After AIA Inter Partes Review Post-Grant Review Transitional Program for Covered Business Method Patents Derivation Proceedings Ex Parte Reexam Supplemental Examination Interferences (Legacy)

4. Post-Grant Proceedings-Where We Are Now • Current USPTO statistics as of January 24, 2013 • 114 IPR filings ; 3 instituted/ 0 denials • 15 CBM filings; 2 instituted / 0 denials • Number of Petitions by Technology • Electrical/Computer 89 • Mechanical 6 • Chemical 19 • Bio/Pharma 9 • Design 1

5. Inter Partes Reexam v. Inter Partes Review • Two important differences between an inter partes reexamination proceeding and an inter partes review proceeding: • No examination • Statutory deadline for final decision Filing Examination by CRU Appeal to PTAB Appeal to CAFC Filing Review by PTAB Appeal to CAFC

6. Post-Grant Proceedings – Procedure Threshold “Reasonable Likelihood” that petitioner willprevail on at least one claim Potentially more limited discovery in IPR than Post Grant Review Deposition of witnesses submitting affidavits (declarations) What is “otherwise necessary in the interests of justice” Patent owner may file response rebutting petition One motion by right to cancel or propose substitute claims Right to oral hearing Petitioner may submit supplemental information/ comment

7. Post-Grant Proceedings – Procedure

8. Post-Grant Proceedings – Procedure Petitioner or Director may request joinder of additional parties Final determination within 12 months, up to 18 months if “good cause” Estoppel: “raised or reasonably could have raised” Appeal: directly to Federal Circuit

9. Post-Grant Proceedings – Developments • Representative Orders, Decisions, and Notices http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp • Pro Hac Vice Requests • Defective Petitions • Relationship with Co-pending Proceedings • Definition of Covered Business Method Patent

10. IPR Strategic Issues What is the anticipated fees/cost of an IPR? How long will an IPR last? Are the fees/costs spread out evenly? Why should I use IPR rather than traditional litigation? What is the likelihood that a district court action will be stayed during an IPR? Should I change my practices of monitoring competitors’ IP? Is there anything I can do to prevent an IPR of my client’s patents?

11. Advantages of IPR vs. Litigation Lower Burden of Proof (preponderance of the evidence) Broadest Reasonable Interpretation of patent claims Lower Cost (FRCP do not apply) Limited discovery Professionalism strictly enforced Fewer “ancillary” battles (venue, jurisdiction, discovery, etc.) Quicker (1-2 years) Better informed decision maker (both technical & legal)

12. Advantages of Litigation vs. IPR Infringement can be adjudicated Full scope of claims and defenses Full discovery opportunities Estoppel effect of USPTO Inter Partes proceedings More expensive to opponent Jury presents potentially more risk to opponent

13. Thank you!