Legislative Update – STRONG Patents Act Takes Aim at IPR and PGR

8797259_s (1)With the new Congress firmly seated and various legislative efforts gaining momentum, another effort to reform patent system is taking its share of the spotlight. In early February, the House of Representatives took the first step with Rep. Bob Goodlatte re-introducing the Innovation Act, the identical patent-reform legislation that overwhelmingly passed the House in 2013.

Not to be outdone, a group of 3 senators has proposed its version of patent reform, including taking direct aim at post-grant review proceedings. In a bill sponsored by Sens. Chris Coons, Dick Durbin, and Mazie Hirono, known as the STRONG Patent Act of 2015, significant changes to post-grant proceedings would be made, including:

INTER PARTES REVIEW:

  1. Claim Construction: The standard for construing claims in post grant proceedings would be changed from “Broadest Reasonable Interpretation” to a construction similar to that performed in a district court, pursuant to the Phillips decision; relatedly, if a court had previously construed a claim limitation, the Board must consider that construction;
  2. Motions to Amend: Removes the requirement that only one motion to amend may be filed and states that, “a motion to amend filed by the patent owner shall be granted if the proposed number of substitute claims is reasonable”;
  3. Burden of Proof: In deference to the presumption of validity of section 282(a), the burden of proof would be changed from “preponderance of the evidence” to “clear and convincing evidence” for claims that had previously been issued; for claims that are amended in the proceeding, the preponderance of the evidence would be the standard applied;
  4. Standing: A petition to institute an IPR could not be filed unless the Petitioner had either been sued for infringement or charged with infringement;
  5. Discovery of Real Party in Interest: Would explicitly allow discovery of evidence to identify the real party-in-interest;
  6. Evidence Supporting Patent Owner Preliminary Response: Would allow a Patent Owner to submit the same type of evidence in the preliminary response that a Petitioner can submit in a Petition; additionally, if a reply is allowed to Petitioner in response to the Patent Owner Preliminary Response, then the Patent Owner would have the opportunity to file a sur-reply;
  7. Coordination with Other Proceedings: No IPR can be instituted if the patent is already subject to reissue or reexamination proceedings;
  8. Composition of the Board: Any judge that participates in the decision to institute trial may not participate in the actual “trial.”

POST GRANT REVIEW:

The provisions for PGR are substantially similar to those set forth above, relative to IPR, except that, for standing, the Petitioner must demonstrate a “reasonable possibility” of being sued for infringement or charged with infringement; or that there is a competitive harm related to the validity of the patent.

MISCELLANEOUS PROVISIONS:

Among the other aspects of the proposed STRONG Patents Act, include:

  1. Ex parte reexamination could not be filed more than one year after the requester has been served with a complaint alleging infringement;
  2. Form 18 of the Federal Rules of Civil Procedure is eliminated;
  3. PTO Fee diversion is ended;
  4. Changes the standard for finding willful infringement to a “preponderance of the evidence” standard;
  5. Ensures that, for contributory or induced infringement, it is not a requirement that the steps of the patented process be practiced by a single entity;
  6. Expands the entities that are considered “institutions of higher education” for purposes of being considered a micro entity;
  7. Expands the Patent Pilot Program to address “special issues raised in patent infringement suits against individuals or small business concerns”; and
  8. Making the “pattern or practice of sending written communications that state or represent that the recipients are or may be infringing,” under certain circumstances, an unfair and deceptive practice under the Federal Trade Commission Act.

Each side to the debate has now set forth its opening offer – it will be interesting to watch the negotiations unfold to see if another major patent reform effort will be successful.

Patent Public Advisory Committee 2014 Annual Report

8457034_sThe Patent Public Advisory Committee issued its Annual Report regarding fiscal year 2014. The PPAC Report contains a number of interesting points, but our review, of course, will focus on the PTAB and post grant proceedings. The PPAC’s review of post grant proceedings started off with a review of numerous key statistics, including:

  • The Board comprised 214 judges at the end of FY 2014;
  • Of the petitions filed, 71.6% were directed to electrical/computer software patents, 15.6% were mechanical patents, 6.8% were chemical, 5.6% were biotech/pharma, and 0.4% were design patents;
  • 2,082 total petitions have been filed since the inception of the AIA, with a peak of 190 petitions filed in June of 2014;
  • The Board has issued final written decisions in 129 IPR proceedings and 13 CBM proceedings;
  • The 1,494 Petitions filed in FY 2014 made the Board the second busiest patent jurisdiction behind only the Eastern District of Texas (1,511 Complaints) and just ahead of the District of Delaware (1,335 Complaints); and
  • For ex parte reexamination buffs, the Board affirmed or affirmed-in-part 67% of appeals, reversed 30%, and remanded or dismissed 3%.

Another interesting aspect of the PPAC Report was its recommendations to the PTO. First, the PPAC recommended continued vigilance in hiring new judges or otherwise handling the increased AIA workflow. Second, the PPAC suggested that the Board not be reluctant to exceed the one-year, statutory timeline for post grant proceedings. And, third, the PPAC recommend that the USPTO become more flexible in claim amendment practice to make them more available to patent owners.

The PPAC was formed as part of the American Inventors Protection Act of 1999 to advise the Director of the PTO on the management of patent operations. The Committee reviews the policies, goals, performance, budget, and user fees of the patent operations and advises the Director on these matters.

Second Petition Seeking Post Grant Review is Filed

iStock_000012593731SmallFinally, the “PGR” portion of this site is starting to gain some momentum as Accord Healthcare brought the second ever Post Grant Review PetitionAccord Healthcare, Inc. v. Helsinn Healthcare S.A., et al., IPR2014-00010.  Accord challenges the validity of the patent-in-suit pursuant to 35 U.S.C. § 112(a) (lack of written description and enablement) and 35 U.S.C. § 112(b) (failure to particularly point out and distinctly claim the subject matter the inventors regard as the invention).

As the “theory” of Post Grant Review has been discussed and evaluated, § 112 grounds, like those raised in this PGR, were considered ripe opportunities for challenges in these new proceedings.  The underlying downside of such action, however, was the strong estoppel that attaches to Post Grant Review that will cripple future attempts to challenge the validity of the patent-at-issue. As compared to IPR, where the estoppel can only apply to §§ 102 and 103 grounds, based on printed publications or patents, in a PGR, the estoppel extends to all grounds of invalidity that were raised, or reasonably could have been raised.

Where a § 112 defense is a Petitioner’s best defense, though, it seems likely that such defense will be given a more thorough and competent review at the PTAB, with its stable of technically-oriented and patent-savvy judges, than it would with the typical district court judge in federal court litigation.

First Petition for Post Grant Review Filed

LoomAt long last, a Petitioner has dipped its toes in the Post-Grant Review waters, filing the first ever PGR petition in LaRose Industries, LLC v. Choon’s Design Inc., PGR2014-00008.  The popular “Rainbow Loom” is the commercial embodiment of the patent claims at issue.

The patent at issue is, of course, a “first to file,” post-AIA patent, having been filed after March 13, 2013 (US Patent No. 8,684,420).  Jurisdictional basis for a Post-Grant Review may, however, be at issue, as the patent claims priority to numerous earlier-filed patents.  Petitioner argues, however, that the claims are based on new subject matter that was added in the post-AIA application.  See, e.g., Petition at 5, 23-36.

The bases for the petition include 35 USC §§ 102, 103, and 112.  The first ground discussed in the petition is a challenge under §112 that the challenged claims lack written description support in the specification (Petition at 45), are indefinite (Id. at 46-47), and are not enabled (Id. at 48).  Also particular to Post Grant Review procedures is the assertion in the Petition that the challenged claims are anticipated by the commercial embodiment of a competitive product.  Inter Partes Review procedures are, of course, limited to 102 and 103 grounds based on patents and printed publications.  Here, the actual sale of a product is serving as the basis for the 102 challenge – proper subject matter for a PGR.

Another new era in patent litigation has begun and we look forward to watching the developments in this and future PGR proceedings.

6 Reasons Inter Partes Review Was Popular in 2013

Happy New Year 2014 replace 2013 concept on the sea beachOriginally Published in IP Law360

A look back on 2013 reveals that one reform enacted under the America Invents Act – Patent Office Litigation – has perhaps had the most immediate and dramatic impact.  While many predicted that Inter Partes Review (IPR) proceedings would change the face of patent litigation, few could have predicted the intense momentum and wide-spread acceptance these proceedings have gained in such a short time.  Indeed, as of December 5,  2013, 723 IPR petitions have been filed, averaging more than 20 petitions/week.

IPR proceedings have, of course, maintained many of the advantages over district court litigation that were found in reexamination proceedings, such as lower cost (often by an order of magnitude), lower burden of proof (preponderance of the evidence versus clear and convincing evidence), and a potentially broader claim construction (broadest reasonable interpretation versus ordinary and customary meaning).  This article focuses on the advantages, both expected and unexpected, that are unique to Inter Partes Review practice (and likely will to Post Grant Review (PGR) practice).  Overall, patent challengers are flocking to these proceedings because of the great advantages provided by them to challenge the patentability of US patents.  Discussed below are the six (6) key reasons why IPR proceedings have become so popular:

Greater Control Over Prior Art

IPR and PGR proceedings give patent challengers more comfort that Patent Owners will not be able to mislead the Patent Office via, for example, infirm evidence.  To that end, patent challengers no longer are forced to sit idly by as patent owners submit expert declarations seeking to uphold patentability, or otherwise offer evidence that cannot be assailed.   For example, the rules governing IPR and PGR proceedings allow for evidentiary challenges (pursuant to the Federal Rules of Evidence) as well as depositions of declarants.

In addition, patent challengers are afforded an opportunity to address the Patent Trial and Appeal Board at an oral hearing near the end of the trial.  To date, most such hearings have allowed each party one hour of argument (orders granting such oral hearings have ranged from ½ hour to 2 hours per side).  While the vast majority of a patent challenger’s case is fully set forth in the petition and accompanying exhibits, the oral hearing gives patent challengers a chance to address questions raised by the Board, as well as to summarize the extensive briefing that has occurred up to the hearing.  Such hearings are helpful mechanisms under the new Patent Office litigation procedures to encourage patent challengers to forego district court litigation and place their best prior art before the Patent Office.

Shorter Timelines and More Litigation Stays

Unless an IPR proceeding is an exceptional case, IPRs are supposed to be concluded within 18 months from filing the petition request grant thereof.  Comparing that to the median time to trial period of 30 months for district court litigation clearly makes the IPR option attractive based on timelines alone.  Add to that the apparent willingness of district judges to stay concurrent litigation in view of a corresponding IPR and you have a powerful opportunity.  In general, the fact that the estoppel that is imposed upon patent challengers (any grounds that were raised or could have been raised) arises at a date certain, no more than 18 months after a petition has been filed, provides district court judges with strong rationale for staying litigation.  To that end, judges have often cited the reasonable length of time that a litigation could be stayed, as well as the fact that the IPR will simplify issues in the litigation as appropriate grounds for a stay.  Essentially, either the patent claims will be rendered unpatentable, effectively ending the litigation, or the patentability of the claims will be affirmed (including by way of amendment) and validity issues at the district court will be significantly streamlined by virtue of the estoppel placed on defendant.

One particularly telling example of the district court’s willingness to grant stays in view of IPR comes from a district court judge from the District of Delaware in a case involving Kyocera (defendant/patent challenger) and Softview LLC (plaintiff/patent owner).  Kyocera Corp. v. Softview, LLC, (IPR2013-00004).  During the district court litigation, Kyocera filed a petition seeking reexamination of the Softview patent.  Despite that reexamination petition being granted, the district court judge decided not to stay the co-pending litigation.  Later, after IPR became available, Kyocera filed a petition seeking inter partes review of the same patent.  A later motion to stay was accepted by the same Court, this time finding that speed of IPR, versus reexamination, and the ability to narrow issues for trial favored a stay.

Limited Opportunity for Patent Owners to Amend Challenged Claims

Another downside to reexamination practice that limited its acceptance by potential patent challengers, was the opportunity for patent owners to counter any reexamination filing with dozens, if not hundreds, of amended patent claims.  This concern was initially set forth in the America Invents Act itself, wherein Congress directed the Patent Office to draft regulations that allowed a patent owner to “propose a reasonable number of substitute claims.”  35 USC § 316(a)(9).  This directive was, indeed, set forth in the regulations implementing IPR and PGR, but taken to a whole new level with the now ubiquitous decision of Idle Free Sys. V. Bergstrom, IPR2012-00027 (Paper 26).  In the Idle Free decision, as colored by subsequent Board decisions, a proposed substitute claim must distinguish over: 1) the prior art known to patent owner (not just the art of record in the proceeding), 2) any other substitute claim proposed for the same original claim, and 3) any other substitute claim proposed for an original claim that, for the same reasons as the other substitute claim, is presented as patentable over the prior art (i.e., a second amendment to a dependent claim, wherein the substitute claim also contains a first amendment that is the same as presented in another substitute claim).

In addition, any proposed amendments must be accompanied by specific citations to the original patent disclosure, explaining how the claimed subject matter as a whole is found, claim construction of new claim terms, and expert testimony confirming the above, among other technical details.  In short, far from the extensive amendment practice that had become endemic in reexamination practice, motion to amend practice in IPR and PGR proceedings will be much more limited.  Through one year of IPR proceedings,  patent owners proposed only six (6) amended claims per proceeding on average.

It is worth noting a few other key Motion to Amend cases that have been handed down by the Board, as well:  Nichia Corp. v. Emcore Corp., IPR 2012-00005, Paper 27 (regarding the burden of identifying written description support for proposed substitute claims); ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00136, Paper 31 (burden of patentably distinguishing over prior art), for example.

Limited Opportunity for Parties to Take Discovery

The statute and rules contemplate three types of discovery: Mandatory Initial Disclosures (37 CFR §42.51(a)); Routine Discovery ((37 CFR §42.51(b)(1)); and Additional Discovery (37 CFR §42.51(b)(2)).

Mandatory Initial Disclosures is a misnomer, because these disclosures are not mandatory at all, but only occur if there is an agreement of the parties, which must be submitted no later than the filing of the Patent Owner’s Preliminary Response.   37 CFR §42.51(a)(1)).  Thus, a party can avoid Mandatory Initial Disclosures simply by refusing to agree to it.  As a result, Mandatory Initial Disclosures have occurred in only a few of the Inter Partes Reviews filed.  See, Microsoft Corp. v. SurfCast, Inc., IPR2013-00292, Paper 17 (August 26, 2013); Microsoft Corp. v. SurfCast, Inc., IPR2013-00293, Paper 12 (August 26, 2013); Microsoft Corp. v. SurfCast, Inc., IPR2013-00294, Paper 13 (August 26, 2013); Microsoft Corp. v. SurfCast, Inc., IPR2013-00295, Paper 12 (August 26, 2013); Oracle Corporation v. Click-to-Call Technologies LP, IPR2013-00312, Paper 12 (August 23. 2016).

Routine Discovery is cross-examination of any affidavit testimony.  (37 CFR §42.51(b)(1)(ii)).  This discovery can proceed without requiring specific authorization from the Board.  Unless otherwise agreed by the parties, a party must serve copies of any exhibits cited in a paper or in testimony 37 CFR §42.51(b)(1)(i)) as well as relevant information that is inconsistent with a position advanced by the party during the proceeding (37 CFR §42.51(b)(1)(iii)).

Additional Discovery is any other discovery that a party might want to take.  In the absence of agreement, the party seeking additional discovery must file a motion with the Board demonstrating that the additional discovery is in the interests of justice.   37 CFR §42.51(b)(1)(iii).  In Garmin Int’l Inc. v. Cuozzo Speed Technologies, LLC,  IPR2012-00001, Paper 26 (March 5, 2013),  the Board identified five factors it considers in deciding whether to grant additional discovery:

1. More Than A Possibility And Mere Allegation — The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. The party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.

2. Litigation Positions And Underlying Basis — Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice. The Board has   established rules for the presentation of arguments and evidence.  There is a proper time and place for each party to make its presentation. A party may not attempt to alter the Board’s trial procedures under the pretext of discovery.

3. Ability To Generate Equivalent Information By Other Means – Information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced by the other party. In that connection, the Board would want to know the ability of the requesting party to generate the requested information without need of discovery.

4. Easily Understandable Instructions — The questions should be easily understandable. For example, ten pages of complex instructions for answering questions is prima facie unclear. Such instructions are counter-productive and tend to undermine the responder’s ability to answer efficiently, accurately, and confidently.

5. Requests Not Overly Burdensome To Answer — The requests must not be overly burdensome to answer, given the expedited nature of Inter Partes Review. The burden includes financial burden, burden on human resources, and burden on meeting the time schedule of Inter Partes Review. Requests should be sensible and responsibly tailored according to a genuine need.

Applying these factors, the Board has denied all but a few requests for additional discovery.  The Board has explained that the limited discovery available in IPRs is “significantly different from the scope of discovery generally available under the Federal Rules of Civil Procedure” and “restricts additional discovery to particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case.”  The “interests of justice” standard is a high standard, that, to date, has been rarely satisfied, so additional discovery in an IPR is the exception, not the rule.  This bodes well for even broader acceptance of the IPR option going forward, because it is often the extremely wide latitude on the amount of discovery allowed and the easily extended deadlines available under district court litigation that prolongs the litigation and raises the cost.

Detailed Claim Construction Analysis Provided By Board at Decision to Initiate Stage

Early predictions that inter partes review proceedings may function as a mini-claim construction phase are proving to be prophetic.  Many of the Board’s decisions to initiate an IPR trial (or deny a petition), have resulted in detailed, comprehensive claim construction analyses that will ripple through any co-pending or future patent litigation.  37 CFR 42.104(b)(3) requires a petition to identify how a challenged claim is to be construed.  While a Petitioner is entitled to generically articulate the “broadest reasonable interpretation” standard to satisfy this requirement, Petitioners are cautioned to think carefully about this approach.  The Board has rejected petitions for failing to identify a proposed claim construction for key claim terms and, for petitions that survive an initial review, the Board has criticized petitioners for failing to identify specific claim construction positions.  See, e.g., Avaya, Inc. v. Network-1 Security Solutions, IPR2013-00071, Paper 18 (agreeing that a key term should have been addressed in the petition, but not rejecting the petition on that ground because the failure was harmless, given that Patent Owner did not articulate a reason why the failure was material).

Also interesting regarding the Board’s claim construction analyses are both its adherence to the same type of claim construction analysis as that performed by the federal courts, but its willingness to give no weight to prior claim construction rulings, including from the Federal Circuit.  Google, Inc. v. Whitserve LLC, IPR2013-00249, Paper 11.

In the end, by providing thoughtful and detailed claim construction analyses in inter partes review proceedings, the Board has given patent challengers an avenue to a streamlined and inexpensive first look at the claim construction of patent claims.  Because this efficient claim construction analysis may impact litigation positions, including later Markman proceedings, this is another impactful feature of IPR proceedings that have made them popular over the past year.

Reconsideration of Old Arguments Made During Examination or Prior Reexamination

The standard for declaring an Inter Partes Review is clear: the petitioner must establish “a reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim” before an IPR will be declared.  Gone is the requirement that the challenger present a substantial new question of patentability.  Thus, whereas roughly 65% of the petitions filed to date have relied on at least some previously cited prior art; only about 35% of the petitions filed relied entirely on newly cited prior art.  Less than 1% of all petitions filed to date have relied exclusively on previously cited prior art.

Although 35 U.S.C. §325(d) provides that the Board “may take into account whether the same or substantially same prior art or arguments previously were presented to the [Patent and Trademark] Office,” the fact that the prior art was previously submitted to or even considered by the Patent and Trademark Office has not stopped the Board from initiating a trial.

In Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper 18 (Jan. 24, 2013), the patent owner argued that inter partes review was improper because the same prior art and the same arguments were raised in a prior reexamination.  The Board said that “we are not required by statute to reject a Petition based upon the fact that certain arguments or art were previously considered by the Office,” although the Board did go out of its way to point out that the record before it was not the same as previously before the Office.

In Bitmax Advanced Biofuels LLC v GEVO, Inc., IPR 2013-00214, Paper 11 (September 30,2013), the Board again rejected a  patent owners argument that same prior art and substantially the same arguments were considered by the Examiner during the prosecution of the patent.   The Board found that petitioner’s arguments with respect to the asserted prior art “have merit,” and that petitioner “has demonstrated a reasonable likelihood that the prior art references render the challenged claims unpatentable.”

In K-40 Electronics v. Escort, Inc., IPR2013-00203, Paper 6 (August 29, 2013), the Board found  that the declaration antedating references accepted by the Examiner during prosecution was deficient, and instituted trial based upon art that the Examiner determined was not prior art.

It is clear that where the petitioner shows a reasonable likelihood of success, the Board will likely grant a trial even if the prior art or the arguments had been previously considered.

Conclusion

Provided the US Patent Office is able to retain and hire enough Patent Trial and Appeal Board judges to keep up with well qualified demand and still meet the attractive 18 month from petition filing timeline, for at least the reasons highlighted above, IPRs and soon too PGRs could very well become the norm rather than the exception for patentability and validity challenges going forward.

GAO Report: Looking for the Real Troll

IP MagazineBelow is the introduction to my article, entitled “GAO Report: Looking for the Real Troll,” that published in Intellectual Property Magazine on October 29, 2013.  The full article can be found HERE

As a tidal wave of attention and criticism, from legislative, judicial, and national press sources, continued to be heaped on ‘non-practicing entities’ (NPEs), the Government Accountability Office (GAO) recently tossed out a life preserver, in the form of its study on the consequences of patent litigation by NPEs. This long-anticipated report was expected to be the latest salvo in a relentless attack against NPE activities, but instead was a more muted assessment of the damage being done by NPE patent litigation.

While patent litigation is certainly trending higher, the GAO report found that NPEs were only a part of the problem. The majority of the blame for any uptick in litigation, per the report, should be centred on the United States Patent and Trademark Office (for issuing bad patents), the US court system (for issuing overly large damage awards), and even simple capitalistic instinct (which has sniffed out the high value of patents). But, the GAO report also praises the USPTO and courts for recently implementing significant changes that, at the least, hold great promise.

In short, and as discussed below, the issues that have led to an over 30% increase in lawsuits filed from 2010-11, versus the 10-year period that preceded 2010, are varied and complicated. So are the possibilities for returning patent litigation to the mean. Ultimately, however, the GAO report finds that it is the software patents being issued, not the type of litigants enforcing them, which hold the key to reining in the growth in patent infringement litigation.

6 Months of Inter Partes Review – By the Numbers

Screen shot IPR Report
Welcome to the inaugural issue of Harness Dickey’s Report on Litigation Practice Before the United States Patent Office.  Our periodic Report provides insight on some of the over 100 characteristics of Inter Partes Review and Post Grant Review proceedings that we track to identify trends and strategies for our clients.

Are you facing threatened, pending, or anticipated patent litigation?  Walk into the strategy meeting armed with hard facts regarding this new procedure that will change the face of patent litigation.  For example, did you know that 96% of petitions seeking inter partes review were granted in the first 6 months of the procedure?  Further, 92% of the challenged claims from such petitions were included in the trial.  How about the fact that federal district courts are staying litigation in view of IPR filings at a 61% clip.

These are just some of the over 100 categories of inter partes review and post grant review practice that we are tracking and have included in our first issue of our Report.  A copy of the Report can be found by clicking HERE.  Please contact us at IPR-PGR@hdp.com if you would like a hard copy of the Report or would like more information about litigation before the USPTO.

PTAB Handles First Inter Partes Review “Initial Conference Call”

On Tuesday, January 22, 2013, the PTAB held its first “Initial Conference Call” in an inter partes review, in the case of Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 (Harness Dickey represents the Patent Owner, Proxyconn, in this matter).  The format of the call was very similar to a Rule 16 Conference before a federal district court judge.  At the outset of the call, the Board clarified certain filings that had occurred in the case, and then proceeded to address the expected formalities of the upcoming trial, including:

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]Office Patent Trial Practice Guide at 48765 — “The Board expects to initiate a conference call within about one month from the date of institution of the trial to discuss the Scheduling Order and any motions that the parties anticipate filing during the trial.”[/pullquote]

1) Whether the proposed scheduling order was agreeable to the parties;

2) Whether the form Protective Order set forth in the Trial Practice Guide was agreeable to the parties;

3) Whether “Initial Disclosures” were exchanged between the parties, or expected;

4) Whether compelled discovery was expected;

5) What motions each party expected during the trial (including, with respect to certain of the motions identified by the parties, what the party expected to include in the motion); and

6) Whether the parties had discussed potential settlement.

The Board also handled questions and clarifications from the parties and otherwise cleared the deck of all outstanding issues before the next phases of the inter partes review proceeding are to take place.  In sum, the approximately 30 minute phone conference was very reminiscent of an Rule 16 conference in district court litigation and parties should be prepared to address similar topics in an inter partes review “Initial Scheduling Conference.”

Multiple Back-Up Counsel Allowed in Inter Partes Review

Despite the wording of 37 CFR § 42.10, as well as the accompanying comments thereto, that seem to limit parties to a single back-up counsel, the PTAB has recently granted concurrent pro hac vice motions that allow a patent owner to have two back-up counsel participate in a single Inter Partes Review proceeding.  It remains to be seen whether the PTAB will or will not place a restriction on the number of back-up counsel that are able to participate in an IPR.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR § 42.10(a) – “If 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.”[/pullquote]

More specifically, the express wording of § 42.10 seems to suggest that only a single lead counsel and single back-up counsel is allowed in any Inter Partes Review proceeding.  Further, the comments accompanying the rule only reinforce this limitation.  To that end, one of the comments to the proposed Trial Practice Rules contained a proposal for multiple back-up counsel.  In response, the Patent Office stated only one lead and one back-up counsel would be required in any proceeding:

The comment suggesting multiple back-up counsel is not adopted.  Based on the experience of the Office in contested cases, designating one lead counsel and one back-up counsel by each party should result in more efficient and effective case management.  “Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial review of Patent Trial and Appeal Board Decisions; Final Rule,”  77 Federal Register 157 (14 August 2012), p. 48630.

The imposition of such a limitation could be, in some circumstances, unduly burdensome to parties in an Inter Partes Review proceeding.  Given the schedules of busy attorneys, as well as the potential in Inter Partes Review and Post Grant Review proceedings of multiple depositions within an abbreviated 3 month discovery period, having the ability to designate more than one back-up counsel could be advantageous and reasonable.

Despite the limitation in § 42.10 and the accompanying comments to a single back-up counsel, however, the PTAB recently granted two motions for pro hac vice admission in the ongoing IPR styled as Nissan N. Am., Inc. v. Carl B. Collins and Farzin Davanloo (IPR2012-00035). In that case, therefore, the PTAB tacitly over-ruled § 42.10 by allowing two separate back-up counsel.  The Board’s Order speaks of the patent challenger having “shown good cause why [counsel] should be recognized pro hac vice for purposes of this proceeding,” but the Order does not discuss whether good cause was shown to admit two separate back-up counsel.  Indeed, the issue was avoided entirely by virtue of the fact that the grant of the motions for pro hac vice admission were made in two separate Orders.

It is also interesting to view this order in light of a Notice of Defective Petition entered in Midland Radio Corp. v. Anthony Mirabelli (IPR2013-00021) wherein the PTAB stated that the Midland Radio Petition was defective because it listed as back-up counsel “all counsel” associated with a particular PTO customer number.  The PTAB instructed that “Per 37 CFR § 42.10(a), ‘the party must designate . . . a back-up counsel who can conduct business on behalf of the lead counsel.’” (emphasis in original).  Thus, to receive a filing date for its petition, Midland Radio filed an amended petition that listed only a single back-up counsel.

In the end, time will tell whether two or more back-up counsel will be allowed on regular basis, or whether the Board will continue with its early practice in other contexts of sticking to the letter of the Trial Practice Rules.