Interplay With District Court Litigation (Series: Post-Grant Review Trials)

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Practical and entertaining education for
attorneys, accountants, business owners
and executives, and investors.
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DISCLAIMER
The material in this webinar is for informational purposes only. It should not be
considered legal, financial or other professional advice. You should consult with an
attorney or other appropriate professional to determine what may be best for your
individual needs. While Financial Poise™ takes reasonable steps to ensure the information
it publishes is accurate, Financial Poise™ makes no guaranty in this regard.
About this PowerPoint: if you are looking at this PowerPoint without the benefit of
listening to the conversation that surrounded it then you are doing yourself a disservice.
This PowerPoint was prepared in contemplation of being viewed in conjunction with
listening to a one hour webinar on the topic
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MEET THE FACULTY
Moderator:
Eugene Goryunov – Kirkland & Ellis, LLP
Panelists:
Jeremy Albright – Norton Rose Fulbright
Mike Cohen – Baxter Healthcare Company
Jonathan Strang – Latham Watkins
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ABOUT THIS WEBINAR:
Interplay With District Court Litigation
This segment, though last, is arguably the most important. It will discuss issues that come
into being as a result of co-pending proceedings with U.S. district court litigation. These
issues include estoppel, claim construction, and validity determinations.
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ABOUT THIS SERIES:
Post-Grant Review Trials
The series is intended to give attendees a crash-course in post-grant review proceedings at
the U.S. Patent and Trademark Office. Many topics will be addressed, sufficient to explain
the big picture considerations involved in this new and very popular area of law.
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EPISODES IN THIS SERIES
5/16/19 Episode #1:
What Are They?
6/13/19 Episode #2:
Pre-Filing Considerations
7/18/19 Episode #3:
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Dates shown are premiere dates.
All webinars will be available
On Demand approximately 4 weeks
after they premiere.

Episode #3:
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STRATEGIC CONSIDERATIONS
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OVERVIEW OF DISADVANTAGES
• Estoppel
• Limited opportunity to develop record
• Very limited opportunity to present true testimony
• Patent Owner has the opportunity to amend claims

STAYS OF LITIGATION
• Patent involved in Patent Owner v. Petitioner litigation: 82%
• Granting motion to stay litigation pending PTAB decision
– IPR: 65%
– CBMR: 62%

STAYS OF LITIGATION (cont’d)
• Federal Circuit has considered district courts denying a stay
» VirtualAgility Inc. v. SalesForce.com, Inc., 2014 WL 3360806 (Fed. Cir. July 10,
2014)
» Versata Software, Inc. v. Callidus Software, Inc., 2014-1468 (Fed. Cir. Nov. 20,
2014)
» Intellectual Ventures II, LLC v. JPMorgan Chase, 2014-1724 (Fed. Cir. Apr. 1,
2015)
• Stay decisions in district court vary significantly by jurisdiction

DJ ACTIONS
• If Petitioner files DJ of invalidity first, no IPR or CBMR
» 35 U.S.C. § 315(a)(1); 37 C.F.R. 42.101(a);
» http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for
• Consider filing DJ of noninfringement; assert invalidity as defense to
responsive claim for infringement
– Affirmative defense of invalidity to a counterclaim of infringement
plead by Patent Owner does not deprive Petitioner of standing
» E.g., IPR2012-00022, Paper 20 (Feb. 12, 2013); CBM2014-00035, Paper 12 (Apr.
25, 2014)

ESTOPPEL
• IPR/PGR:
– At the PTO/Court/ITC: Cannot maintain another proceeding on a basis
Petitioner “raised or reasonably could have raised”
» PGR: 35 U.S.C. § 325(e); IPR: 35 U.S.C. § 315(e)

ESTOPPEL (cont’d)
• CBMR:
– At the PTO: Cannot maintain another PTO proceeding on a basis
Petitioner “raised or reasonably could have raised”
» 35 U.S.C. § 325(e)(1); 37 C.F.R. 42.73(d)
– At Court/ITC: Cannot maintain another proceeding on a basis
Petitioner actually raised
» PL 112-29, Sec. 18(a)(1)(D) (Sept. 16, 2011)

LITIGATING A PTAB TRIAL
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TIMELINE/FILINGS

TIMELINE/FILINGS: MOTION TO AMEND PILOT

PO PRELIMINARY RESPONSE
• Limited to reasons why trial should not be instituted
– Cannot include any amendments to the challenged claims
• Filed within 3 months after notice of filing date of petition
» PGR/CBMR: 35 U.S.C. § 323; 37 C.F.R. 42.207; IPR: 35 U.S.C. § 313; 37 C.F.R.
42.107
• PTAB will discount any conclusory, unsupported Patent Owner statements,
especially when contrary to written description
» E.g., IPR2013-00010, Paper 21 (Feb. 12, 2013)
• Petitioner can seek a reply for good cause

PO RESPONSE AND/OR MOTION TO AMEND
• PO Response: May respond to any ground included in trial
– Filed after discovery is taken of Petitioner
» PGR/CBMR: 35 U.S.C. § 326(a)(8); IPR: 35 U.S.C. § 316(a)(8)
• PO Motion to Amend: New Motion to Amend Pilot begins March 15, 2019
– Cancel or propose substitute claims of same or narrower scope
– Can be supported with expert declaration
» PGR/CBMR: 35 U.S.C. §§ 326(a)(9) and (d)(1); IPR: 35 U.S.C. §§ 316(a)(9) and (d)(1)
» http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for
» 84 Fed. Reg. 9497 (Mar. 15, 2019)

DISCOVERY IN PTAB TRIALS
• Mandatory Initial Disclosures
» Patent Trial Practice Guide, 77 Fed. Reg. 48761-62; 37 C.F.R. 42.51(a)
• Routine Discovery
» Patent Trial Practice Guide, 77 Fed. Reg. 48761; 37 C.F.R. 42.51(b)(1)
• Additional Discovery
» Patent Trial Practice Guide, 77 Fed. Reg. 48761; 37 C.F.R. 42.51(b)(2)
• Live Testimony
» Patent Trial Practice Guide, 77 Fed. Reg. 48762; 37 C.F.R. 42.53

MANDATORY INITIAL DISCLOSURES
• With Agreement:
– Must submit any agreement no later than preliminary response
» 37 C.F.R. 42.51(a)(1)
– Option 1: Modeled after FRCP 26
– Option 2: Intended for petitions based at least in part on “prior non-
published public disclosure” or “obviousness”
» Patent Trial Practice Guide, 77 Fed. Reg. 48761-62

MANDATORY INITIAL DISCLOSURES
(cont’d)
• Without Agreement: Any party can seek by motion
» 37 C.F.R. 42.51(a)(2)
• Fairly uncommon

ROUTINE DISCOVERY
• Includes:
– Production of any exhibit cited in a paper or testimony;
– Cross-examination of opposing party’s declarants; and
– Information inconsistent with positions taken in trial
» 37 C.F.R. 42.51(b)(1)
• PTAB authorization not required for such discovery
» Patent Trial Practice Guide, 77 Fed. Reg. 48761

ADDITIONAL DISCOVERY
• With Agreement: Parties may agree to additional discovery
» 37 C.F.R. 42.51(b)(2)
• Without Agreement: May be requested by motion
» 37 C.F.R. 42.51(b)(2)

ADDITIONAL DISCOVERY (cont’d)
• Standard for Requesting Additional Discovery:
– PGR/CBMR: Requester must show “good cause” for discovery
» 35 U.S.C. § 326(a)(5); 37 C.F.R. 42.224
– IPR: Discovery must be in the “interest of justice”
» 35 U.S.C. § 316(a)(5); 37 C.F.R. 42.51(b)(2)
– Requests for specific documents, with a showing of relevance and
unsuccessful attempts to obtain are more likely to be granted
» E.g., IPR2014-01385, Papers 15, 19 (Mar. 27, 2015; May 4, 2015)

STANDARD FOR ADDITIONAL DISCOVERY
• Evidence is “in the interest of justice” if it satisfies five factors:
– discovery must be more than a possibility and mere allegation;
– requests cannot alter trial timing under pretext of discovery;
– requests should not seek what the requestor can generate itself;
– requests should be easily understandable; and
– requests must not be overly burdensome to answer
» E.g., IPR2012-00001, Paper 26 (Mar. 5, 2013)

STANDARD FOR ADDITIONAL DISCOVERY
(cont’d)
• Same factors analyzed under CBMR “good cause standard”
» E.g., CBM2013-00005, Paper 32 (Mar. 29, 2013)
• Very few motions for additional discovery have been granted

EVIDENTIARY ISSUES IN PTAB TRIALS
• Admissibility: Governed by the Federal Rule Evidence
» 37 C.F.R. 42.62
• Objections to Evidence: Must be filed
– Pre-institution: Serve within 10 court days of institution
– Post-institution: Serve within 5 court days of service
» 37 C.F.R. 42.64(b)(1)

EVIDENTIARY ISSUES IN PTAB TRIALS
(cont’d)
• Response to Objection: May serve supplemental evidence within 10 business
days of objection
» 37 C.F.R. 42.64(b)(2)
• Motions to Exclude: Must file to preserve objection
» 37 C.F.R. 42.64(c); Patent Trial Practice Guide, 77 Fed. Reg. 48767

SETTLEMENT AND EARLY TERMINATION
• Joint request may terminate trial
– Joint request must be filed prior to decision on the merits
– Motion to terminate may be denied if the proceedings are well
developed and ready for decision
» E.g., IPR2013-00016, Paper 31 (Dec. 11, 2013)
• Underlying settlement agreement must be filed with the PTAB
» PGR/CBMR: 35 U.S.C. § 327; IPR: 35 U.S.C. § 317(a)
• No estoppel attaches if trial is settled

ORAL HEARING
• Can be requested
» PGR/CBMR: 35 U.S.C. § 326(a)(10); IPR: 35 U.S.C. § 316(a)(10)
• No new evidence or argument is permitted
» E.g., IPR2013-00033, Paper 118 (Oct. 23, 2013)
• Demonstrative exhibits should serve merely as visual aids

FINAL WRITTEN DECISION AND
APPEAL
• Final Written Decision: Address patentability and new claims
» PGR/CBMR: 35 U.S.C. § 328(a) and (b); IPR: 35 U.S.C. § 318(a) and (b)
• Appeal: Losing party may appeal to the Federal Circuit
» PGR: 35 U.S.C. § 329; 35 U.S.C. § 141(c); IPR: 35 U.S.C. § 319; 35 U.S.C. § 141(c)

ABOUT THE FACULTY
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Eugene Goryunov – eugene@poligenes.com
Mr. Goryunov is an experienced trial lawyer that represents clients in complex patent matters
involving many diverse technologies. He is deeply involved, as trial counsel, in all aspects of cases
pending in Federal courts, at the U.S. International Trade Commission involving Section 337
investigations, and in appeals at the U.S. Court of Appeals for the Federal Circuit. He also regularly
serves as first-chair trial counsel in post-grant review trials, on behalf of both Petitioners and Patent
Owners, pending at the U.S. Patent & Trademark Office. To date, he has been involved in over one-
hundred post-grant review trials.
Mr. Goryunov is a regular contributor to intellectual property publications, including the
Intellectual Property Magazine, The Patent Lawyer, and the IPO Law Journal. To date, he has
published more than sixty articles, many of which discuss post-grant review trial practice. Mr.
Goryunov also speaks about diverse issues of patent law and post-grant review trial practice. He also
teaches patent law and intellectual property litigation at the Columbia University and previously at
the University of Notre Dame.
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Jeremy Albright –
jeremy.albright@nortonrosefulbright.com
Jeremy Albright is a senior associate at Norton Rose Fulbright US LLP. He is a patent
attorney in the mechanical arts, and his practice is focused on patent preparation and
prosecution as well as post-issuance challenges, with emphasis on inter partes reviews and
ex parte reexaminations.
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Mike Cohen – michael_cohen@baxter.com
Mike Cohen is an Associate General Counsel at Baxter Healthcare Corporation responsible
for managing the intellectual property portfolio strategy, freedom to operate activity, IP
related transactions, and patent litigation for various software and software-embedded
medical products. Prior to joining Baxter in 2014, Michael was an IP litigation partner in
Kirkland & Ellis LLP’s Chicago office, where he spent roughly a decade representing
Fortune 500 companies in high-stakes patent and commercial litigation matters. Mike
holds bachelor and masters degrees in engineering from Bradley University and graduated
summa cum laude with a J.D. from the University of Illinois College of Law. Before law
school, Mike was a software developer and consultant at Accenture.
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Jonathan Strang – jonathan.strang@lw.com
Jonathan Strang is counsel in the Washington, D.C. office of Latham & Watkins. His
practice focuses on patent litigation, especially proceedings before the Patent Trial and
Appeal Board (PTAB). He is also the Editor-in-Chief of the PTAB Bar Association’s PTAB
Roundup newsletter, which every two weeks provides the Association’s membership with
concise summaries of important cases and other developments in this ever-evolving
practice area.
Prior to joining Latham, Mr. Strang was a partner at a leading DC-based patent boutique,
focusing on patent litigation before the courts and the PTAB. He previously served as an
officer in the US Navy Submarine Force where, in addition to his warfare specialty, he was
a nuclear and electrical engineer. He also spent six years in the private sector spearheading
numerous hardware and software development projects.
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IMPORTANT NOTE: The material in this presentation is for general educational purposes only. It has been prepared primarily
for attorneys and accountants for use in the pursuit of their continuing legal education and continuing professional education.
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