Post-Grant Review Trials: What Are They? (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 LLP
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ABOUT THIS WEBINAR:
What Are They?
This segment will discuss the statutory and procedural background of post-grant review
proceedings. It will discuss the types of proceedings available and provide a high-level
discussion of how the proceedings are conducted.
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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:
Interplay With District Court Litigation
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Dates shown are premiere dates.
All webinars will be available
On Demand approximately 4 weeks
after they premiere.

Episode #1:
What Are They?
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OVERVIEW
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OVERVIEW OF PROCEEDINGS
• Post-grant proceedings for challenging patent validity
o Inter Partes Review (IPR)
o Covered Business Method Review (CBMR)
o Post-Grant Review (PGR)
o Derivation
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OVERVIEW OF PROCEEDINGS
(cont’d)
• “Trials” before the Patent Trial and Appeal Board (“PTAB”)
• Allow for limited discovery, not previously available
o Not “trials” in U.S. district court sense: no live witnesses (with rare
exception), no jury, no opening statements, no closing arguments
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OVERVIEW OF THE PTAB
• Handles AIA post-grant proceedings, appeals, and derivations
• Staffed by Administrative Patent Judges (“APJ”)
o Employs roughly 280 APJs currently and actively hiring
o New hires come from USPTO Examining Corps and private bar
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OVERVIEW OF THE PTAB (cont’d)
• Each AIA proceeding is decided by a 3-member APJ panel
o Expanded panel may be convened by the PTAB itself
o Under just-revised SOP1, parties may “suggest” expanded panel
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OVERVIEW OF PTAB TRIALS
• Proceedings are initiated with a petition
• Parties may file reply papers
• Parties engage in very limited discovery
• Hearing is conducted on the merits
• Concluded with final written decision unless parties settle
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STRATEGIC CONSIDERATIONS
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OVERVIEW OF ADVANTAGES
• “Preponderance” v. “clear and convincing”
• Favorable Petitioner success rate
• Potential to stay co-pending district court litigation
• Lower cost than district court litigation and trial
• Quicker to initial resolution than district court litigation
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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
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STAYS OF LITIGATION
• Patent involved in Patent Owner v. Petitioner litigation: 82%
• Granting motion to stay litigation pending PTAB decision
o IPR: 65%
o CBMR: 62%
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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
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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_f
or
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DJ ACTIONS (cont’d)
• Consider filing DJ of noninfringement; assert invalidity as defense to responsive
claim for infringement
o 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)
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ESTOPPEL
• IPR/PGR:
o 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)
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ESTOPPEL (cont’d)
• CBMR:
o 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)
o At Court/ITC: Cannot maintain another proceeding on a basis Petitioner
actually raised
➢ PL 112-29, Sec. 18(a)(1)(D) (Sept. 16, 2011)
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IMPACT
• Should inform district court of IPR proceedings
➢ Va. Innovation Scis., Inc. v. Samsung Elecs. Co., Ltd., 2:12-cv-548 (EDVA May 2,
2014) (must inform court of IPR proceeding or face “sharp[] consequences”)
• Motions in Limine
➢ Universal Elec. Inc. v. Universal Remote Control Inc., 8:12-cv-329 (C.D. Cal. Apr. 21,
2014) (denying MIL to preclude mention of rejected petition); StoneEagle Serv., Inc.
v. Pay-Plus Solutions, Inc., No. 8:13-cv-2240 (M.D. Fl. June 19, 2015) (same)
➢ InterDigital Commc’ns. Inc. v. Nokia Corp., 1:13-cv-10 (D. Del. Sept. 19, 2014)
(granting MIL to preclude mention of rejected petition)
➢ UltraTec, Inc. v. Sorenson Commc’ns, Inc., 3:13-cv-346 (W.D. Wis. Oct. 8, 2014)
(granting-in-part MIL to preclude mention of instituted IPR to Jury; allow mention
to Judge)
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IMPACT (cont’d)
• Issues of claim construction, validity, and noninfringement
➢The Procter & Gamble Co. v. Team Techs., Inc., No. 12-cv-552 (S.
D. Ohio Jul. 3, 2014) (considering USPTO’s decision in a post-grant
proceeding to grant MSJ of no invalidity)
➢VAE Nortrak N. Am. v. Progress Rail Serv. Corp., 459 F. Supp. 2d
1142 (N.D. Alabama Oct. 25, 2006) (granting defendant’s MSJ on
DEO based on statements made during foreign prosecution)
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OTHER CONSIDERATIONS (PETITIONER)
• Timing considerations
o File right away? File after contentions in court?
• Audience considerations
o Invalidity arguments more judge/jury friendly?
• Multi-patent considerations
o Challenge all or subset of asserted patents/claims?
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OTHER CONSIDERATIONS (PATENT
OWNER)
• Multi-party considerations
o Joint defense group? Privity? Real Party-in-Interest?
• Multi-patent considerations
o Assert one or many patents at once?
• Non-party considerations
o Role of manufacturer/supplier?
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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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