Pre-Filing Considerations (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:
Pre-Filing Considerations
This segment will delve into considerations that come into play when filing or responding
to post-grant review proceedings. These considerations include issues of real party in
interest, timing, and substantive arguments.
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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:
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 #2:
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Filing a Petition
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WHO CAN FILE A PETITION?
• PGR: Petitioner must not file DJ of invalidity first
» 35 U.S.C. § 321(a); 35 U.S.C. § 325(a)(1); 37 C.F.R. 42.201
• IPR: Petitioner must not file DJ of invalidity first and must file within one year after being served
with a complaint
» 35 U.S.C. § 315; 37 C.F.R. 42.101
– Arbitration and ITC investigation do not count
» E.g., IPR2015-00056, Paper 10 (Mar. 23, 2015)
• CBMR: Petitioner must be sued or charged with infringement
» 37 C.F.R. 42.302(a)
– Standing may exist if customer was sued and asked for indemnification
» E.g., CBM2013-00013, Paper 15 (Sept. 19, 2013); CBM2013-00055, Paper 16 (Mar. 6, 2014)
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WHEN CAN A PETITION BE FILED?
• PGR
– Post-AIA Patent: Must be filed within 9 months after issue
» 35 U.S.C. § 321; 37 C.F.R. 42.202
• IPR: Can be filed after the later of:
– Pre-AIA Patent: Issue of the patent;
– Post-AIA Patent: (1) 9 months after issue or (2) end of PGR
» 35 U.S.C. § 311(c); 37 C.F.R. 42.102
• CBMR: Can be filed after the later of:
– Pre-AIA Patent: Issue of the patent
– Post-AIA Patent: 9 months after issue
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WHAT IS THE STANDARD TO INSTITUTE
PTAB TRIAL?
• PGR/CBMR:
– “More likely than not that at least one of the claims challenged in the petition is unpatentable;”
or
– “Raises a novel or unsettled legal question that is important to other patents or patent
applications”
» PGR: 35 U.S.C. § 324(a) and (b); 37 C.F.R. 42.208(c) and (d); CBMR: 37 C.F.R. 42.304(a)
• IPR: “[R]easonable likelihood that the Petitioner would prevail” with respect to at least one
challenged claim in the patent
» 35 U.S.C. § 314(a); 37 C.F.R. 42.108(c)
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0%
100%
Substantial New
Question of
Patentability
Reasonable Likelihood
of Success Clear and Convincing
Preponderance
(More Likely Than Not)
Ex Parte
Reexamination
PGR / CBMR
IPR
District Court

WHAT CAN A PETITION BE BASED ON?
• PGR: Patents, printed publications, evidence of public use, sale, and offer for
sale, and §§ 101, 102, 103, 112, 251.
» 35 U.S.C. § 321
• IPR: Patents and printed publications, and §§ 102, and 103.
» 35 U.S.C. § 311(b); 37 C.F.R. 42.104(b)(2)
• CBMR: All patents on §§ 101, 102, 103, 112, 251.
– Pre-AIA Patent: Only § 102(a) prior art (not 102(e) prior art).
– Post-AIA Patent: Patents, printed publications, evidence of public use, sale,
and offer for sale.
» PL 112-29, Sec. 18(a)(1)(C) (Sept. 16, 2011)
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WHAT MUST THE PETITION INCLUDE?
• Identify real parties in interest;
• Identify challenged claim and grounds for the challenge;
• Provide claim construction;
• Identify exhibit numbers of supporting evidence;
• Provide copies of the supporting evidence; and
• Be accompanied by filing fee
» PGR: 35 U.S.C. § 322(a) and 37 C.F.R. 42.204(b);
» IPR: 35 U.S.C. §312(a) and 37 C.F.R. 42.104(b);
» CBMR: 37 C.F.R. 42.304(b);
» Generally: 35 U.S.C. § 312(a)
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PETITION FORMALITIES
• Grounds
– Must include full analysis in petition, not just expert declaration
• Claim Construction
– Include explanation why proposed construction is correct
» 37 C.F.R. 42.104(b)(3)
– Common defect in petitions is failure to provide proposed construction for
term open to interpretations
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FEES
• IPR Request Fee: $15,500
– Additional $300 fee for each claim in request over 20
• IPR Post-Institution Fee: $15,000
– Additional $600 for each claim granted review over 15
• PGR/CBMR Request Fee: $16,000
– Additional $375 fee for each claim in request over 20
• PGR/CBMR Post-Institution Fee: $22,000
– Additional $825 for each claim granted review over 15
» 37 C.F.R. 42.15
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WORD LIMITS
• IPR
– 14,000 words
– 14-pt font, including any footnotes
• PGR and CBMR
– 18,700 words
– 14-pt font, including any footnotes
» 37 C.F.R. 42.6 and 42.24
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LITIGATING A PTAB TRIAL
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TIMELINE/FILINGS
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TIMELINE/FILINGS – MOTION TO AMEND PILOT
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TIMELINE/FILINGS – MOTION TO AMEND PILOT
Content
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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
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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)
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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, LLP. 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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QUESTIONS OR COMMENTS?
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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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