Transcript Freedom to Operate (FTO)

Silicon Valley IP Breakfast Program
Avoiding Land Mines in the
Development of New Technologies:
Freedom to Operate (FTO)
Analyses in a World Inundated with
Patents
Farella Braun + Martel LLP
Schwegman, Lundberg & Woessner PA
Austin Office
8911 Capital of Texas Highway
Westech Building, Suite 4150
Austin, TX 78759
512/628-9320
Minneapolis
1600 TCF Tower
121 So. 8th Street
Minneapolis, MN 55403
612/373-6900
www.slwip.com
Silicon Valley Office
150 Almaden Blvd.
Suite 750
San Jose, CA 95113
408/278-4040
Avoiding Land Mines in the Development
of New Technologies:
Freedom to Operate (FTO) Analyses in a
World Inundated with Patents
Presenters:
Farella Braun + Martel LLP
Rober Sloss, Partner
Eugene Mar, Associate
Schwegman, Lundberg & Woessner PA
Steven Lundberg, Shareholder
Andre Marais, Shareholder
Mike Lynch, Shareholder
Joe Wang, Associate
Austin Office
8911 Capital of Texas Highway
Westech Building, Suite 4150
Austin, TX 78759
512/628-9320
Minneapolis
1600 TCF Tower
121 So. 8th Street
Minneapolis, MN 55403
612/373-6900
www.slwip.com
Silicon Valley Office
150 Almaden Blvd.
Suite 750
San Jose, CA 95113
408/278-4040
It’s a Jungle Out There
3
But we are Trained For It
4
Oh, The Good Old Days! (?)
• 1960’s :
– Less than
250,000 patents
in force
– Courts were
hostile to
patents
– Patents were no
worry AND no
help
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Patent Camelot!
• By 1990:
– ~1,000,000
patents in force
– Still not too many
to be a headache
– Courts receptive
to patent
enforcement
– Still had two great
bubbles ahead!
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The Party’s Over Dude
• Recently:
– Nearly 3,000,000
patents in force
– Patent litigation at
peak
– But harder to get a
patent and harder
to enforce
– We all feel broke!
7
Raw Count of Patents in Force
1980-2009
Patents in Force
3,500,000
3,000,000
2,500,000
2,000,000
Count
1,500,000
1,000,000
500,000
0
1980
1990
2000
2009
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Subject Area Breakdown
Patents in force 1980-2009
60,000
50,000
40,000
MEMS
Web Media / Internet
30,000
Network Technologies
Clean Tech
Medical Devices
20,000
10,000
0
1980
1990
2000
2009
9
10
2009
2008
2007
2006
2005
2004
2003
2002
2001
2000
1999
1998
1997
1996
1995
1994
1993
1992
1991
1990
1989
1988
1987
1986
1985
1984
1983
1982
1981
1980
Number of
Patent Litigation Cases
by Year
Total
3000
2500
2000
1500
1000
500
0
Medical Device
Patent Litigation Cases
1990-2009
Total
200
180
160
140
120
100
80
60
40
20
0
1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009
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Clean Technology
Patent Litigation Cases
1990-2009
Total
120
100
80
60
40
20
0
1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009
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MEMS
Patent Litigation Cases
1990-2009
Total
500
450
400
350
300
250
200
150
100
50
0
1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009
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Network Technology
Patent Litigation Cases
1990-2009
Total
350
300
250
200
150
100
50
0
1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009
14
Web Media
Patent Litigation Cases
1990-2009
Total
140
120
100
80
Total
60
40
20
0
1990 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009
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What We Did “Way Back When”
• In the 60’s, 70’s and 80’s:
– If we did a clearance search, it was
relatively easy
– But odds of infringing a patent “by
accident” were very low
– So very often Freedom to Operate
searches and due diligence were
skipped entirely to save money
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Things Started Changing in the 90’s
• In the 90’s:
– We started getting “burned” once
and while
– By the end of the decade, it was rare
that there were no patent issues to
resolve in a due diligence/FTO
search
– More and more patent litigation
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Current Situation
• Currently:
– A record number of patents in force
– Patent litigation is at an all time high,
although down incrementally from its
peak in 2007/2008
– Intellectual property is key
consideration and asset for many
businesses, particularly if you are
entering a technology space for the
first time
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Questions We Will Answer Today
• What are the options and for patent
due diligence and freedom to operate
analysis?
• What are my litigation and
reexamination options to kill a bad
patent threatening my business?
• What are the best practices?
• What do I absolutely have to do if I
can’t afford the “best” practices to start
off?
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Avoiding Land Mines in the
Development of New
Technologies
Freedom to Operate (FTO)
Analyses in a World Inundated with
Patents
Austin Office
8911 Capital of Texas Highway
Westech Building, Suite 4150
Austin, TX 78759
512/628-9320
Minneapolis
1600 TCF Tower
121 So. 8th Street
Minneapolis, MN 55403
612/373-6900
www.slwip.com
Silicon Valley Office
150 Almaden Blvd.
Suite 750
San Jose, CA 95113
408/278-4040
Freedom to Operate (FTO)
Patent Landscape Analysis
Presented by Andre Marais & Joseph Wang
Austin Office
8911 Capital of Texas Highway
Westech Building, Suite 4150
Austin, TX 78759
512/628-9320
Minneapolis
1600 TCF Tower
121 So. 8th Street
Minneapolis, MN 55403
612/373-6900
www.slwip.com
Silicon Valley Office
150 Almaden Blvd.
Suite 750
San Jose, CA 95113
408/278-4040
FREEDOM!!!
©2009 Schwegman, Lundberg & Woessner, P.A
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Freedom to Operate
• You can play HERE…
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Freedom to Operate
• You can play HERE…
• …but not HERE
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Patent Landscape
• Analogous to geography
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Patent Landscape
• Property
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Patent Landscape
• Property
Owned by YOU
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Patent Landscape
• Property
Unclaimed
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Patent Landscape
• Property
Owned by OTHERS
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Patent Landscape
• Property
Owned by OTHERS
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Patent Landscape
• Property
Owned by OTHERS
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Patent Landscape
• Boundaries
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Patent Landscape
• Boundaries
– Fences
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Patent Landscape
• Boundaries
– Fences
– Walls
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Patent Landscape
• Boundaries
– Fences
– Walls
– Borders
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Patent Landscape
• Boundaries
– Fences
– Walls
– Borders
– CLAIMS
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FTO Overview
VIEW
IDENTIFY
ANALYZE
ASSESS
DESIGN
AROUND
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FTO Overview
VIEW
• Technologies
• Players
• Geographies
IDENTIFY
ANALYZE
ASSESS
DESIGN
AROUND
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FTO Overview
VIEW
• Technologies
• Players
• Geographies
• Search Patents
• Filter Results
IDENTIFY • 80-20 Rule
ANALYZE
ASSESS
DESIGN
AROUND
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FTO Overview
VIEW
• Technologies
• Players
• Geographies
• Search Patents
• Filter Results
IDENTIFY • 80-20 Rule
• Analyze Claims
• Map Scope Concepts
ANALYZE
ASSESS
DESIGN
AROUND
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FTO Overview
VIEW
• Technologies
• Players
• Geographies
• Search Patents
• Filter Results
IDENTIFY • 80-20 Rule
• Analyze Claims
• Map Scope Concepts
ANALYZE
• Bulk Exclusions
• Focus on Remaining Patents
ASSESS
DESIGN
AROUND
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FTO Overview
VIEW
• Technologies
• Players
• Geographies
• Search Patents
• Filter Results
IDENTIFY • 80-20 Rule
• Analyze Claims
• Map Scope Concepts
ANALYZE
• Bulk Exclusions
• Focus on Remaining Patents
ASSESS
• Brainstorm Alternatives
• Assess Feasibility and Cost
DESIGN • Test Against Claim Map
AROUND
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View the Patent Landscape
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View the Patent Landscape
• Identify the technical area
• Identify IP owners
• Consider geographic region
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View the Patent Landscape
• Identify the technical area
– Specificity will determine how many
patents need to be reviewed
• Identify IP owners
• Consider geographic region
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View the Patent Landscape
• Identify the technical area
– Specificity will determine how many
patents need to be reviewed
• Identify IP owners
– Search by assignee
• Consider geographic region
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View the Patent Landscape
• Identify the technical area
– Specificity will determine how many
patents need to be reviewed
• Identify IP owners
– Search by assignee
– Search by inventor
• Consider geographic region
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View the Patent Landscape
• Identify the technical area
– Specificity will determine how many
patents need to be reviewed
• Identify IP owners
– Search by assignee
– Search by inventor
– Commercial database
• Consider geographic region
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View the Patent Landscape
• Identify the technical area
– Specificity will determine how many
patents need to be reviewed
• Identify IP owners
– Search by assignee
– Search by inventor
– Commercial database
• Consider geographic region
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View the Patent Landscape
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Identify the Properties
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Identify the Properties
• 80-20 Rule
Search
Results
•
•
•
•
Keywords
Categories
Assignees
Inventors
Exclude
using Map
• Patents that include
“unneeded” scope
concepts
Review in
Detail
• Patents that cannot
be excluded
• Focus time and $
on these patents
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Identify the Properties
• Search for patents
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Identify the Properties
• Search for patents
– Keywords
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Identify the Properties
• Search for patents
– Keywords
– Technology Categories
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Identify the Properties
• Search for patents
– Keywords
– Technology Categories
• USPTO classes
and subclasses
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Identify the Properties
• Search for patents
– Keywords
– Technology Categories
• USPTO classes
and subclasses
– Assignees
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Identify the Properties
• Search for patents
– Keywords
– Technology Categories
• USPTO classes
and subclasses
– Assignees
– Inventors
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Identify the Properties
• Filter the Results
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Identify the Properties
• Filter the Results
– Tags
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Identify the Properties
• Filter the Results
– Tags
– Ratings
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Identify the Properties
• Filter the Results
– Tags
– Ratings
• Breadth
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Identify the Properties
• Filter the Results
– Tags
– Ratings
• Breadth
• Detectability
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Identify the Properties
• Filter the Results
– Tags
– Ratings
• Breadth
• Detectability
• Ease of DesignAround
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Identify the Properties
• Filter the Results
– Tags
– Ratings
• Breadth
• Detectability
• Ease of DesignAround
– Rankings
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Identify the Properties
• Download patents
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Identify the Properties
• Download patents into ClaimBot
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Analyze the Boundaries
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Analyze the Boundaries
• Analyze patent claims
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Analyze the Boundaries
• Analyze patent claims
• Map claims to “scope concepts”
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Analyze the Boundaries
• Analyze patent claims
• Map claims to “scope concepts”
– No narrower than any claim element
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Analyze the Boundaries
• Analyze patent claims
• Map claims to “scope concepts”
– No narrower than any claim element
– Summarizes meaning
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Analyze the Boundaries
• Analyze patent claims
• Map claims to “scope concepts”
– No narrower than any claim element
– Summarizes meaning
– Shows commonality among claims
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Analyze the Boundaries
• Analyze patent claims
• Map claims to “scope concepts”
– No narrower than any claim element
– Summarizes meaning
– Shows commonality among claims
• Generate a claim map
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Analyze the Boundaries
• Generate a claim map
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Analyze the Boundaries
• Generate a claim map
– Spreadsheet chart
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Analyze the Boundaries
• Generate a claim map
– Spreadsheet chart
– Shows outer limits of claim coverage
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Assess Freedom to Operate
• Getting in trouble requires at least
THESE THINGS:
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Assess Freedom to Operate
• Getting in trouble requires at least
THESE THINGS:
NO SWIMMING
NO DIVING
NO SMOKING
NO SKATEBOARDING
NO PETS
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Assess Freedom to Operate
• Getting in trouble requires at least
THESE THINGS:
NO SWIMMING
NO DIVING
NO SMOKING
NO SKATEBOARDING
NO PETS
– Expressed as scope concepts
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Assess Freedom to Operate
• If you don’t do THEM…
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Assess Freedom to Operate
• If you don’t do THEM…
• …you won’t end up HERE
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Design Around
• Go around the boundaries
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Design Around
• Brainstorm alternatives
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Design Around
• Brainstorm alternatives
• Assess feasibility and cost
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Design Around
• Brainstorm alternatives
• Assess feasibility and cost
• Test alternatives against claim
map
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Summary
• View the Landscape
• Identify the Properties
• Analyze the Boundaries
• Assess Freedom to Operate
• Design Around
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Pros and Cons of a
Freedom to Operate Analysis
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FTO Analysis – Pros and Cons
• Pros
– Potentially acquiring peace of mind going forward
– Learning of possible impediments before investing
in a new product or new technologies
• The ability to design around patents before they
are asserted
– Dealing with licensing issues when you have some
leverage and flexibility
– Proactively developing a strategy
• License?
• Litigate?
• Ignore?
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FTO Analysis – Pros and Cons
• Cons
– Cost
• But much cheaper than litigation
– Tying up personnel
– Potential exposure to willful infringement claim
• 35 U.S.C. § 284 permits enhanced damages for
willful infringement
• Seagate standard – objective recklessness
– The accused infringer “acted despite an
objectively high likelihood that its actions
constituted infringement”
– The risk of infringement “was either known
or so obvious that it should have been
known”
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How to Implement an Effective
Design-arounds
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Design-arounds
• Potential Defense to Infringement
& Willful Infringement
– Timing: Pre-litigation v. during
litigation.
• Some accused infringers have
aggressively moved to dismiss or
moved for summary judgment of
no willful infringement postSeagate.
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Be Aware of Advice of Counsel Issues
• To defend against willful
infringement allegations, it will likely
be necessary to conduct a limited
waiver of privilege.
• Try to limit waiver to just
communications that were actually
made to client regarding designarounds.
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Be Aware of Advice of Counsel Issues
• Patentee could take aggressive
discovery and even push for
uncommunicated work product or
internal communications that reflect the
design-arounds.
– Seagate: Scope of “waiver does not
extend to work product that was not
communicated to the alleged
infringer.” 497 F.3d at 1370.
• Possible taint to litigation counsel’s
privilege
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Practice Pointers
• Consult with outside attorney for designaround. Keep the audience who receives the
design-around advice small.
• Separate design-around attorney from
litigation attorney so that waiver does not taint
litigation counsel.
• Design should originate from internal engineer
or employee, not an attorney. Bear in mind
30(b)(6) witness.
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Practice Pointers
• Manage and limit written communications.
– Keep e-mails and drafts to a minimum.
– Arrange for one live document that can be edited
through on-line collaboration.
– Remind team orally not to compare design to patent
in writing
– Do not forward outside counsel advice or
incorporate into presentation decks for company.
• Get an opinion letter on final design-around.
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Design-arounds during litigation
TiVo v. EchoStar (E.D. Texas)
• If design-around is more than colorably
different such that substantial open issues of
infringement exist, then contempt proceedings
are inappropriate. Need to file a separate
infringement action.
– Can have expert testimony
– Movant must prove contempt by clear and
convincing evidence that design-around is
not more than colorably different than
adjudged products.
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Design-arounds during litigation
• Court gave little weight to the three opinion
letters EchoStar obtained for the designaround. Court views this as evidence of
EchoStar’s good faith, which is irrelevant in
contempt proceedings.
• Court may not consider man-hours and
dollars invested in design-arounds.
• Motive? Court notes repeatedly that EchoStar
never notified any court about the designaround and its implementation.
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Steps to Consider
• Pre-emptively seek court approval
of design-around
– At injunction hearing?
– Prepare expert testimony
– Prepare corporate spokesperson on
issue
• File a declaratory judgment action
– likely has to be with same trial
judge.
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Steps to Consider
• The design-around documents
must be tailored towards a
particular claim term or limitation.
• The presentation of the designaround has to focus on how the
change is a fundamental change
to how the technology is
performed.
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Devising a Strategy to Defend Against
A Potential Infringement Claim
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Preparing to Defend a Potential
Infringement Claim
• Implementing a litigation strategy
in advance
– Get your house in order
•
•
•
•
•
Find relevant records
Put litigation hold in place
Document important and helpful events
Talk to key witnesses
Do some financial projections
– Develop invalidity defenses
• Find prior art
• Understand the current state of the law on novelty
• Investigate other litigation on the same or related
patents
• Analyze weaknesses in the relevant patents
• Attempt to determine whether claimed invention has
been “on sale” or “in public use”
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Preparing to Defend a Potential
Infringement Claim
• Implementing a litigation strategy
(con’t)
– Develop infringement defense
• Do preliminary claim charts
• Does design around go far enough?
– Decide whether to get opinion of counsel
– Conduct due diligence on the potential plaintiff
• Determine likely forum for litigation
– TS Tech makes it somewhat harder for patent owners
to sue anywhere – including (or especially) the ED of
Texas
– Lower standard for filing declaratory judgment actions
» SanDisk – assertion of rights under a patent
against a party who contends it has a right to
engage in the accused activity
• Will the patent owner be able to get an injunction or
will its remedy likely be limited to damages?
103
Reexamination
Some Part of the Solution?
Mike Lynch
Schwegman, Lundberg & Woessner
June 18, 2009
Austin Office
8911 Capital of Texas Highway
Westech Building, Suite 4150
Austin, TX 78759
512/628-9320
Minneapolis
1600 TCF Tower
121 So. 8th Street
Minneapolis, MN 55403
612/373-6900
www.slwip.com
Silicon Valley Office
150 Almaden Blvd.
Suite 750
San Jose, CA 95113
408/278-4040
The Process
Reexamination is granted based on the presence of a
Substantial New Question of Patentability (SNQ) based
on patents and printed applications
The art must be selected and applied with great care
The SNQ may be based on art previously before the PTO (35
USC § 303), or (unsuccessfully) previously applied in litigation
(In re Swanson)
If granted, reexamination is conducted by the Central
Reexamination Unit (CRU).
There is no requirement that the CRU look beyond the
patents and publications submitted with the request
Which Type?
Ex parte Reexam
Inter partes Reexam
Available for any patent (exp. + 6
yrs.)
Available only for patents filed after
Nov. 29, 1999
Anyone may file (actual requestor
may be anonymous)
Must be requested by a Third Party
Requestor (and the Real Party in
Interest must be named)
Interviews by the Patent Owner are
permitted
No interviews
Limited participation by any TPR
before examination (if the Patent
Owner files a statement)
TPR may comment on each
response by the Patent Owner
Only the Patent Owner may appeal
Either party may appeal
Overview of Results
Inter parte Reexam Statistics
As of March 31, 2009:
Requests filed
Known to be in litigation
Decisions on requests
Requests granted
Concluded to reexam certificate
all claims confirmed
all claims cancelled
some claims changed
609
382 (63%)
532
503 (95%)
55
4 (7%)
40 (73%)
11 (20%)
Decisions on appeal (current)
11
IPR Filings
PTO fiscal years
10/1—9/30
2009 data, 1st half only
Why Consider Reexamination?
As a backstop to ongoing or anticipated
litigation
Particularly if litigation is in a jurisdiction where validity
challenges are often not successful
To provide a basis supporting a stay of litigation
To facilitate or advance settlement discussions
or licensing negotiations
Advantages of IPR As a Complement to
Litigation
Different standards for patentability
No presumption of validity
Claim terms given their broadest reasonable interpretation
unpatentability supported by preponderance of the evidence
standard
Patent Owner’s arguments, construction of claims and any claim
amendments may be useful in the litigation
If the claims asserted in the litigation are amended, intervening
rights may exist, limiting damages
May provide a basis for stay of the litigation
Rejections in an IPR may provide an incentive for the Patent
owner to settle
Unlike Ex parte reexams, IPRs can be terminated if all validity issues
are resolved
Challenges For the Patent Owner If a Patent in
Litigation is Reexamined
Complying with the duty of disclosure as discovery/trial proceeds
Depositions (e.g., inventors or 30(b)(6) on claim interpretation)
Additional prior art
Expert testimony regarding the art or claim terminology
The duty of disclosure in reexams is far from clearly defined
Risks of generating bases for inequitable conduct allegations
potentially large volumes of prior art
Avoiding estoppels that impact litigation positions
Response periods are relatively short, and extensions of time not
easily obtained
The Critical Challenge
Complying with protective order restrictions
Both fronts of the battle, in the PTO and the Court, are
interrelated; and coordination with the trial team is
essential, but many protective orders have a “no
prosecution”-type clause that limits the trial team’s ability
to provide any involvement in prosecution
The trial team and the reexam attorney
must determine how essential
information is conveyed in each direction
In some cases, special provisions may be
made in the protective order
Duty of Disclosure in Reexam
Governed by § 1.555, which closely tracks § 1.56
Certainly patents and publications that are material
are called for, as well as pertinent admissions
(scope of the prior art, knowledge of POSITA,
etc.)
But consider the information that may arise in
litigation, but be subject to a protective order:
Testimony and documents of opposing witnesses and experts,
and third parties
Arguments on claim interpretation
Motions for summary judgment
The PTO has limited provisions for addressing
confidential information, but they are inadequate,
and may run afoul of many protective orders
Reexamination Estoppel 1 –The PTO
35 USC § 317(b)
“Once a final decision has been entered [in an action originating in
D. Ct.], that the party has not [proved] the invalidity of any patent
claim in suit, or
if a final decision in an [IPR] instituted by a [TPR] is favorable to the
patentability of any . . . claim of the patent,
then neither that [TPR] nor its privies may thereafter request an
[IPR] of any such patent claim on the basis of issues which that
party or its privies raised or could have raised in such civil action or
[IPR], and an [IPR] requested by that party or its privies on the
basis of such issues may not thereafter be maintained by the Office
....
This subsection does not prevent the assertion of invalidity based
on newly discovered prior art unavailable to the third-party
requester and the Patent and Trademark Office at the time of the
inter partes reexamination proceedings.”
Reexamination Estoppel 2–D. Ct.
315(c) CIVIL ACTION.— A [TPR] whose request for an [IPR]
results in an order under section 313 is estopped from asserting at
a later time, in any civil action arising in whole or in part under
section 1338 of title 28, the invalidity of any claim finally determined
to be valid and patentable on any ground which the [TPR] raised or
could have raised during the [IPR]. This subsection does not
prevent the assertion of invalidity based on newly discovered prior
art unavailable to the third-party requester and the Patent and
Trademark Office at the time of [IPR].
When is the “later time,” i.e., when does the estoppel apply?
The legislative history suggests after a final decision (including all
appeals)
The legislative history can be read to suggest that the estoppel does not
apply to art unknown at the time of the IPR
But there is a question about whether that requires the art to be
“unknown” to the PTO
Many believe this estoppel does not apply in ITC actions
Reexamination Estoppel 3– Any Court?
The uncodified provision--AIPA § 4607
Any party who requests an inter partes reexamination under
section 311 of title 35, United States Code, is estopped from
challenging at a later time, in any civil action, any fact
determined during the process of such reexamination, except
with respect to a fact determination later proved to be
erroneous based on information unavailable at the time of the
inter partes reexamination decision. If this section is held to
be unenforceable, the enforceability of the remainder of this
subtitle or of this title shall not be denied as a result.
This provision was identified by the Court (ED TX), but without
express citation, as one factor supporting the stay granted
pending reexamination in the Echostar Technologies v. TiVo
case.
How To Manage The Estoppel
File IPR with timing that should result in the IPR
reaching a final decision: (1) after the anticipated trial.
but (2) before a final judgment in the case
Need to consider likelihood of injunction and/or stay of
injunction pending appeal or pending conclusion of the IPR
As IPR proceedings go further, we must expect gamesmanship
in trying to control trial dates to implicate/avoid estoppel
So long as credible prior art was used for the IPR, and appeal is
reasonable, there is substantial delay in the IPR process:
11 BPAI decisions in IPRs
Earliest IPR: 95/000,006 IPR filed 12/4/2002 Appeal decided
3/26/2007
Latest IPR: 95/000,068 IPR filed 12/27/2004 Appeal decided
3/21/2009
BPAI in May 2009, disposed of 523 cases, but received 1641
Filing Considerations
Basic Question—how good, really, are the patents and
printed publications you have?
What are the chances that the claims of interest will need
amendment to avoid the art?
Can the Patent Owner narrow the claims to avoid the art, but
still cover your products/services
If so, is there still a benefit to the risk due to intervening rights
resulting from the amendments?
Is there additional art that can be credibly introduced to try to
foreclose that ability to narrow?
Where are there claim interpretation issues?
Have you identified prior art to address any problematic
interpretations?
More Filing Considerations
Is the technology so complex such that the PTO is far better
equipped to evaluate it?
Do you have other prior art that will not be in the reexam—prior
public use or sale, prior inventor under 102(f)-(g)?
Are there other substantial defenses that will not be addressed
in the reexam?
§ 112 enablement or description
§ 101 patentable subject matter
unenforceability
non-infringement
Filing The Request For IPR
You can comment later, but the request is your real shot
Carefully establish each SNQ
A SNQ is not the same as a prima facie case of unpatentability
You must show why the question presented is different from the
issues previously considered by the PTO
A SNQ does not exist just because of a change in law (KSR, for
example)
But a new reference, even if combined with one originally
considered, may get a very different application, if the prior
allowance was based on no TSM
Provide a detailed and carefully referenced explanation
of the reference(s) supporting each SNQ
Include a carefully referenced claim chart for each SNQ
You must thoroughly convince the Examiner of the position
Filing The Request (cont.)
Realistically evaluate which potential SNQs have a
reasonable chance of success (estoppel vs. clarity and
focus)
The SNQ is only your “ticket” to the IPR. For each
SNQ, you then must establish a prima facie case of
unpatentability that is as ironclad as possible that the
Examiner can adopt as a rejection
The last thing you want is for the Examiner to order the IPR, but
to then not reject the claims because you failed to make a
sufficiently convincing showing
Filing The Request (cont.)
If there are any issues regarding the effective date of a
publication, provide a declaration to establish the date
Do not even hint at issues the Examiner will not
consider on the issued claims (§ 101 or § 112 issues;
inequitable conduct, etc.)
Evaluate each SNQ to determine if there is a need to
address the POSITA
Who Is Using IPR?
Lots of parties in litigation
63% according to PTO numbers
Most active requestors
Samsung
Shimano
Microsoft
Intel
Micron Technology
Most requested against:
Rambus (24)
Anascape (10)
Any Questions?
Mike Lynch
Schwegman, Lundberg & Woessner
[email protected]
(512) 628-9324
Austin, TX office