The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board, Third Edition

A concise resource for practitioners actively involved in managing the unique aspects of PTAB trials, this guide is written by attorneys who have handled hundreds of PTAB proceedings. They share their practical experience in this developing aspect of patent law, and provide a unique perspective for lawyers advising clients and planning strategy during PTAB trials. Trials before the Patent Trial and Appeal Board (PTAB), introduced to U.S. patent law by the Leahy-Smith America Invents Act, are a hybrid of conventional patent prosecution and patent litigation practices. Successfully navigating a PTAB trial may entail tasks ranging from analyzing highly technical prior art to deposing scientific experts, drafting patent-claim amendments, and arguing at an oral hearing before an expert panel. Now updated and significantly expanded, the new Third Edition of The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board is a concise resource for practitioners actively involved in managing the unique aspects of PTAB trials. Having handled several hundred PTAB proceedings, the authors share their practical experience in this developing area and provide a unique perspective for practitioners advising clients and planning strategy during PTAB trials. Organized for ease of use, the book's practice-focused information includes: A quick reference for PTAB statutes and rules, including recent updates and rule changes Lessons learned from the growing body of Federal Circuit case law reviewing final PTAB decisions Strategic considerations for coordinating PTAB trials with your litigation strategy A detailed description of a PTAB trial from petition preparation to appeals to the Court of Appeals for the Federal Circuit Handy references synthesizing supporting laws, rules, and regulations The "Practical Tools" chapter compiles, in one place, all of the statutes, rules, and PTAB guidance covering PTAB trials, organized by topic. A busy practitioner can look up a topic, such as discovery, claim construction, or joinder, and have all of the collected guidance in one place. These are organized using a simple, standard framework including CFR citations; PTO comments during rulemaking; PTAB orders and decisions; references to the PTAB trial practice guide; and informal guidance such as PTAB training presentations.

Table of Contents:
Contents About the Authors xi Chapter 1 Introduction 1 Disclaimer 2 Chapter 2 Prefiling Considerations and Relationship between Proceedings 5 A. Preliminary Considerations 5 1. Timing 6 2. Considerations for Parallel Proceedings 8 3. Appellate Standing 11 B. Stays of Parallel Proceedings 14 1. District Courts 14 2. ITC 19 3. Other Considerations 20 C. Claim Construction 21 1. Claim Construction Standards 21 2. Impact of Claim Construction in and on Other Proceedings 23 D. Discretionary Denials 27 1. Previous Consideration by the Office—35 U.S.C. § 325(d) 29 2. Procedural Denials—35 U.S.C. § 314 32 E. Estoppel 40 1. Statutory and Regulatory Estoppel 41 a. Introduction 41 b. Statutory Estoppel in District Courts and the ITC 42 i. Predicate Elements of Statutory Estoppel 43 ii. Scope of Estoppel 44 iii. Joined Parties 48 iv. Burden of Proof 49 c. Statutory and Regulatory Estoppel at the Patent Office 50 i. Patent Owner Estoppel 50 ii. Petitioner Estoppel 52 2. Other Estoppels 55 a. Judicial Estoppel 55 b. Collateral Estoppel 56 c. Assignor Estoppel 57 F. Joinder 58 G. Real Parties in Interest 61 Chapter 3 Petition Preparation 65 A. Petition Requirements 65 1. Anyone but the Patent Owner May File 65 2. Based on Patents or Printed Publications 65 3. Standing and Timing for Filing 66 4. Page-Length and Formatting Requirements 67 5. Petitioner’s Mandatory Notices 67 a. Identify All Real Parties in Interest 68 b. Related Matters 69 c. Lead and Backup Counsel 70 6. Requirements of Sections 312 and 42.104 70 a. Identify Each Claim Challenged and the Statutory Ground for Each Challenge 70 b. Identify How the Claim Should Be Construed 71 c. Identify the Statutory Grounds and Evidence Supporting the Challenge 72 7. Service of Petition 72 8. Incomplete Petition 72 B. Confidential Information and Protective Orders 73 1. Petition and Supporting Evidence Generally Made Public (Section 312(b)) 73 2. Motion to Seal and Protective Order (Sections 42.14, 42.54) 73 3. Default Protective Order in Trial Practice Guide and Potential Modifications 74 C. Demonstrating Prior Art Status 75 1. Qualifying Nonpatent Literature as Prior Art 75 2. Qualifying Patents or Published Applications as Prior Art as of an Earlier Filing Date 77 D. Expert Declarations 78 E. Addressing Potential Bases for Discretionary Denial of Institution 78 F. Multiple Petitions 79 1. Challenging Related Patents 79 2. Challenging a Single Patent 80 3. Multiple Petitioners 80 4. Serial Petitions—General Plastic Factors 81 5. Joinder of Multiple Proceedings 82 G. Potential Authorization for a Petitioner Reply to Patent Owner’s Preliminary Response 84 Chapter 4 Preliminary Response to a Petition 85 A. Optional to File 85 B. Who Can File 86 C. Requirements for Filing 86 D. Types of Arguments 87 1. Arguments against Institution 87 a. Section 325(d) (Substantially the Same Arguments) 87 b. Section 314 (Fintiv and General Plastic) 90 c. Failure to Identify Real Party in Interest 93 d. One-Year Time Bar 96 2. Arguments against the Merits 97 a. Pointing Out Nonpatent Literature Is Not Prior Art 97 b. Claim Construction Arguments 100 c. Missing Claim Element(s) 101 d. Legally Insufficient Motivation to Combine 101 e. New Testimonial Evidence (e.g., Declaration) 103 f. Strategic Disclaimer of Challenged Claims 104 E. Practice Tips 104 1. Whether to File a Patent Owner Preliminary Response 104 2. Which Arguments to Include or Hold Back 105 3. Increase in Section 325(d) Denials (Substantially the Same Arguments) 106 4. Increase in Section 314 Denials (Fintiv and General Plastic) 108 5. Be Careful of Preinstitution Replies 109 Chapter 5 Postinstitution: Briefing and Discovery 111 A. Schedule 111 1. Timing and Extensions of Time 111 2. Telephone Conferences with the Board 113 B. Merits Briefing and Strategy 114 1. Patent Owner Response 114 2. Petitioner Reply 116 3. Patent Owner Sur-Reply 117 C. Discovery 117 1. Mandatory Initial Disclosures 118 a. Option 1 118 b. Option 2 119 2. Routine Discovery 119 a. Exhibits Cited 120 b. Cross-Examination 120 c. Inconsistent Information 120 3. Additional Discovery 121 4. Third-Party Discovery 124 5. E-Discovery (Model Order in PTAB Guide Appendix) 126 6. Protective Orders 127 7. Sanctions 129 D. Testimony 131 1. Cross-Examination 131 a. Timing and Logistics 132 b. Objections, Attorney Conduct, Witness Communication 134 E. Forms of Evidence, Objections, Motions to Exclude, and Motions to Strike 135 1. Forms of Evidence 136 2. Objections 137 3. Motions to Exclude 137 4. Motions to Strike 138 Chapter 6 Postinstitution: Motions to Amend 139 A. Introduction 139 1. Overview and Brief History 139 2. Strategic Considerations 140 a. Impact on Briefing Schedule 141 b. Intervening Rights 142 c. Availability of Other Proceedings 144 B. Statute and Regulations 146 C. Burdens of Persuasion 150 1. Overview of Patent Office Rules 151 2. Patent Owner and Petitioner Burdens of Proof and Persuasion 151 3. The Board’s Discretion 152 4. Major Decisions (Federal Circuit and Board) 153 D. Pilot Program 157 1. Procedure and Timeline 158 2. Evidentiary Considerations 161 E. Other Issues 161 1. Written Description, Enablement, Indefiniteness, and Patent Eligibility 161 2. Antedating References 164 Chapter 7 Postinstitution: Oral Argument, Rehearing, Precedential Opinion Panel 167 A. Oral Argument 167 1. Argument Procedures 167 2. Demonstratives 171 3. Legal Experience Advancement Program 173 B. Rehearing Procedures 174 C. Precedential Opinion Panel 176 Chapter 8 Appeals 181 A. Standing and Jurisdiction to Appeal 181 1. Standing to Appeal 181 a. General Legal Standards 182 b. Proving or Challenging Injury in Fact 183 i. Potential Infringement Liability 184 ii. Economic Harm 187 iii. Estoppel Injury 188 iv. Other Types of Injury 189 c. Timing Considerations 191 2. Decisions to Institute 192 3. PTAB Motion Rulings 194 4. Final Determinations 195 5. Constitutional Challenges 195 B. Considerations on Appeal 196 1. Selecting Issues and Requested Relief for Appeal 196 2. Requirements for Filing a Notice of Appeal 197 3. Appeal Schedule 197 4. Motion Practice on Appeal 198 C. Standards of Review 199 1. Standard of Review of Claim Construction 199 2. Standard of Review of Invalidity Determinations 199 3. Standard of Review of Office Rules 200 4. Standard of Review for Constitutional Challenges 200 D. Other Strategic Considerations 200 1. Making a Record for Appeal 200 2. Third-Party/Government Participation 201 3. The Preclusive Effect of Divergent District Court and Office Decisions 202 E. En Banc Review 203 Chapter 9 Other Motions Practice 205 A. Motions Practice 205 B. Settlement and Termination 207 C. Supplemental Briefing 208 Index 211

About the Author :
Kathleen A. Daley (coeditor) is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where she has extensive experience in trial, appellate, and PTAB litigation. She has led litigation teams before district courts, the U.S. International Trade Commission, the PTAB, and the Federal Circuit. Kathleen has also made post-grant proceedings before the PTAB, including reexaminations and inter parties review proceedings, a focus of her practice. Her work encompasses a wide range of technologies with an emphasis on medical devices. Michael J. Flibbert (coeditor) is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. With more than 25 years of patent litigation experience, he serves as lead counsel in district court litigations, post-grant proceedings before the Patent Trial and Appeal Board, and appeals before the U.S. Court of Appeals for the Federal Circuit. Mike represents clients in patent cases involving pharmaceuticals, biotechnology, chemistry, chemical engineering, agriculture, and materials science. He has particular experience representing pharmaceutical patent holders in litigations arising under the Hatch-Waxman Act. Joshua L.