December 6, 2018 Advanced Patent Law Institute - PowerPoint Presentation

December 6, 2018 Advanced Patent Law Institute Palo Alto Obviousness: Latest Developments Steven CarlsonRobins Kaplan LLP Derek WalterWeil Gotshal & Manges LLP

2RoadmapSerial IPRs Broadest Reasonable Interpretation v. Philips standard“Patent or Printed Publications” Restriction in IPRsUse of Secondary Factors in IPRs

Serial IPRs

Serial Petitions4Is there a “one bite at the apple” rule at the PTAB? May the PTAB issue multiple written decisions on petitions by a party and/or its privies brought against the same claim?May the PTAB institute multiple IPRs on petitions by a party and/or its privies brought against the same claim?

Serial IPR Petitions: Statute5 “The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. 315(e)(1)

Serial Petitions: Statute6 Statute: a petition and/or its privies and other RPIs may not “request or maintain a proceeding” after the PTAB issues a final written determination on one of their petitions, as to an already-challenged claim Is the second proceeding a legal nullity? Does it matter if the proceedings are filed on the same day, or spaced out in time?Does it matter if the patent owner wins the first petition?

Serial Petitions: Statute7 Statute: the prohibition only applies to grounds “that the petitioner raised or reasonably could have raised during that inter partes review” Argument: If the petitioner had multiple arguments that did not all fit in the page limits for the first petition, then a second petition can be filed, because the additional grounds could not reasonably have been presented in the first petition.

Serial Petitions: Prevalence8 Percentage Duplicate Petitions (counting all)Percentage Duplicate Petitions (excluding first petition)Apple5634Microsoft59 37Samsung38 24Google3822 LG 34 18 Source: Carlson & Schultz, Tallying Repetitive IPR Petitions, IP Law360, 9/14/18; see also Berta & Reidy , Multiple IPR Petitions for Same Claim Are Often Not Repetitive, IP Law360, 11/16/18 Percentage of petitions by Top 5 filers that overlap at least one claim of another petition filed by the same party -- the second column excludes the first “proper” petition

Serial Petitions: General Plastics9General Plastic Industrial v. Canon Kabushiki Kaisha, IPR2016-01357 (precedential) Updated Trial Practice Guide (August 2018) features guidance on instituting overlapping petitions:

Once instituted, “[petitioner] is entitled to a final written decision addressing all of the claims it has challenged”Serial Petitions: SAS angle10 SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1359 (2018) So….: if the petitioner may not maintain an IPR on a claim after a first FWD, and the PTAB must issue a FWD if it institutes an IPR, thenShould the PTAB be instituting overlapping petitions?Practice tip: protect yourself!

Broadest Reasonable Interpretation (BRI)v. Philips

November IPR Filings12 11/12/18

During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification. Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation. As this court has discussed, this methodology produces claims with only justifiable breadth.In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)BRI v. Phillips 13

“Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history.”Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) BRI v. Phillips14

“In an inter partes review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.121, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”37 C.F.R. § 42.100(b)Strategic Considerations 15

Increased need for consistency between district court and PTAB positionsCollateral estoppelJudicial estoppelPetitioners must commit to a claim construction within one year after complaint is filedGreater role for IPR record as prosecution history in claim constructionIncreased district court stay likelihoodConsider ex partes reexamination if claim construction standard is criticalStrategic Considerations 16

“Patents or Printed Publications”

IPRs: “Patents or Printed Publications” Restriction18 District CourtAny ground of invalidity permitted PGR (“First Window”)Any ground of invalidity permitted IPR (“Second Window”) “A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications”

AIA: Legislative History19“In this bill, however, the issues that can be raised in the second window are so sharply limited that the goal of flushing out all claims is unattainable. Only 102 and 103 arguments based on patents and printed publications can be raised in the second window. Accused infringers inevitably will have other challenges and defenses that they will want to bring, and those arguments can only be raised in district court .” Senator Kyl Speech on S 3600, 154 Cong. Rec. S9982-S9993, at S9989 (Sept. 27, 2008).

“Patents or Printed Publications” Restriction20In IPRs, must the prima facie case of obviousness be established in patents or printed publications?

KSR Factors21 (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results;(C) Use of known technique to improve similar devices (methods, or products) in the same way;(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.Under KSR, a wide-ranging list of factors may be considered that are based in matters external to the submitted prior art. These include:Question: Are all these KSR factors proper in limited IPR review?

Study: Percentage of multi-reference invalidity rulings supported by an express TSM in the submitted prior art: approximately 33%Sample: 20 most recent rulings issued on petitions to each of the Top 5 filers (Apple, Samsung, Google, Microsoft, LG) (100 total) (data available on request)Question: can the prima facie case of obviousness be established by relying on evidence external to the patents or printed publications? -- i.e., non-TSM KSR factors (e.g., “obvious to try”)? IPR Statistics: Multi-Reference Invalidity Rulings22Practice tip: protect yourself!

Secondary Considerations

24Graham FactorsScope and contents of the artDifferences between the prior art and the claims at issueLevel of ordinary skill in the artObjective indicia of obviousness

“A determination of whether a patent claim is invalid as obvious under § 103 requires consideration of all four Graham factors, and it is error to reach a conclusion of obviousness until all those factors are considered. Objective indicia of nonobviousness must be considered in every case where present.”Apple Inc. v. Samsung Electronics Co., Ltd., 839 F. 3d 1034, 1048 (Fed. Cir. 2016) (en banc) Law: Obviousness With Integrated Objective Indicia25

“Indeed , evidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not. It is to be considered as part of all the evidence, not just when the decision maker remains in doubt after reviewing the art.”Stratoflex, Inc. v. Aeroquip Corp., 713 F. 2d 1530, 1538-39 (Fed. Cir. 1983) Law: Obviousness With Integrated Objective Indicia26

27Graham FactorsScope and contents of the artDifferences between the prior art and the claims at issueLevel of ordinary skill in the artObjective indicia of obviousness

“In any event, as with the evidence of commercial success, the district court found that the evidence of copying could not overcome the weight of the competing evidence of obviousness of the claimed process. We agree with the district court. The claimed process differs from the disclosure of the '323 patent only in routine details, the implementation of which would have been well within the capabilities of one of ordinary skill in the art.”Merck Sharp & Dohme Corp. v. Hospira, Inc. , 874 F. 3d 724, 731 (Fed. Cir. 2017)Obviousness With Decoupled Objective Indicia 28

“It is time to remedy our inconsistent treatment of the procedures and burdens in applying the evidentiary factors of obviousness, despite the clarifying precedent in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). The Court in Graham resolved prior inconsistencies and established what was seen as a wiser standard of obviousness. The Court established the factual premises and fixed the placement of the burdens. It is time to restore this salutary rigor .”Merck Sharp & Dohme Corp. v. Hospira, Inc., 874 F.3d 724, 731 (Fed. Cir. 2017) (Newman, J. dissenting)Obviousness With Decoupled Objective Indicia 29

“The legal questions I see here include (1) whether an obviousness analysis involving secondary considerations (or objective indicia of non-obviousness) is a one- or two-step process and (2) how much weight to accord secondary considerations in the obviousness analysis .”Apple Inc. v. Samsung Electronics Co., Ltd., 839 F. 3d 1034, 1089 (Fed. Cir. 2016) (en banc) (Reyna, J., Dissenting) Law: Objective Indicia Of Obviousness30

“KSR and Graham assigned a limited role to secondary considerations…. Before Graham, the Supreme Court repeatedly held that courts should give secondary considerations limited weight in the ultimate legal determination of obviousness and that the courts need not consider them where the claimed invention represents a small advance and there is a strong case for obviousness. Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1081 (Fed. Cir. 2016) (Dyk, J. dissenting) Obviousness With Decoupled Objective Indicia31

Secondary Considerations At The PTAB 32

Secondary Considerations At The PTAB 33

CopyingLicensing – often not given substantial weightCommercial Success – expert testimony re: embodying productsIndustry praise – connection to invention, not correlationSkepticism – connection to invention, not correlationLong felt need – connection to invention, not correlationShowing Nexus 34

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