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. To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/pgrt-basics-2020/

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The material in this webinar is for informational purposes only. It should not be considered
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6. Meet the Faculty
MODERATOR:
Eugene Goryunov - Haynes & Boone
PANELISTS:
Jeremy Albright - Norton Rose Fulbright
Mike Cohen - Baxter Healthcare Company
Jon Stroud - Unified Patents
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7. About This Webinar – PGRT Basics
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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8. 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.
Each Financial Poise Webinar is delivered in Plain English, understandable to investors, business
owners, and executives without much background in these areas, yet is of primary value to
attorneys, accountants, and other seasoned professionals. Each episode brings you into engaging,
sometimes humorous, conversations designed to entertain as it teaches. Each episode in the
series is designed to be viewed independently of the other episodes so that participants will
enhance their knowledge of this area whether they attend one, some, or all episodes.
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9. Episodes in this Series
#1: PGRT Basics
Premiere date: 7/16/20
#2: Things to Consider Before You File
Premiere date: 8/13/20
#3: Interplay With District Court Litigation
Premiere date: 9/10/20
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10. Episode #1
PGRT Basics
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11. Overview
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12. Overview of Proceedings
• Post-grant proceedings for challenging patent validity
 Inter Partes Review (IPR)
 Covered Business Method Review (CBMR)
 Post-Grant Review (PGR)
 Derivation
• “Trials” before the Patent Trial and Appeal Board (“PTAB”)
• Allow for limited discovery, not previously available
 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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13. Overview of the PTAB
• Handles AIA post-grant proceedings, appeals, and derivations
• Staffed by Administrative Patent Judges (“APJ”)
 Employs roughly 280 APJs currently and actively hiring
 New hires come from USPTO Examining Corps and private bar
• Each AIA proceeding is decided by a 3-member APJ panel
 Expanded panel may be convened by the PTAB itself
 Under just-revised SOP1, parties may “suggest” expanded panel or request review by
the Precedential Opinion Panel (POP)
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14. 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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15. Strategic Considerations
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16. 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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17. 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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18. Stays of Litigation
• Patent involved in Patent Owner v. Petitioner litigation: 82%
• Granting motion to stay litigation pending PTAB decision
 IPR: 65%
 CBMR: 62%
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19. Stays of Litigation
• Federal Circuit has considered district courts denying a stay
o VirtualAgility Inc. v. SalesForce.com, Inc., 2014 WL 3360806 (Fed. Cir.
July 10, 2014)
o Versata Software, Inc. v. Callidus Software, Inc., 2014-1468 (Fed. Cir.
Nov. 20, 2014)
o 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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20. DJ Actions
• If Petitioner files DJ of invalidity first, no IPR or CBMR
o 35 U.S.C. § 315(a)(1); 37 C.F.R. 42.101(a);
o http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for
• Consider filing DJ of noninfringement; assert invalidity as defense to responsive claim for
infringement
 Affirmative defense of invalidity to a counterclaim of infringement plead by Patent
Owner does not deprive Petitioner of standing
o E.g., IPR2012-00022, Paper 20 (Feb. 12, 2013); CBM2014-00035,
Paper 12 (Apr. 25, 2014)
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21. Estoppel
• IPR/PGR:
 At the PTO/Court/ITC: Cannot maintain another proceeding on a basis Petitioner
“raised or reasonably could have raised”
o PGR: 35 U.S.C. § 325(e); IPR: 35 U.S.C. § 315(e)
• CBMR:
 At the PTO: Cannot maintain another PTO proceeding on a basis Petitioner “raised or
reasonably could have raised”
o 35 U.S.C. § 325(e)(1); 37 C.F.R. 42.73(d)
 At Court/ITC: Cannot maintain another proceeding on a basis Petitioner actually
raised
o PL 112-29, Sec. 18(a)(1)(D) (Sept. 16, 2011)
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22. Impact
• Should inform district court of IPR proceedings
o 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”)
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23. Impact
• Motions in Limine
o 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)
o InterDigital Commc’ns. Inc. v. Nokia Corp., 1:13-cv-10 (D. Del. Sept. 19,
2014) (granting MIL to preclude mention of rejected petition)
o 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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24. Impact
• Issues of claim construction, validity, and noninfringement
o 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)
o 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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25. Other Considerations (Petitioner)
• Timing considerations
 File right away? File after contentions in court?
• Audience considerations
 Invalidity arguments more judge/jury friendly?
• Multi-patent considerations
 Challenge all or subset of asserted patents/claims?
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26. Other Considerations (Patent Owner)
• Multi-party considerations
 Joint defense group? Privity? Real Party-in-Interest?
• Multi-patent considerations
 Assert one or many patents at once?
• Non-party considerations
 Role of manufacturer/supplier?
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27. About the Faculty
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28. About The Faculty
Eugene Goryunov - sstarzyk@financialpoise.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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29. About The Faculty
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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30. About The Faculty
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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31. About The Faculty
Jon Stroud - jonathan@unifiedpatents.com
Jonathan Stroud is Chief Intellectual Property Counsel at Unified Patents. Jonathan manages
litigation, appeals, PTAB proceedings, licensing, and settlement negotiations, legal strategy,
and prior art analysis, and prepares, drafts, and files proceedings for Unified. Previously, he
litigated at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, before the PTAB, in
district court litigation, and on appeal, and prior to that he examined implantable medical
device patents at the USPTO for 5 years. He interned at the U.S. International Trade
Commission (ITC) for Judge Robert K. Rogers, and earned his J.D. with honors from
American University Washington College of Law; his B.S. in biomedical engineering from
Tulane University; and his M.A. in print journalism from the University of Southern California.
He regularly speaks, writes, and lectures on patent law, and is an adjunct professor of law at
American, teaching PTAB practice.
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32. Questions or Comments?
If you have any questions about this webinar that you did not get to ask during the live
premiere, or if you are watching this webinar On Demand, please do not hesitate to email us
at info@financialpoise.com with any questions or comments you may have. Please include
the name of the webinar in your email and we will do our best to provide a timely response.
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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33. About Financial Poise
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