On July 14, 2014, the Bar Association of the District of
Columbia presented "Navigating AIA Trials at the USPTO,"
a panel discussion on the Leahy-Smith America Invents Act (AIA)
trials, which took place at the D.C. office of Venable LLP. The
diverse panel included Patent Trial and Appeal Board (PTAB) Judge
Brian Murphy, Procter & Gamble in-house counsel Mark Charles,
Ashe P.C. founder Oliver Ashe, who has over 20 years of experience
at the PTAB and its predecessor the BPAI, and Venable partner Adam
Hess, a patent litigator with experience in both AIA trials and
interferences.1 Carly Levin from Venable moderated the
discussion.
Starting things off, Judge Murphy discussed the timeframes and
procedures relating to Inter Partes Review (IPR)
proceedings. He noted that the USPTO is not likely to slacken the
strict deadlines in place for AIA trials, and indicated that the
PTAB is bolstering the ranks of its judges to accommodate the
significant number of actions filed to date. According to Judge
Murphy, the PTAB is aiming to employ a total of 230 judges by the
end of September, with approximately 70-80 of those judges
dedicated to AIA trials.
Judge Murphy also expressed his view that the expert declaration
was the most important part of a petitioner's case, and advised
declarants to take a "deep dive" on key points regarding
invalidity of the challenged claims. He advised declarants against
making conclusory statements, and to avoid making arguments in the
claim charts (where they are prohibited). For respondents, Judge
Murphy advised that the PTAB judges generally appreciate and find
the preliminary response helpful. He suggested identifying
differences in the parties' claim constructions as one area on
which to focus in the preliminary response.
The next panelist, Oliver Ashe, continued with a technical
discussion of PTAB procedures and tactics. He noted an increase in
preliminary responses filed by respondents, indicating that
respondents recognize the preliminary response as their single best
shot to stop the proceeding. He encouraged the filing of
preliminary responses on "knock out" issues,
e.g., where the petitioner's references are not prior
art, where the petitioner misses an element of the claims, or where
the petitioner is not a real party in interest. He noted that
filing a preliminary response on weaker issues, however, may simply
give your opponent a "six-month head start" on rebutting
your arguments. Additionally, he suggested that many petitioners
may be leaving significant money on the table (in the USPTO's
pockets) by not filing a request for refund of the USPTO
post-initiation fees in cases where the petition is denied.
Next, Adam Hess shared insights on the respective benefits of AIA
trials and district court litigation. He suggested that the PTAB
may be a better venue for obviousness cases and highly technical
cases, because of the PTAB's expertise in both patent law and
technology. On the other hand, he suggested that a jury trial may
be better for simpler cases, or in cases where the story or a sense
of equity will be important. Additionally, he noted that other
invalidity defenses and types of prior art (e.g., on-sale
and public use bars) are available in district court.
Finally, Mark Charles offered an in-house perspective on AIA
trials. He advised that clients review their own portfolio and
products for vulnerabilities before instituting an AIA trial,
cautioning that in many cases it is impossible to "unring the
bell." Furthermore, he urged clients to consider the amount of
resources – both internal and external– involved in
filing an IPR or similar proceeding. He suggested companies may be
able to find alternatives to AIA proceedings that may likewise
obtain their business goals.
Footnote
1 The views and opinions of the panelists and moderator were their own, and do not necessarily reflect the views or opinions of their respective employers.
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