A petitioner has to carefully craft IPR petitions to obtain institution of trial with the PTAB. But another way to “win” an IPR is to posture the petition filing to encourage early settlement with the patent owner. Learn how IPR petitions are perceived by both the petitioner and patent owner at various stages of an IPR and strategies that maximize early settlement potential.
1. Posturing
IPRs
for
Se0lement
Timothy
E.
Bianchi
Patent
A0orney
Schwegman
Lundberg
Woessner,
PA
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
1
2. About
Tim
Bianchi
• M.S.E.E.
Patent
A0orney
– Electronics,
Medical
Devices,
SoLware
• Principal,
Schwegman
Lundberg
Woessner
– 120
patent
a0orneys
in
Minneapolis,
San
Jose,
AusNn
+
– Patent
Prep
&
ProsecuNon
– Opinions
and
Due
Diligence
– LiNgaNon
Support
– Post-‐Grant
Proceedings
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
2
3. About
Today’s
Talk
• Brief
IntroducNon
With
IPR
StaNsNcs
• PeNNoners
and
Patent
Owners
Viewpoints
– Why
they
overlook
opportuniNes
to
se0le
– Benefits
• For
both
ParNes,
Se0lement:
– Saves
Nme
and
money
– Provides
Certainty
and
reduces
risk
• Timing
Factors
for
PotenNal
Early
Se0lement
• Posturing
Your
IPR
for
Early
Se0lement
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
3
4. A
Few
StaNsNcs
–
Total
AIA
PeNNons
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
4
Source:
USPTO
Data
Current
to
2/29/2016
5. PeNNons
Per
Year
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
5
Source:
USPTO
Data
Current
to
2/29/2016
6. IPR
Decisions
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
6
Source:
USPTO
Data
Current
to
2/29/2016
7. IPR
Se0lements
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
7
Source:
USPTO
Data
Current
to
2/29/2016
8. CBM
Decisions
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
8
Source:
USPTO
Data
Current
to
2/29/2016
9. CBM
Se0lements
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
9
Source:
USPTO
Data
Current
to
2/29/2016
10. PeNNoner
Psychology
• Patent
has
every
appearance
of
being
invalid
– Known
publicaNon
prior
art
“data
points”
– Concern
about
certain
dependent
claims?
• NonpublicaNon
Prior
Art
also
Known
– Non-‐publicaNon
prior
art
can
be
useful
in
patent
liNgaNon
if
IPR
not
successful
• IPRs
are
staNsNcally
successful,
but
if
I
don’t
win
on
insNtuNon
of
IPR
on
at
least
the
relevant
claims
it
will
be
harder
to
defend
against
this
patent
• Conclusions:
– Patent
Owner
is
not
being
reasonable
– Company
Will
Not
Pay
For
License/Patent
– As
long
as
insNtuNon
and
final
wri0en
decision
against
patent
is
likely,
PeNNoner
will
forge
ahead
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
10
11. PeNNoner
Wants
to
Know
• Will
the
IPR
be
successful?
– Against
all
relevant
claims?
• Are
there
relevant
dependent
claims
that
are
likely
to
survive
the
IPR?
– ParNal
insNtuNon
and/or
parNal
invalidity
is
not
a
full
soluNon
• Can
I
get
a
claim
construcNon
that
will
resolve
issues
for
me
in
a
parallel
liNgaNon?
• Does
the
Patent
Owner
have
a
right
to
file
conNnuaNons?
• Will
this
challenge
of
the
patent
help
me
or
help
my
compeNNon
or
both?
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
11
12. Psychology
of
Patent
Owner
• My
claims
were
allowed
for
a
reason
– The
Patent
Office
issued
the
claimed
invenNon
– Want
to
tell
my
story
of
why
my
claims
are
patentable
over
the
prior
art
• The
peNNon
is
flawed
– It
has
defects
– The
cited
prior
art
is
not
on
point
• Or:
prior
art
is
analogous,
but
I
have
dependent
claims
that
should
survive
the
IPR
• If
my
patent
claims
are
insNtuted
for
trial,
it
could
ruin
my
chances
to
enforce
patent
against
PeNNoner
and
against
other
defendants
• Patent
Owner
wants
to
fight
the
IPR,
but
insNtuNon
is
a
serious
threat
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
12
13. Patent
Owner
Wants
to
• Tell
a
consistent
story
with
its
patents
– How
can
that
be
done
with
BRI
v.
Phillips
claim
construcNons?
• Use
the
IPR
to
strengthen
its
patent(s)
– That
which
does
not
kill
my
patents,
only
makes
them
stronger
– But
avoid
joinder
opportuniNes
for
other
potenNal
PeNNoner
Defendants
• Educate
other
infringers
about
the
strength
if
its
pornolio
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
13
14. IPR
Timeline
(early
stages)
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
14
PeNNoner
Patent
Owner
Early
Se0lement
OpportuniNes
Data
Gathering
PeNNon
Filing
PeNNon
Prep
Data
Gathering
Prelim
Response
Prep
Prelim
Resp
Filing
InsNtuNon
Decision
3
Mos.
Max
Pre-‐Prep
Pre-‐Filing
Pre-‐Prelim
Resp
Pre-‐ID
15. IPR
Timeline
(cont’d)
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
15
PeNNoner
Patent
Owner
Data
Gathering
PO
Response
PO
Response
Prep
Data
Gathering
Reply
Prep
PeNNoner
Reply
InsNtuNon
Decision
Hearing/
FWD
16. PeNNoners
Can
Encourage
Early
Se0lement
• Develop
case
thoroughly
• Need
best
prior
art
and
arguments
• Know
how
you
stand
compared
to
other
defendants
– RelaNve
sizes
of
liability
– Timing
of
suits/bars
– IPR
team
factors
– ComplicaNng
factors
• e.g.
real
party
in
interest
• Work
with
liNgaNon
team
• Communicate
the
strengths
of
PeNNoner’s
IPR
without
undermining
it
– PeNNoner
needs
to
show
that
it
understands
the
target
patent,
its
technology,
the
prior
art,
and
the
process
be0er
than
Patent
Owner
understands
it
• SomeNmes
filing
is
the
only
way
to
resolve
the
case
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
16
17. Patent
Owners
Can
Also
Encourage
Early
Se0lement
• Analyze
patent
at
issue
promptly
in
either
case:
– Upon
a
threat
of
IPR
(no
peNNon
filed)
• Communicated
by
potenNal
peNNoner
or
liNgaNon
team
– ALer
IPR
peNNon
is
filed
• CriNcal
to
get
as
much
informaNon
as
possible
and
review
the
asserNons
using
experience
and
an
open
mind
• If
a
peNNon
is
filed,
and
negoNaNon
is
not
a
likely
opNon,
prepare
a
strong
Patent
Owner’s
Preliminary
Response
• Be
realisNc
about
the
prior
art
and
amendments
– Broadest
reasonable
interpretaNon
• Use
other
tools
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
17
18. Higher
PotenNal
for
Se0lement
Before
the
InsNtuNon
Decision
When
.
.
.
• PeNNoner
Defendant
is
not
the
Patent
Owner’s
main
target
– And
especially
If:
• PeNNoner
has
a
strong
IPR
team
and
strong
IPR
peNNon
• Other
Defendants
are
barred
under
the
315(b)
bar
for
failure
to
Nmely
file
an
IPR
peNNon
– Joinder
is
their
only
entry
to
IPR
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
18
19. Higher
PotenNal
For
Se0lement
ALer
InsNtuNon
Decision
When
• ParNal
InsNtuNon
of
Claims
– Especially
when
PeNNoner
is
barred
or
effecNvely
barred
from
future
IPR
filings
• MulNple
Patent
Cases
with
Many
PeNNons
– Especially
with
parNal
insNtuNon
of
patents/claims
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
19
20. Discussion
• If
QuesNons,
please
contact
– Tim
Bianchi
– (612)
373-‐6912
– tbianchi@slwip.com
– See
my
blog
on
patent
prosecuNon,
liNgaNon
and
post-‐grant
topics
at
www.ReexamLink.com
Copyright
2016
Timothy
E.
Bianchi
-‐
Posturing
IPRs
for
Early
Se0lement
20