TO: TrialsRFC2014@uspto.gov
`To whom it may concern:
`The undersigned, Heidi L. Keefe, respectfully submits these written
`comments to the U.S. Patent and Trademark Office (“Office”)
`pursuant to the Office’s request for comments regarding AIA Trial
`Practice, published in the Federal Register, 79 Fed. Reg. 36494
`(June 27, 2014). The deadline for these comments is September
`16, 2014.
`I am a patent litigator and registered patent attorney who has
`represented patent owners and accused infringers for almost twenty
`years, in proceedings before the Office and in district courts
`throughout the country. My comments will address certain of the
`17 questions set forth in Vice Chief Judge Bolick’s feedback request
`dated July 29, 2014. I submit these comments on my own behalf,
`based on my own experiences and
`views a patent
`practitioner. These comments are not made on behalf of Cooley LLP
`(the law firm with which I am affiliated), nor are they being
`submitted on behalf of any clients that I represent or have
`represented in the past.
`Question 17: “What other changes can and should be made
`in AIA trial proceedings? For example, should changes be
`made to the Board’s approach to instituting petitions, page
`limits, or request for rehearing practice.”
`I have begun with Question 17 because it touches upon the
`important topic of pre-institution practice. The PTAB’s pre-
`institution procedures can be improved in a way that reduces the
`burden on the PTAB and improves the quality of trial institution
`decisions.
`AIA Petitioners Should Have the Right to File a Reply in Response to
`a Preliminary Patent Owner Response
`Under the existing rules, a patent owner may file an optional
`Preliminary Response to an AIA petition within three months after
`the date on which the petition was granted a filing date. See 37
`C.F.R. § 42.107(a) (IPR), § 42.207(a) (post-grant review), §
`42.300(a) (incorporating 37 C.F.R. § 42.207 for CBM review). The
`patent owner’s Preliminary Response may include arguments as to
`why the patent owner does not believe trial should be instituted,
`and may also include evidence of a non-testimonial nature. See 37
`C.F.R. §§ 42.107(b), 42.207(b). The page limits for the Preliminary
`
`001
`
`

`

`Response are the same as the original petition (60 pages for IPR, 80
`pages for CBM or post-grant review). See 37 C.F.R. § 42.24(b)(1).
`The Rules therefore provide a patent owner with the ability to
`submit extensive pre-institution arguments against the petition, but
`give the petitioner no right to respond to those arguments before an
`institution decision is reached. The Office should accordingly amend
`its rules to allow AIA petitioners to file a reply brief responding to a
`patent owner’s Preliminary Response.
`This change would improve pre-institution practice in several ways.
`First, a reply brief is consistent with the general long-standing
`practice of tribunals to allow the party who bears the burden of
`proof (in this case the AIA petitioner) to file a reply brief. As the
`Office noted in its Trial Practice Guide, “replies can help crystallize
`issues for decision.” 77 Fed. Reg. 48767 (August 14, 2012). This
`principle is reflected in the PTAB’s post-institution practice that
`allows the AIA petitioner to file a reply to the patent owner’s
`response, and allows the patent owner to file a reply in support of a
`motion to amend or substitute claims. These rules recognize that
`reply briefs enable decision-makers to make better and more
`informed decisions.
`Second, the ability to file a reply brief will likely reduce the burden
`on the PTAB and reduce the number of requests for rehearing filed
`by petitioners under 37 C.F.R. § 42.71(d). Under the existing rules,
`the PTAB must assess arguments in the Preliminary Response,
`which may be extensive and detailed, without any input from the
`petitioner. In IPR petitions in which the undersigned has been
`personally involved, for example, Preliminary Responses often
`present detailed arguments about claim construction, in some cases
`asking the PTAB to construe terms or phrases not addressed in the
`original petition.
`Preliminary Responses may also include mischaracterizations of the
`record that could be easily addressed in a petitioner reply
`brief. Preliminary Responses may also include arguments about
`issues not addressed in the petition such as whether the petition is
`time-barred or whether the petitioner is estopped for some reason
`from raising one or more grounds set forth in the petition.
`Patent owners often submit extensive non-testimonial evidence with
`their Preliminary Responses such as dictionary definitions, excerpts
`from technical treatises and other materials, and refer to them
`
`002
`
`

`

`throughout their arguments. “Question 3” posed by the Office’s
`request for comments, moreover, contemplates the possibility of
`patent owners submitting
`testimonial evidence with
`their
`Preliminary Response, which would make a reply brief even more
`essential.
`In any case, after the submission of the Preliminary Response, the
`PTAB must evaluate a potentially extensive set of patent owner
`arguments without any input from the party who filed the petition
`and who bears the burden of proof.
`A reply brief prior to institution is entirely consistent with the
`statutory policy of the AIA to permit adversarial and inter partes
`validity challenges by the Office. Current pre-institution practice, in
`fact, more closely resembles ex parte reexamination in the sense
`that the petitioner cannot present any response to patent owner
`arguments prior to the critical institution decision by the PTAB. This
`problem is exacerbated by the fact that no oral argument is held
`prior to an institution decision, and a decision denying institution is
`deemed “final and nonappealable.” 37 C.F.R. § 42.71(c).
`The PTAB has in the past pointed to the availability of a request for
`rehearing in denying a petitioner the right to file a pre-institution
`reply brief. (See, for example, Vestcom Int’l, Inc. v. Grandville
`Printing Co., IPR2013-0031, Paper 21, at 4.) But the ability to file a
`request for rehearing is not a substitute for a reply brief. A request
`for rehearing is reviewed only for “abuse of discretion” (37 C.F.R. §
`42.71(d)), a deferential standard that results in few of these
`requests being granted. Rehearing requests are also typically heard
`by the same PTAB panel that issued the initial institution
`decision. By the time a request for rehearing is filed, therefore, the
`issuing panel has already invested time and effort in the initial
`institution decision and may feel understandably reluctant to revisit
`it. Pre-institution practice would better serve the statutory
`objectives of the AIA if it enabled the petitioner to respond to the
`patent owner’s arguments prior to the PTAB’s institution decision.
`Finally, the inability of a petitioner to file a reply brief makes
`institution decisions less predictable and may ultimately undermine
`the effectiveness of the AIA trial procedure. An IPR petition, for
`example, is often the result of an enormous investment of time and
`meticulous attention to detail. But no matter how much care a
`petitioner exercises in crafting its petition, it is simply not possible
`
`003
`
`

`

`to predict and account for every conceivable argument the patent
`owner may make in its Preliminary Response. The fact that the
`petitioner has no ability to respond, in fact, may even incentivize
`patent owners
`to make arguably misleading or
`inaccurate
`arguments
`and
`factual
`assertions
`in
`their
`Preliminary
`Responses. The inability to predict and respond to such arguments
`not only complicates preparation of the initial petition, but, in the
`end, increases the burden on the Office by encouraging petitioners
`to file multiple simultaneous petitions on different prior art
`references to account for this uncertainty and increase the chances
`of institution.
`The Page Limits for Post-Institution Reply Briefs Should be
`Increased
`AIA Trial practice can also be improved by increasing the number of
`pages allowed for reply briefs filed by petitioners and patent
`owners. Under the existing rules, a petitioner’s reply brief cannot
`exceed 15 pages, and a patent owner’s reply in support of a motion
`to amend or substitute claims cannot exceed 5 pages. See 37
`C.F.R. § 42.24(c). The undersigned respectfully submits that these
`page limits are insufficient in light of the PTAB’s strict rules for
`typeface and margins. The petitioner’s 15 page reply brief, for
`example, responds to a 60-page maximum (for IPR) or 80-page
`maximum (for CBM and post-grant review petitions) brief, and the
`patent owner’s five-page reply in support of a motion to amend or
`substitute responds to an opposition of up to 15 pages.
`In adopting the existing page limits, the Office noted that it
`“believes that the use of page limits in Federal courts and in
`contested cases is instructive when looking to trials under the
`AIA.” 77 Fed. Reg. 48636 (August 14, 2012). The undersigned
`respectfully submits that, with respect to the length of reply briefs,
`the Office’s rules do not follow the federal court examples or afford
`enough pages to prepare a thorough response. Federal courts
`generally allow a reply brief to be at least half the length of the brief
`to which it responds. See Federal Rule of Appellate Procedure
`32(a)(7)(a) (“A principal brief may not exceed 30 pages, or a reply
`brief 15 pages…”); Northern District of California, Civil Local Rule
`7.3 (opposition briefs may be 25 pages, reply briefs may be 15
`pages) (available at http://www.cand.uscourts.gov/localrules/civil),
`Eastern District of Virginia, Civil Local Rule 7(F) (opposition briefs
`
`004
`
`

`

`may be 30 pages, reply briefs may be 20 pages) (available at
`http://www.vaed.uscourts.gov/localrules/LocalRulesEDVA.pdf).
`Although the ratios between opposition and reply briefs are not
`uniform among tribunals, the undersigned is not aware of any
`federal tribunal that limits a reply brief to only one-fourth of the
`length of the brief to which it responds, as the current rules
`mandate for petitioner replies. Balancing the need for conciseness
`with affording parties an opportunity to more fully address their
`opponents’ contentions, the undersigned believes that the page
`limits for reply briefs should be extended to 30 pages for petitioner
`reply briefs, and 8 pages for patent owner reply briefs in support of
`motions to amend claims.
`Question 3: “Should new testimonial evidence be permitted
`in a Patent Owner Preliminary Response?”
`The undersigned believes that the answer to this question depends
`to some extent on whether or not the petitioner is allowed to file a
`reply brief. As mentioned above, the problems associated with the
`PTAB having no petitioner response to the patent owner’s
`arguments would be significantly exacerbated if a Preliminary
`Response could include testimonial evidence such as expert
`declarations.
`Testimonial evidence would also significantly complicate pre-
`institution practice. For example, if competing expert declarations
`were weighed at the pre-institution phase, each side should
`theoretically have the opportunity to depose or cross-examine its
`opponent’s expert witness. This could turn the institution decision
`into a full-blown mini-trial on the merits, which is inconsistent with
`the statutory mandate that the Office merely determine the
`threshold question of whether the petitioner has shown a likelihood
`of prevailing on the grounds in its petition – and not decide the
`underlying merits of the petition.
`Question 4: “Under what circumstances should the Board
`permit discovery of evidence of non-obviousness held by the
`petitioner, for example, evidence of commercial success for a
`product of the petitioner? What limits should be placed on
`such discovery to ensure that the trial is completed by the
`statutory deadline?”
`Allowing extensive discovery of “secondary considerations” evidence
`held by the petitioner could dramatically increase the scope of
`
`005
`
`

`

`potential discovery in AIA Trials, in fact, to a level similar to district
`court litigation. Petitioners may have millions of documents relating
`to an allegedly successful product. Ordering this kind of discovery
`would undermine one of the key goals of the AIA, i.e., to provide a
`streamlined and cost-effective way to challenge the validity of an
`issued patent.
`In fact, allowing discovery of such evidence could turn AIA Trials
`into full-blown patent infringement mini-trials. For example, in
`order to show that the commercial success of a petitioner’s product
`is relevant for secondary considerations, the patent owner must
`present evidence that the petitioner’s product actually practices one
`or more of the challenged claims. The patent owner must also show
`a nexus between the alleged commercial success of the petitioner’s
`product and the features of the claimed invention. “Evidence of
`commercial success, or other secondary considerations, is only
`significant if there is a nexus between the claimed invention and the
`commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d
`1299, 1311-12 (Fed. Cir. 2006).
`The undersigned recognizes that secondary considerations evidence
`can,
`from
`time
`to
`time, help support a claim of non-
`obviousness. But the potential costs of this discovery, and the
`complexity it would bring to AIA Trials, far outweigh its limited
`evidentiary value in the majority of cases.
`Question 14: “What circumstances should constitute a
`finding of good cause to extend the 1-year period for the
`Board to issue a final determination in an AIA trial.”
`The undersigned believes that the six-month extension should be
`applied if there is a later-filed AIA proceeding on the same patent
`that will not reach a final decision until after the first proceeding is
`concluded. For example, take the situation where a particular
`patent is the subject of “Proceeding A” and “Proceeding B,” the
`latter filed five months after the former. In this situation,
`regardless of whether the two proceedings are joined, the Office
`should exercise its discretion to extend the one-year period for
`Proceeding A in order that both proceedings can be considered at
`the same time. This will conserve the resources of the Office and
`avoid the possibility of inconsistent decisions on the same patent.
`Thank you for your consideration of the above comments.
`Respectfully submitted,
`
`006
`
`

`

`
`
`Heidi L. Keefe (Reg. No. 40,673)
`
`
`
`Heidi Keefe
`Cooley LLP • Five Palo Alto Square
`3000 El Camino Real • Palo Alto, CA 94306-2155
`Direct: (650) 843-5001 • Fax: (650) 857-0663
`Email: hkeefe@cooley.com • www.cooley.com
`
`
`
`
`
`
`
`
`
`
`
`Mark R. Weinstein
`Cooley LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`Direct: (650) 843-5007 • Fax: (650) 849-7400
`Bio: www.cooley.com/mweinstein
`
`
`
`
`
`
`
`This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized
`review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy
`all copies of the original message. If you are the intended recipient, please be advised that the content of this message is subject to access,
`review and disclosure by the sender's Email System Administrator.
`
`
`
`
`
`007
`
`