This segment will delve into considerations that come into play when filing or responding to post-grant review proceedings. These considerations include issues of real party in interest, timing, and substantive arguments. Part of the webinar series: IP-301 POST-GRANT REVIEW TRIALS 2022 See more at https://www.financialpoise.com/webinars/

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Practical and entertaining education for
attorneys, accountants, business owners and
executives, and investors.

3. Disclaimer
The material in this webinar is for informational purposes only. It should not be considered
legal, financial or other professional advice. You should consult with an attorney or other
appropriate professional to determine what may be best for your individual needs. While
Financial Poise™ takes reasonable steps to ensure that information it publishes is accurate,
Financial Poise™ makes no guaranty in this regard.
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4. 4
Thank You To Our Sponsors

5. Meet the Faculty
MODERATOR:
Dina Blikshteyn- Haynes & Boone, New York
PANELISTS:
Jeremy Albright- Norton Rose Fulbright US LLP, Austin
Art Gasey- Vitale, Vickrey, Niro & Gasey LLP
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6. About This Webinar- Things to Consider Before
You File
This segment will delve into considerations that come into play when filing or responding
to post-grant review proceedings. These considerations include issues of real party in
interest, timing, and substantive arguments.
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7. 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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8. Episodes in this Series
#1 PGRT Basics
Premiere date: 10/26/22
#2: Things to Consider Before You File
Premiere date: 11/30/22
#3: Interplay With District Court Litigation
Premiere date: 12/21/22
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9. Episode #2: Things to Consider Before You File
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10. Filing a Petition
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11. Who Can File a Petition?
• PGR: Petitioner must not file DJ of invalidity first
o 35 U.S.C. § 321(a); 35 U.S.C. § 325(a)(1); 37 C.F.R. 42.201
• IPR: Petitioner must not file DJ of invalidity first and must file within one year after being
served with a complaint
o 35 U.S.C. § 315; 37 C.F.R. 42.101
✓ Arbitration and ITC investigation do not count
o E.g., IPR2015-00056, Paper 10 (Mar. 23, 2015)
• CBMR: Petitioner must be sued or charged with infringement
o 37 C.F.R. 42.302(a)
✓ Standing may exist if customer was sued and asked for indemnification
o E.g., CBM2013-00013, Paper 15 (Sept. 19, 2013); CBM2013-00055, Paper 16 (Mar. 6, 2014)
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12. When Can a Petition be Filed?
• PGR
✓ Post-AIA Patent: Must be filed within 9 months after issue
o 35 U.S.C. § 321; 37 C.F.R. 42.202
• IPR: Can be filed after the later of:
✓ Pre-AIA Patent: Issue of the patent;
✓ Post-AIA Patent: (1) 9 months after issue or (2) end of PGR
o 35 U.S.C. § 311(c); 37 C.F.R. 42.102
• CBMR: Can be filed after the later of:
✓ Pre-AIA Patent: Issue of the patent
✓ Post-AIA Patent: 9 months after issue
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13. What is the Standard to Institute PTab Trial
• PGR/CBMR:
✓ “More likely than not that at least one of the claims challenged in the petition is
unpatentable;” or
✓ “Raises a novel or unsettled legal question that is important to other patents or patent
applications”
o PGR: 35 U.S.C. § 324(a) and (b); 37 C.F.R. 42.208(c) and (d); CBMR: 37 C.F.R. 42.304(a)
• IPR: “[R]easonable likelihood that the Petitioner would prevail” with respect to at least one
challenged claim in the patent
o 35 U.S.C. § 314(a); 37 C.F.R. 42.108(c)
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0%
100%
Substantial New
Question of
Patentability
Reasonable Likelihood
of Success Clear and Convincing
Preponderance
(More Likely Than Not)
Ex Parte
Reexamination
PGR / CBMR
IPR
District Court

15. What Can a Petition be Based on?
• PGR: Patents, printed publications, evidence of public use, sale, and offer for sale, and
§§ 101, 102, 103, 112, 251.
o 35 U.S.C. § 321
• IPR: Patents and printed publications, and §§ 102, and 103.
o 35 U.S.C. § 311(b); 37 C.F.R. 42.104(b)(2)
• CBMR: All patents on §§ 101, 102, 103, 112, 251.
✓ Pre-AIA Patent: Only § 102(a) prior art (not 102(e) prior art).
✓ Post-AIA Patent: Patents, printed publications, evidence of public use, sale, and offer
for sale.
o PL 112-29, Sec. 18(a)(1)(C) (Sept. 16, 2011)
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16. What Must the Petition Include?
• Identify real parties in interest;
• Identify challenged claim and grounds for the challenge;
• Provide claim construction;
• Identify exhibit numbers of supporting evidence;
• Provide copies of the supporting evidence; and
• Be accompanied by filing fee
o PGR: 35 U.S.C. § 322(a) and 37 C.F.R. 42.204(b);
o IPR: 35 U.S.C. §312(a) and 37 C.F.R. 42.104(b);
o CBMR: 37 C.F.R. 42.304(b);
o Generally: 35 U.S.C. § 312(a)
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17. Petition Formalities
• Grounds
✓ Must include full analysis in petition, not just expert declaration
• Claim Construction
✓ Include explanation why proposed construction is correct
o 37 C.F.R. 42.104(b)(3)
✓ Common defect in petitions is failure to provide proposed construction for term open to
interpretations
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18. Fees
• IPR Request Fee: $15,500
✓ Additional $300 fee for each claim in request over 20
• IPR Post-Institution Fee: $15,000
✓ Additional $600 for each claim granted review over 15
• PGR/CBMR Request Fee: $16,000
✓ Additional $375 fee for each claim in request over 20
• PGR/CBMR Post-Institution Fee: $22,000
✓ Additional $825 for each claim granted review over 15
o 37 C.F.R. 42.15
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19. Word Limits
• IPR
✓ 14,000 words
✓ 14-pt font, including any footnotes
• PGR and CBMR
✓ 18,700 words
✓ 14-pt font, including any footnotes
o 37 C.F.R. 42.6 and 42.24
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20. Litigating a PTAB Trial
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21. Timeline/Filings
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22. Timeline/Filings – Motion to Amend Pilot
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23. Timeline/Filings – Motion to Amend Pilot
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24. PO Preliminary Response
• Limited to reasons why trial should not be instituted
✓ Cannot include any amendments to the challenged claims
• Filed within 3 months after notice of filing date of petition
o PGR/CBMR: 35 U.S.C. § 323; 37 C.F.R. 42.207; IPR: 35 U.S.C. § 313; 37 C.F.R. 42.107
• PTAB will discount any conclusory, unsupported Patent Owner statements, especially
when contrary to written description
o E.g., IPR2013-00010, Paper 21 (Feb. 12, 2013)
• Petitioner can seek a reply for good cause
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25. PO Response and/or Motion to Amend
• PO Response: May respond to any ground included in trial
✓ Filed after discovery is taken of Petitioner
o PGR/CBMR: 35 U.S.C. § 326(a)(8); IPR: 35 U.S.C. § 316(a)(8)
• PO Motion to Amend: New Motion to Amend Pilot begins March 15, 2019
✓ Cancel or propose substitute claims of same or narrower scope
✓ Can be supported with expert declaration
o PGR/CBMR: 35 U.S.C. §§ 326(a)(9) and (d)(1); IPR: 35 U.S.C. §§ 316(a)(9) and (d)(1)
o http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for
o 84 Fed. Reg. 9497 (Mar. 15, 2019)
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26. About the Faculty
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27. About The Faculty
Dina Blikshteyn– Dina.Blikshteyn@haynesboone.com
Dina Blikshteyn is a counsel in the Intellectual Property Practice Group in the New York office of Haynes and Boone.
Dina’s practice focuses on post grant proceedings before the U.S. Patent and Trademark Office, preparing and
prosecuting domestic and international patent applications, as well as handling trademark and other IP disciplines.
Dina is a co-chair of the artificial intelligence practice at Haynes and Boone.
Dina focuses her patent practice on technology areas. Illustrative areas include artificial intelligence and machine
learning, cloud computing, cyber security, web applications, map and navigation applications, point-of-sale systems,
computer graphics, data structures, algorithms, distributed systems, client-server applications, CPU/GPU processor
design, operating systems, mobile technologies, databases, database optimization, multimedia and video streaming,
financial trading products, banking software, computerized auction software, healthcare systems, Internet systems,
advertising software, wireless communication systems and applications, telecommunications systems, marketing
applications, industrial control systems (ICS), cable systems, and smart grid and micro grid technologies.
In addition to her patent work, Dina is a member of Haynes and Boone’s trademark group, and Dina’s trademark practice
encompasses a wide variety of worldwide trademark searching, clearance, prosecution, and related counseling matters
in a diverse number of industries. Prior to becoming a lawyer, Dina developed high-frequency trading systems that
traded financial instruments on domestic and international exchanges.
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28. 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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29. About The Faculty
Art Gasey– Gasey@vvnlaw.com
Arthur Gasey received a Bachelor of Science degree in Chemical Engineering from the University of
Notre Dame in 1989 and graduated Magna Cum Laude from John Marshall Law School in 1992. Art was
a staff editor for the John Marshall Law Review and was a winner of the Giles S. Rich National Moot
Court Competition for Patent Law in 1992.
Over 25 years of practice, Art has litigated a number of patent, trade secret, and copyright cases, both as
lead counsel and second chair. Art was heavily involved in winning a $48 million jury verdict in the trial of
a trade secret/patent infringement case in Detroit. In addition, Art achieved a $2.9 million settlement with
a radio scanner manufacturer and its distributor at trial in Chicago. Art also won summary judgment of
non-infringement in another Chicago lawsuit holding that their client did not infringe a patent on a
computer programmable pharmaceutical compounder.
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30. 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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