Sunny: Hello. My name is Sunny McCall and I am Momentum’s Vice President of Content and Experience and Program Director of Momentum’s upcoming 1st IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB. It is my great pleasure to be here today with Andrew Sommer. Andrew welcome.
Andrew: Thanks Sunny. It’s my pleasure to be here.
Sunny: Thank you so much, Andrew, likewise. By way of background, Mr. Sommer is a partner in Winston & Strawn’s Washington, D.C. office. In addition to having first-chair trial experience, Mr. Sommer has almost 15 years of experience with intellectual property matters, with a specific focus on patent litigation in a broad array of forums including district courts, the International Trade Commission, the Federal Circuit, as well as in trials before the Patent Trial and Appeal Board.
Mr. Sommer is also a recognized authority and strategist when it comes to counseling clients on the interplay between litigation and trial proceedings before the PTAB. Mr. Sommer has also been involved in more than two dozen PTAB trials both on the patent owners and petitioner’s side of the proceedings.
Jumping right in here, Andrew, I noticed in your bio that you were previously a patent examiner at the U.S. PTO. Now, as a full time litigator and partner in Winston & Strawn, I am curious to learn how you feel your experience as an examiner has equipped you to now serve as an advisor to companies who maybe asserting or defending patents at the PTAB.
Andrew: Well, quite frankly, I am not sure that that particular experience is directly germane to proceedings at the PTAB because they are so very different than traditional examination of a patent application. Certainly, being a patent examiner and a former examiner, gives you some insights into what might have transpired to get the patent allowed at certain points during prosecutions, some takeaways like that. But in terms of how to proceed and the judgment calls and decisions that need to be made during the course of a PTAB trial and even in counseling clients on whether even to decide to bring a challenge at the PTAB, I think those are more litigation decisions that in experience as a patent examiner is not really going to train or educate you on helping your clients.
Sunny: Perfect. Understood. Thank you Andrew. Thinking now as a practitioner who has directly overseen post-grant patent trials for several years now, I am curious to hear your hindsight thoughts on how this niche practice of law has really blossomed over the past three plus years. And then more importantly, why you believe we’ve seen such a growth spurt in companies running to the patent trial and appeal board.
Andrew: Well, I think the PTAB has certain advantages. And if you look at the way filings really took off in 2014 and continued through 2015, I think we saw a lot more about how the patent office was going to go about making decisions in these proceedings, and how the proceedings were going to be handled by the office. I think there was a little bit of trepidation about how motions to amend might be handled. There was some, I think, uncertainty about the scope of discovery and how discovery would normally be handled as well as a number of other issues. Companies that are faced with litigation have a lot of very complex decisions to make, but if they can take the fight to a forum that has the advantages that the PTAB has been really, I guess, assembled to meet which is cost and speed, lower burden on the advocates and the litigants. If those things are considered and the patent office has done a very good job of implementing regulations and adhering to those regulations and rendering decisions by them that keep cost low, I think we’ve seen a bit of an enthusiasm to go to the patent office, to try to challenge the validity of the patent with hopes that it will either resolve the litigation or give the party some clarity about the issues and how they will be resolved moving forward in their dispute. So it’s proven to be a relatively inexpensive dispute resolution tool. Maybe not as cost-effective as some would like, but certainly less cost-intensive than a full-blown litigation, and to the extent that these companies can get some clarity as to what the risk and exposure might be because of the PTAB or even eliminate the exposure through the PTAB, I think that’s been seen as being quite advantageous to would-be petitioners.
Sunny: Thank you Andrew. I understand that you also possess experience in overseeing litigation at the international trade commission. I’ve heard that certain industries have seen an uptick in litigation there as well, over the past year. Would you agree with this trend, and if so, what would you attribute this uptick in ITC litigation to?
Andrew: I am not exactly clear on which industries are referencing your question, but the statistics that I’ve seen is that the ITC is operating at about the historical norms or about average, in terms of the number of filings. Now, whether one industry versus another is seeing more filings or less filings, I am not really familiar with the statistics in that regard, but in terms of ITC litigation and why even though District Court litigation is seen somewhat of a drop-off, why the ITC has maintained stable numbers at least, I think there are a couple of reasons. One is, the ITC is relatively immune to what’s going on in the PTAB. The ITC is not going to stay their litigation. That’s not to say PTAB proceedings might not have an impact on ongoing ITC proceedings. Things that are said during a PTAB proceeding may come back to haunt you. And an ITC proceeding will come back to haunt your expert on cross-expectation for example. But in general, the ITC is relatively immune to what happens at the PTAB.
And I think another thing is the ITC historically, because of the rigorous domestic industry requirements, and the cost associated with pursuing an ITC litigation, they tend to see the bigger, more commercially-relevant disputes on the whole than perhaps the same number on average than the District Courts would see I think. The value of a litigation from a competitive standpoint tends to be higher in the International Trade Commission than it might otherwise be in the District Courts.
Sunny: Perfect. Thank you Andrew. Very interesting. Shifting gears a bit now, back to the PTAB, I would love to hear your take on what impact the new PTAB rules which I think just came into effect this week will have on practice before the board.
Andrew: Well, I think the vast majority of the rules will have minimal impact. I think the most impactful rule of them all is going to be the way that the board will allow patent owners to submit new evidentiary materials in connection with their patent owner response, and attempt to undermine the factual basis or the opinions that are being proffered as part of the petition. I think, in general, this will give the board more comprehensive of a record, and I am interested to see how the board is going to be dealing with that evidence moving forward.
The new rules suggest that the board will resolve any factual disputes in favor of the petitioner. But to the extent that those are now going to be framed and ultimately that the petitioner will not prevail on those, I think it’s setting the petitioner up for a Statutory Estoppel in some ways. So, the long term effects of that particular rule amendment I think are going to be, at least they have the possibility of being quite substantial, in terms of the risk benefit analysis going into whether you pursue a PTAB challenge, as well as what the effect of an institution decision will be once the record is fully developed and how that proceeding will move forward, because normally we don’t get to see exactly what a patent owner is going to raise in terms of declaration testimony or other evidentiary matters from transcripts that may exist from copending litigation or the like, until well into the proceeding and I think that that’s going to be probably the most striking change to the way that the PTAB is going to render institution decisions or at least the materials that they have available to them.
Sunny: Perfect, thank you, Andrew. At our upcoming PTAB event, you will be moderating a panel with Hewlett Packard Enterprise and PayPal that will address proven strategies for asserting or defending a patent challenge at the PTAB. Could you give us a sneak peek into some of the top level themes you plan on addressing during the session?
Andrew: So, I am really excited to be moderating this panel. And I am looking forward to some really important insights from these industry stalwarts here. So in terms of what I hope to cover during the session, first I think one of the most important decisions that you will make in a litigation, and it needs to be made relatively quickly, is whether PTAB should be part of your overall litigation strategy. And I hope to get some insights from the panelists about how to make that decision and what factors they typically consider, including how and the type of challenge that’s going to be made to the patent. Is it going to be a covered business method challenge? Is it going to be an IPR? If both are available, is it going to be a situation in which they would prefer one form of a challenge over another?
And then moving on from there, once the petition is filed, what are some of the keys for the petitioner perhaps in drafting up the petition and putting together their proofs; from selection of the statutory on which the challenge will be based to marshaling the evidence and choosing the best prior art for a particular challenge. And then from the patent owner’s perspective, and I know we don’t have at least on this panel, the views of any companies that at least commonly find themselves as patent owners in these proceedings. But from a patent owner’s perspective what are some of the places to look to defend the patent in terms of statutory limits upon petitioner’s ability to file the IPR or whether they be statutorily barred or perhaps not disclosed all of the real parties and interests to challenging claim constructions and the various proofs that may go on or maybe put in, in the proceedings. So hopefully we will cover it from the very beginning of the process to the very end and I think it’s going to be an ambitious panel, but I am really looking forward to it.
Sunny: Well, thank you so much Andrew. We are really looking forward to it as well, and hearing more from you at the conference next week. Thank you again for supporting the events and agreeing to speak at the conference and lead the session. And for those of you, who are listening, please do join us next week May 10 and 11 at the Silicon Valley Capital Club, to hear more from Andrew.
Andrew: Thank you Sunny.