On November 1, 2017, Michael Bonella, a partner with Condo Roccia Koptiw LLP, presented at the IP Strategy Summit in New York City, NY. Michael was a member of a panel consisting of Edward Tempesta, Vice President and Senior Counsel IP, for Mastercard, Marc Began, former Assistant General Counsel and Assistant Chief IP Counsel, Novo Nordisk, and Atabak Royaee, Associate Director & Corporate Counsel, IP for Boehringer Ingelheim. The panel discussed strategy for post-issuance proceedings in the U.S. Patent and Trademark Office including recent post-grant review statistics, motions to amend during inter partes review, estoppel based on inter partes review, and the use of experts during IPR.
Michael discussed the potential impact of the Federal Circuit’s holding in Aqua Prods., Inc. v. Matal that 35 U.S.C. § 316(e)’s burden applies to a patent owner’s motion to amend claims under 35 U.S.C. § 316(d) and therefore the petitioner has the burden of proving by a preponderance of evidence that a patent owner’s amended claims are unpatentable. Aqua Prods., Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017) (en banc). Michael and the panel discussed that a petitioner should consider the likelihood of whether the patentee can amend and still have a claim that covers concerned subject matter in deciding whether to petition for an IPR and in designing around a patent. The panel also discussed whether a motion to amend is a viable option in an IPR proceeding that has a companion district court litigation because of any potential impact of a motion to amend on a damages claim in district court.
In addition, Michael discussed the recent case law on IPR estoppel which provides that there is no IPR estoppel in district court for “non-instituted grounds,” but there is IPR estoppel for “non-petitioned grounds” in at least some district courts for prior art that a skilled searcher conducting a diligent search reasonably could have expected to discover. Therefore, a petitioner that has concurrent district court litigation should consider the potential estoppel ramifications in formulating the IPR petition.