Before the United States Patent and Trademark Office Alexandria, VA 22313 In the Matter of ) ) Request for Comments on Trial ) Docket No. PTO–P–2014–0031 Proceedings Under the America Invents ) Act Before the Patent Trial and Appeal ) Board ) COMMENTS OF CISCO SYSTEMS, INC.; DELL INC.; GOOGLE INC.; ORACLE CORPORATION; AT&T; CABLELABS; FORD GLOBAL TECHNOLOGIES, LLC; GARMIN INTERNATIONAL, INC.; INTEL CORPORATION; NETAPP, INC.; RACKSPACE HOSTING, INC.; SAP AMERICA, INC.; TRIMBLE NAVIGATION LIMITED; VIZIO, INC. Buddy Toliver Michele Connors CISCO SYSTEMS, INC. DELL INC. Mail Stop LWR04/3 One Dell Way, RR1-33 5030 Sugarloaf Parkway Round Rock, TX 78682 Lawrenceville, GA 30044 Laura Sheridan Mollybeth Kocialski Suzanne Michel ORACLE CORPORATION GOOGLE INC. 7700 Technology Way 1600 Amphitheatre Parkway Denver, Colorado 80237 Mountain View, CA 94043 Thomas A. Restaino Judson D. Cary AT&T CableLabs One AT&T Way 858 Coal Creek Cir. Bedminster, NJ 07921 Louisville, CO 80027 David Kelley Sam Korte FORD GLOBAL TECHNOLOGIES, LLC GARMIN INTERNATIONAL, INC. 330 Towncenter Drive, Suite 800 1200 E. 151st Street Dearborn, MI 48126 Olathe, KS 66062 Tina Chappell Douglas Luftman INTEL CORPORATION NETAPP, INC. 2200 Mission College Blvd. 495 East Java Drive Santa Clara, CA 95054 Sunnyvale, CA 94089 Van Lindberg Anthony DiBartolomeo RACKSPACE HOSTING, ING. Kevin Hamel 1 Fanatical Place SAP AMERICA, INC. Windcrest, TX 78218 3999 West Chester Pike Newton Square, PA 19073 Aaron Brodsky Jerry C. Huang TRIMBLE NAVIGATION LIMITED VIZIO, INC. 935 Stewart Drive 39 Tesla Sunnyvale, CA 94085 Irvine, CA 92618 Table of Contents Page A. INTRODUCTION ............................................................................................................. 1 B. QUESTIONS ..................................................................................................................... 3 1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?.......... 3 a. BRI should apply to unexpired patent claims. ........................................... 3 b. The Board should clarify the circumstances in which it will not apply BRI to expired or nearly-expired claims. ......................................... 5 c. Providing a thorough explanation of the Board’s claim construction analysis will support the integrity and efficiency of the trial process. ......................................................................................... 5 2. What modification, if any, should be made to the Board’s practice regarding motions to amend? ................................................................................. 6 a. The Board has appropriately developed a practice that only one substitute claim should be allowed for each challenged patent claim. .......................................................................................................... 6 b. The Board appropriately requires that proposed substitute claims and amendments be responsive to the ground of unpatentability. ............. 7 c. The Board appropriately requires that the Patent Owner bear the burden of proof in demonstrating that proposed amendments overcome assertions of invalidity. ............................................................. 8 d. The Board should expand the page limits on motions to amend. .............. 8 e. The Board should allow Patent Owners to cure minor issues. .................. 9 3. Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all parties? ........................................ 9 a. The Board should not permit new testimonial evidence in the Patent Owner Preliminary Response. ........................................................ 9 b. The Board should define “new testimonial evidence.” ............................ 10 4. Under what circumstances should the Board permit discovery of evidence of non-obviousness held by 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? ............................................................................................... 10 -i- Table of Contents (continued) Page a. The Board should very rarely, if ever, permit discovery of the Petitioner’s product. ................................................................................. 10 b. Limiting discovery on the Petitioner’s products is appropriate. .............. 11 5. Should a Patent Owner be able to raise a challenge regarding a real party- in-interest at any time during trial? ...................................................................... 12 a. Patent Owners should be required to raise challenges in response to the petition or in the first filing after institution. ..................................... 12 b. The real party-in-interest should be fixed as of the petition filing date. .......................................................................................................... 12 6. Are the factors enumerated in the Board’s decision in Garmin v. Cuozzo, IPR 2012-000001, appropriate to consider in deciding whether to grant a request for additional discovery? What additional factors, if any, should be considered? ...................................................................................................... 12 a. The Garmin factors and their explanation are appropriate. ..................... 12 7. How should multiple proceedings before the USPTO involving the same patent be coordinated? Multiple proceedings before the USPTO include, for example: (i) two or more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an AIA trial and a reissue proceeding. .......... 13 a. The Board should continue its current approach to coordinating multiple AIA trials. .................................................................................. 13 b. The Board should provide uniform information on coordinating AIA trials and reexamination/reissue proceedings. ................................. 14 8. What factors should be considered in deciding whether to stay, transfer, consolidate, or terminate an additional proceeding involving the same patent after a petition for AIA trial has been filed? ............................................. 15 a. The Board should consolidate proceedings resulting from identical petitions. ................................................................................................... 15 b. The Board should coordinate, but not consolidate, proceedings resulting from different petitions and different Petitioners...................... 16 c. The Board should consolidate proceedings resulting from multiple petitions from the same Petitioner if the schedule allows........................ 16 9. Under what circumstances, if any, should a co-pending reexamination proceeding or reissue proceeding be stayed in favor of an AIA trial? If a stay is entered, under what circumstances should the stay be lifted? .................. 17 a. The Board should stay all co-pending reexams and reissues automatically once an AIA trial is instituted. .......................................... 17 -ii- Table of Contents (continued) Page b. The Board should automatically lift the stay for a reissue at the conclusion of a post-issuance review. ...................................................... 17 c. The Board should automatically join an existing AIA trial and a pending reexam and lift the stay of reexam once the AIA trial is complete. .................................................................................................. 18 10. Under what circumstances, if any, should an AIA trial be stayed in favor of a co-pending reexamination proceeding or reissue proceeding. If a stay is entered, under what circumstances should the stay be lifted?.......................... 19 a. In almost all circumstances, the Board should not stay an AIA trial in favor of a co-pending reexamination or reissue proceeding. ............... 19 11. Under what circumstances, if any, should a co-pending reexamination proceeding or reissue proceeding be consolidated with an AIA trial? ................ 20 a. The Board should not consolidate a copending reexamination or reissue with an AIA trial. ......................................................................... 20 12. How should consolidated proceedings be handled before the USPTO? Consolidated proceedings include, for example: (i) consolidated AIA trials; (ii) an AIA trial consolidated with a reexamination proceeding; or (iii) an AIA trial consolidated with a reissue proceeding? .................................. 20 a. The Board should be cautious when approaching formal consolidation for different Petitioners bringing different grounds. ......... 21 b. The Board should not presumptively restrict page limits following a consolidation of multiple proceedings involving the same Petitioner but different grounds. .............................................................. 21 c. The Board should treat consolidated proceedings involving different Petitioners and the same grounds as a single trial. .................... 22 13. Under what circumstances, if any, should a petition for an AIA trial be rejected because the same or substantially the same prior art or arguments previously were presented to the USPTO in a different petition for an AIA trial, in a reexamination proceeding or in a reissue? ........................................... 23 a. The Board should treat each petition independently and apply its existing procedures to guard against abuses and inefficiencies. .............. 23 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? ..................................................................................................................... 24 a. The Board should continue to strive for completion of each trial in one year. ................................................................................................... 24 -iii- Table of Contents (continued) Page 15. Under what circumstances, if any, should live testimony be permitted at the oral hearing? ................................................................................................... 24 a. Live testimony is rarely needed in an AIA trial. ...................................... 24 16. What changes, if any, should be made to the format of the oral hearing? ........... 25 a. The Board should not change the format of the oral hearing. ................. 25 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? .................... 26 a. The Board should consider making Preliminary Responses mandatory with certain disclosure requirements. .................................... 26 b. The Board should move any action on redundancy to after institution of a post-issuance review. ....................................................... 27 c. The Board should continue its practice of issuing final decisions despite settlement. .................................................................................... 28 d. The Board should establish a common timeline for exchanging demonstratives and objections. ................................................................ 28 -iv- A. INTRODUCTION The companies submitting these comments are innovators, patent holders, and potential or actual participants in the post-issuance review proceedings created by the America Invents Act (“AIA”). We appreciate this opportunity to provide input on the AIA post-issuance proceedings supporting fair and balanced trial procedures that affirm valid claims and efficiently eliminate invalid claims. Congress enacted the inter partes and post-grant review proceedings (“post-issuance reviews”) in the AIA to “provide a meaningful opportunity to improve patent quality and restore confidence in the presumption of validity that comes with issued patents in court.” H.R. Rep. No. 112-98, pt.1, at 48 (2011). In doing so, Congress directed the PTO to implement the post- issuance reviews in order to achieve the greatest possible beneficial “effect . . . on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.” AIA §§ 6(a) (amending 35 U.S.C. § 316(b)), 6(d) (amending 35 U.S.C. § 326(b)). To satisfy the Congressional mandate that post-issuance reviews serve as meaningful alternatives to litigation, the standards and procedures adopted by the PTO must provide would-be Petitioners with an efficient and effective adjudication of patentability so that the new proceedings will be used in lieu of district court litigation. Moreover, the Board’s procedures must ensure that the proceedings can be completed within the statutorily required but short time-frame of one year, while simultaneously providing a fair airing of the issues for both parties. The rules governing AIA trials promulgated by the PTO and the procedures implemented by the Board over the past two years have admirably satisfied these goals. Without careful regulation of important aspects of the proceedings such as briefing, discovery, and claim amendments, AIA trials could become as costly and unwieldy as district court litigation—and the 1 Board’s technical and patent law expertise may become unavailable to entities that would otherwise benefit from a high quality, efficient process for analyzing the validity of issued patents. The Board’s focus on efficiency and timing are appropriate, allowing for AIA trials to function as a cost-effective litigation alternative to district court litigation. As a result, the post- issuance review proceedings have systematically improved patent quality, and funds that would otherwise have been expended defending patent suits in the federal courts have been put to a higher and better use. As discussed in detail below, key aspects of current Board practices that should continue include: ● The Board should maintain its practice of applying the broadest reasonable interpretation to unexpired claims. ● The Board should maintain its practice of allowing only one substitute claim for each canceled original claim. ● The Board appropriately requires that proposed substitute claims and amendments be responsive to the ground of unpatentability. ● The Board appropriately requires that the Patent Owner bear the burden of proof in demonstrating that proposed amendments overcome assertions of invalidity. ● The Board should continue to apply the Garmin factors in evaluating discovery requests. ● The Board’s current practice of issuing a final decision in particular cases despite settlements serves the public interest and should continue. In response to questions posed by the PTO, we also explain below that the Board should rarely, if ever, allow discovery of a Petitioner regarding secondary considerations. 2 B. QUESTIONS 1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears? a. BRI should apply to unexpired patent claims. The Board should continue to apply the broadest reasonable interpretation (“BRI”) when interpreting claims of any patent that will not have expired by the time that the Board issues its validity decision. Only in the rare circumstances that a patent will have expired by that time, so that a Patent Owner cannot obtain amended claims, should the Board consider a more flexible approach. The PTO has a long-standing practice of giving patent claims their broadest reasonable interpretation during examination and during other post-issuance proceedings such as reexamination, reissue and interference for good reason. Giving patent claims their broadest reasonable construction “serves the public interest by reducing the possibility that the claims, finally allowed, will be given broader scope than is justified.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). Importantly, applying BRI during the AIA proceedings leads to clearer patent claims that align with inventors’ understanding of their inventions and provides the public with better notice of what subject matter falls within the claims. Through BRI, the Board can “achieve a complete exploration of the applicant’s invention and its relation to the prior art.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). That way, “ambiguities [in the claim language] should be recognized, scope and breadth of language explored, and clarification imposed.” Id. “[U]ncertainties of claim scope [are] removed, as much as possible, during the administrative process” and the claims ultimately allowed by the PTO “are precise, clear, correct, and unambiguous.” Id. at 322. Thus applying BRI comports with the Congressional intent that the AIA proceedings “provide a 3 meaningful opportunity to improve patent quality and restore confidence in the presumption of validity that comes with issued patents in court.” H.R. Rep. No. 112-98, pt.1, at 48 (2011). Construing claims broadly “is not unfair to the applicant (or, in this case, the patentee), because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” In re Am. Academy of Science Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). None of the Board’s many reasons supporting the use of BRI are undermined simply because a Patent Owner’s right to amend is not completely unfettered in the AIA trials. Moreover, as the Board has noted, Patent Owners have the additional ability to amend claims, beyond the AIA trials, through ex parte reexam and reissue proceedings. Indeed, arguments opposing the use of BRI in AIA trials cannot be squared with a Patent Owner’s ability to prosecute an ex parte reexamination of the same patent claims.1 It would be unworkable for the PTO to apply two different constructions of the same patent claim at the same time during two separate reviews. This circumstance could force the office to simultaneously reject a patent claim in ex parte review, but accept the same claim in post-issuance review, in light of the same prior art reference. The PTO and district courts have different functions, which justify different approaches to claim interpretation. The trial court’s responsibility is to review the validity of the patent presumed to have been duly issued by the expert agency, which justifies the “clear and convincing” evidence standard. On the other hand, the PTO has an entirely different role, that is, ensuring that patents are properly issued. The AIA reviews provide the PTO an opportunity to 1 See 35 U.S.C. §§ 315(d), 325(d) (allowing the PTO to determine treatment of post- issuance reviews in conjunction with “another proceeding … involving the patent [that] is before the Office”). 4