A Patent Conversation with Steve Kunin

Steve Kunin is the head of Oblon Spivak’s Post Grant Patent Proceedings practice group, and is also on the firm’s Management Committee. He is also a friend. For several years now I’ve been getting together with Steve for lunch periodically to talk about a variety of patent issues. I have long wished that the tape recorder were running. Like me, he loves talking patents, law and policy. I floated the idea of an on the record conversation and he agreed. Between our individual travel schedules we managed to meet up with my iPhone recorder running on May 6, 2013, in a conference room at Oblon Spivak in Alexandria, Virginia.

Kunin is not your typical attorney and brings a unique perspective to virtually any conversation on patents. For over three decades he was a career employee of the United States Patent and Trademark Office, rising to the level of Deputy Commissioner for Patent Examination Policy, which is a particularly important position within the USPTO, and one that put him on the front lines of patent examination policy for a decade.

As we ate lunch after the interview Kunin told me that he thought I might ask about the difference between working for government and private practice and what lessons he has learned in each role. Sadly, that is an excellent line of questioning that I didn’t consider. We did, however, talk about numerous, hard-hitting issues ranging from secret prior art, to the estoppel provisions associated with post grant procedures, to the Economic Espionage Act, to Metallizing Engineering, to the Supreme Court, the Washington Nationals, upcoming summer blockbuster movies and much more. We also discussed the algorithm cases at the Federal Circuit and whether the patent system is really broken, but our interview was several days before the Federal Circuit’s “decision” in CLS Bank v. Alice Corp.

Without further ado, here is Part 1 of my conversation with Steve Kunin.

[Interviews]

QUINN: Thanks, Steve, for taking the time to talk to me today.  I always appreciate it, I always enjoy our conversations so I figured we would do it On The Record and let others kind of hear what it is that we go back and forth about.  So I know you guys are heavily involved in the post grant proceedings, so I thought maybe we could talk about that generally and just see where that conversation leads us.  And I understand that you guys here at Oblon are doing more of these proceedings than any other – any other firm.  And it’s really – it looks like the two major players in this space at the moment are you and then Stern Kessler and then everybody else has only got a handful of cases, so how did you guys get involved in this and how did you get so much business so quickly?

KUNIN: Thanks, Gene, for taking the time to talk with me today. In order to answer your question we have to go back a number of years ago when the Oblon Firm established its post grant practice group, that I co-chair This was long before the America Invents Act.

At that time our firm had been working in the reissue and re-examination space for a significant period of time and had a fairly good share of the market, particularly with respect to inter partes reexaminations.  We had a lot of experience anddelivered excellent results for our clients whether we were defending their patents or representing them as a third-party challenger.  When these new USPTO administrative trials went into effect on September 16, 2012 we were well positioned with existing clients and through our reputation as one of the leading  firms in USPTO post-grant proceedings space we have been successful in attracting new clients.   This in part is also due to the recognition and following of our patentspostgrant.com ] blog that is principally authored by my law partner, Scott McKeown.  Thus, we were able to get off to a very quick start when these new USPTO administrative trials began September 16.

QUINN: Okay.  And I saw in what I was looking at who’s doing what that you and most of the others, at least the little firms that are handling a number of these cases seem to be representing overwhelming the petitioner.  But I did notice that you have a statistically relevant number of cases where you’re also representing the patent owner, so let’s just throw that out generally there for a minute.  Do you want to comment on that or?

KUNIN: Sure.  As you know, Gene, most of the publicity concerning the popularity of the new USPTO administrative trials has to do with the notion that these trials are going to produce very favorable results for the third party petitioner.  People have extrapolated from the results achieved from inter partes re-examinations and have inferred that, if such favorable results were achieved under the previous regime, then under inter partes review the overall benefits will be as least as good or better.  The USPTO administrative trials include a faster process that cuts out a patent examination phase.  The administrative trials start at the PTAB and must be completed within 12 months after a decision initiating the trial is issued.  Inter partes reviews will be particularly very popular for manufacturing entities that have been sued in Federal District Court and one year has not yet lapsed before filing an inter partes review petition.  In such case the third party petitioner gets to challenge the validity of the claims that the patent owner has asserted in a litigation in these administrative trials where the patent does not enjoy a statutory presumption of validity, its claims are given their broadest reasonable interpretation and are evaluated under a preponderance of the evidence standard.  The third party petitioner may even get the benefit of a stay of the concurrent litigation pending the outcome of the inter partes review.

QUINN: Okay.  Now, before you go any further I know why you said the one year but for those who maybe have not followed this long, why did you say sued within that one year?

KUNIN: Inter partes review provides the third party challenger the opportunity to file a petition unless precluded from doing so.  There are two preclusions; one, is that you cannot file a declaratory judgment action for invalidity of the patent first and then try to go to the USPTO to seek inter partes review.  The second condition is that there is a one-year time limit after you have been served with a complaint of patent infringement for you to petition the PTAB for inter partes review,  Thus timing considerations are crucial.  Morevover, that’s why it was very important with respect to the recent technical corrections amendment to the AIA that the nine month dead zone for challenging first-to-invent patents was removed.

QUINN: Okay.  So now what about the Estoppel issues, I hear a number of things and that comes to mind when you’re talking about why somebody may want to bring these ‘cause I’ll just throw my two cents out there and see where you might want to go with this, but it strikes me that it makes sense that these challenges would wind up whether it be post grant or inner parties would wind up the challenger, one, the fees involved are significant and with the Estoppel provisions you’re not just going to throw something and sees what sticks on the wall.  So there’s a certain weeding out process that goes along so it’s not surprising that more of these things might wind up be favorable to the challenger.  But I’ve heard some companies like, for example, Google says that they will never consider these things under the current Estoppel provisions because they don’t like anything that could have been raised.

KUNIN: The correct estoppel standard for IPR is raised or could have been reasonably expected to have been raised.

QUINN: Could have been, well, yeah, and then the question is what is that wind up meaning, you know, we probably all have an idea what that means but what will the Federal Circuit ultimately say that really meant.  So there’s a lot in there maybe we can unpack it little by little, but what are your initial thoughts?

KUNIN: The PTO fees for these administrative trials are substantially greater than the prior fees for inter partes re-examination.  Plus, due to the complexity of the new proceedings  it could very well be a $250-$300,000 expense to the challenger. However, that cost is still an order of magnitude less expensive than litigation.  A good metric may be to compare the cost of these new administrative trials to interferences, which could very well be in the same ball park.  Third parties are not going to file IPR petition without doing their due diligence in carefully studying the claims that they are going to challengein relation to the strength of the applicable patents and printed publication that will be used to demonstrate the unpatentability of the challenged claims.  With the prospect of an estoppel facing a losing challenger and the costs of the trials third parties will be hesitant when choosing to file a petition unless they have a strong case.  Consequently, I would expect that the reasonable likelihood of prevailing standard for initiating an IPR will be met quite often.  This circumstance coupled with the fact that only patentability issues based on patents and printed publications can be raised in an IPR will lessen the estoppel concern for third party petitioners.  This is especially true where the third party will retain the ability to attack original patent claim validity in a litigation based on subject matter eligibility, utility, written description, enablement and claim indefiniteness.

QUINN: I guess ultimately at the end of the day the question is what the word “reasonable” will wind up meaning?  The fear I have is when I hear some company say we’re not going to use that until that gets done away with, and I guess by any fair measure it was supposed to have been different in the statute and at the last minute there was a mistake they voted on the wrong version or something like that, but I look at that and I listen and it seems to me what they want is to be able to have serial challenges and then that’s not very good from the patentee perspective. If you’re only going to have an estoppel with respect to what you bring up then you may hold some stuff back and then if that doesn’t work then you can go again because we see that in litigation where not all companies but some companies play the war of attrition and it struck me that the whole idea of doing this post grant process was to make it more efficient and to say, hey, we’re going to get through these things quickly but we want to get from Point A to Point B where we know what the answer is either the patent is good or the patent is not good so that we have a definitive answer at least in reference to you and whoever is in privy with you.  If estoppel only applies to anything raised or which reasonably could have raised, that invites serial challenges. I go back and forth sometimes about what I think is the right answer. Do you have any thoughts?

KUNIN: It seems as though what you’re talking about is attacking the same patent on different patents  and printed publications in serially filed proceedings.  If you’re talking about a serial challenge of a patent within that one year of a lawsuit is filed by the patent owner against the third party petitioner there’s really nothing fundamentally wrong with that.   The reason why there isn’t anything fundamentally wrong with that proposition is because there are page limits that constrain the third party’s ability to challenge a large number of patent claims on a large number of different prior art bases.  If you study some ongoing inter partes review proceedings you’ll see that there often there are multiple challenges by the same party against the same patent attacking  different claim sets using additional prior art.  However, the existence of the one year time limit cabins the impact on the patent owner.

QUINN: Yeah, and that I get, I mean, that makes sense to me with what I knew, maybe I’ve been misunderstanding what I’ve been hearing but what I thought I was hearing was is not so much that they want to have serial challenges within that one year within the patent office because it strikes me that they do that based on what you’re saying here.  But that they want to if something comes up later on like a piece if prior art that they didn’t use at the patent office comes up then they want to be able to throw that out in front of the judge in district court which to me seems to be at least the way that they had sold the post grant review processes at least to the public, you know, or at least the public like us are paying attention was that that wasn’t going to happen was, you know, you couldn’t hold your cards then go fight in a different forum and that was what we wanted to stop happening because to some extent that’s intentionally or otherwise seems to be what goes on, you know, and then you had the re-exams go up at a different pace at the patent office and the district court case goes a different pace and the Federal Circuit doesn’t wait for both of them to mature.  You take one and then that has some implication against the other but the other has different art and then you wind up getting the same patent forget what case it was we had the same patent actually the same claims at the Federal Circuit in one forum they were valid and another one forum they were not valid.

KUNIN: There is no statutory estoppel against third party requesters in ex parte reexamination.  However, as a practical matter, where the third party is seeking a stay of concurrent litigation, the judge may impose an estoppel as a condition when granting a stay.

QUINN:  Right.  Right, and that I thought was what we wanted to get away from.

KUNIN: We are indeed trying to get away from that serial patent attack model by virtue of the statutory requirements for these IPR administrative trials.  You’re going to typically have the final written decision by the PTAB at roughly 15 months after the petition was first filed .  I think what you were talking about has to take into account the fact that there may be secret prior art that has a prior art effect as of an earlier priority date which may not have been in a published application at the time that you filed your petition for an inter partes review.  This could occur where the applicant for a patent had a non-publication request and as a result there was no 18 month publication of that first filed application.  The new reasonably expected to have been raised estoppel standard was intended to broaden the exclusion beyond just the 102(e) situation to include the hard to locate technical literature and obscure patents and published applications that are not readily publicly accessible.

QUINN:  I get that.  That makes perfect sense.  The only thing that I would add that would make it, you know.

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PREVIEW: In Part 2 we pick up discussing estoppel and move into further discussion of the America Invents Act, including discussion of Metallizing Engineering and Congressional interest in expanding the Economic Espionage Act.