ITC Practice Panel DiscussionTrying Your Case in the PTO:

The New AIA Hearings and Proceedings Before the Patent Trial and Appeal Board

Atlanta IP American Inn of CourtPupilage Group 7

May 15, 2013

International Super Spy Peter Gunnar

Peter Gunnar

Gunnar’s Invention – Original Sketch in Lab Notebook

Gunnar’s Invention – Improved Safety for Critical Applications

Protecting Dignitaries And Government Officials Worldwide

U.S. Secret Service duty vehicle with Easy Ejector Seat from Espion

Commercial Success of the Easy Ejector Seat: Global Unit Sales

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500

1,000

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3,000

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2000 2001 2002 2003 200420122011201020092008

Gunnar’s Invention – Awarded Patent Protection

Wannabe Super Spy Brazen Golddigger

Brazen Golddigger

SpyTech’s Allegedly Infringing Rejector 2005 System

Golddigger Stole Gunnar’s Girlfriend

Gunnar’s Ex-Girlfriend

Golddigger’s New Favorite Client

Kim Jong Un

The Rejector 2005 Is Similar to Gunnar’s Invention

Infringement Analysis: Claim 1 of ’007 Patent

Claim 1Claim 1 SpyTech’s Rejector 2005SpyTech’s Rejector 2005

1. An ejector seat for use in a passenger vehicle, the seat comprising:

a removable portion of a vehicle floorboard;

a removable portion of the vehicle side panel;

at least one passenger seat mounted to the removable portion of the floorboard;

a passenger restraint system; and

at least one parachute.

Standard AIA Trial Timeline

Prior Art Incredible Hulk Rollercoaster

Prior Art ’917 Patent

SpyTech’s Petition for Inter Partes Review

’917 PatentHulk Rollercoaster

SpyTech’s Petition for Inter Partes Review

’917 PatentHulk Rollercoaster

‘007 Claim 1

SpyTech Contends the ’007 Patent Is Obvious

’917Hulk1. An ejector seat for use in a passenger vehicle, the seat comprising:

a removable portion of a vehicle floorboard;

a removable portion of the vehicle side panel;

at least one passenger seat mounted to the removable portion of the floorboard;

a passenger restraint system; and

at least one parachute.

Inter Partes Review Timeline

December 22, 2012 – Spytech petitions for inter partes review of the ’007 patent

December 29, 2012 – PTO issues a Notice of Filing Date Accorded Petition and Notice for Setting the Time Period for Filing Patent Owner Preliminary Response

March 17, 2013 – Espion elects not to file a preliminary response

April 15, 2013 – PTO issues Decision to Initiate Trial for Inter Partes Review

May 15, 2013 – Teleconference

ITC Practice Panel DiscussionScheduling Issue - Extension of Time

ITC Practice Panel DiscussionScheduling Issue -Early Claim Construction

ITC Practice Panel DiscussionProtective Order Issue - Prosecution Bar

ITC Practice Panel DiscussionDiscovery Dispute - Deposition of Dr. E. Ville

ITC Practice Panel Discussion

Discovery Dispute - Espion’s Request for

Additional Discovery to Depose B. Esser

Factors in Assessing Additional Discovery

1. More than a mere possibility and mere allegation

2. Litigation positions and underlying basis

3. Ability to generate equivalent information by other means

4. Easily understandable instructions

5. Requests not overly burdensome to answer

ITC Practice Panel Discussion

Deposition Disputes

Prior Art ’917 Patent

ITC Practice Panel Discussion

Thank You!