Fish’s Karl Renner and Jeremy Monaldo Quoted in Law360 Article, “Inter Partes Reviews Becoming Friendlier To Patent Owners”
March 7, 2017
“I see patent owners getting a little bit better as they get accustomed to the challenges,” said Jeremy Monaldo of Fish & Richardson PC. “Patent owners are better able to see what has worked and what hasn’t worked” in other cases and tailor their arguments accordingly, he added.
When inter partes reviews first became available, patent owners would often put every possible argument in their response to the petition, but today, they are “more focused and better able to press on the points where there has been past success,” he said.
His Fish & Richardson colleague Karl Renner said that the firm often represents patent owners in inter partes reviews, “and, to be candid, we’re better than we were two years ago,” and more able to select and present arguments effectively as the proceedings mature.
He also pointed out that initial results out of the PTAB, in which patents were found invalid at very high rates, led to a marked increase in new petitions. Not all of those were as carefully thought through as they could have been, and some were filed by parties and attorneys with less experience in patent office proceedings, which may have contributed to their lower rate of success, he said.
“These proceedings are very challenging, and the tactics and strategies are multidimensional and require an awful lot of foresight and strategic thinking,” Renner said. “People who thought these proceedings were only about submitting a claim chart are being sorely disappointed.”
“When the number of opportunities to attack a claim increases, it can lead to a higher level of success,” Renner said.
“To the extent it’s important, I think people will raise validity challenges at the PTAB,” Monaldo said.
To read the full article, please click here.