Inter Partes Review – Claim Construction and Patent Owner Preliminary Response

July 10, 2013

In this webinar, the co-chairs of Fish & Richardson’s post-grant practice focused on the topics of claim construction in IPR petitions and the content of the patent owner’s preliminary response. They reviewed recent PTAB decisions related to both of these topics and proposed practice tips based upon these decisions and their own recent experiences.

Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Josh Pond, Principal, Washington, DC
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Webinar Summary

  • Claim Construction
    • IPR Petition may be denied if claim constructions advanced in IPR Petition are not supported by sufficient evidence, e.g., expert testimony (Norman Noble v. Nutech, IPR2013-00101)
      • Moreover, PTAB may deny Petition if Petitioner proposes no constructions
      • Intrinsic evidence (e.g., patent’s specification and file history) may be insufficient evidence to support proposed claim construction
        • Examiner’s statements made during original prosecution are not controlling
      • Simply relying on “ordinary & customary” meanings for claim terms may result in Petition being denied
  • Patent Owner Responses
    • Preliminary Patent Owner Response – optional
      • Filed by Patent Owner prior to Institution Decision
      • Cannot include “new testimonial evidence” (i.e., an expert declaration created specifically for the IPR proceeding)
        • Declarations previously submitted in other proceedings (e.g., related litigation) are permissible
      • Analogous to a summary judgment motion or Rule 12(b)(6) motion
      • May advance any grounds why trial, in whole or in part, should not be instituted
    • Patent Owner’s “Full” Response
      • Filed by Patent Owner after trial has been instituted
      • May submit newly generated expert declarations
      • Analogous to Opposition to IPR Petition
      • Arguments should be targeted and well-honed, and not “shotgun” recital of every possible defense
  • Update on Post Grant Statistics
    • Continued acceleration in quantity of IPR and CBM filings
      • No PGR petitions filed yet
    • IPR / CBM instituted in almost all cases but almost always with pared down grounds and/or claims (based on “redundancy doctrine”)
    • Stays in related district court proceedings
      • Granted ~67% ; Denied ~33%
      • Primary factor in favor of stay: IPR is fast
      • Factors against stay:
        • advanced stage of litigation
        • premature (i.e., wait until IPR institution decision is made)
        • undue prejudice to patent owner
        • desire to resolve all litigation issues, including those not eligible in IPR
        • Multiple related litigations on same patent against different parties
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