Inter Partes Review from the Patent Owner’s Perspective

August 14, 2013

You’ve just learned that your patent is the subject of an IPR petition. What should you do? In this session Dorothy Whelan and Karl Renner, the co-chairs of Fish & Richardson’s post-grant practice, focused on IPR from the patent owner’s perspective. They discussed strategic considerations and proposed practice tips based on PTAB decisions and their own 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
Download Presentation Slides

Webinar Summary

  • 3 Important Dates for Patent Owner (“PO”)
    • Mandatory Notices – 21 days after service of petition
    • Preliminary Response – (nominally) 3 months after petition filed
      • But recently PTAB gave PO only 1 month!
    • Opposition – 3 months after petition granted
  • Mandatory Notices – mostly house-keeping information
    • Real party in interest, related matters, lead and backup counsel, service information
  • Preliminary Response
    • Purpose
      • Akin to summary judgment or Rule 12(b)(6) motion – that is, attempt to prevent IPR from being instituted in whole or part
    • Limits
      • No “new” testimonial evidence (e.g., no expert declarations created specifically for the IPR proceeding)
        • But essentially any other type of evidence may be submitted & relied upon (e.g., deposition or trial transcripts, export reports, etc. from other proceedings)
      • No claim amendments
        • But PO can cancel (i.e., statutorily disclaim) one or more claims at this stage, thereby preventing IPR from being instituted on any such canceled claim
      • Content
        • Attorney argument, along with any permissible evidence, seeking to establish that petition is deficient, or that IPR should otherwise not be instituted in whole or part
        • Jurisdictional Challenges – petition is barred if filed more than 1 year after infringement suit, petitioner previously filed DJ action, petition is estopped based on privity
        • Claim Construction Challenges– PO may challenge Petitioner’s proposed constructions, and/or advance its own claim constructions (preferably ones that would be dispositive with respect to at least one alleged ground of invalidity)
        • Substantive Challenges – e.g., Prior art does not teach material claim limitation, No motivation to combine / modify
          • Difficult to make such arguments without benefit of new expert testimonial evidence (which is not allowed at this stage)
          • Tactical Considerations
            • Consider refraining from advancing substantive arguments that would be stronger with expert testimony support
              • May result in argument ultimately being less persuasive even if supported later (in Opposition) with ample expert testimony
            • Consider including challenges at this stage that might be materially weakened through petitioner rebuttal
            • Consider impact of “telegraphing” to petitioner what PO’s substantive arguments will be in the Opposition, 5 months hence
          • Redundancy Challenges – In the interests of streamlining proceeding, PTAB is hostile to multiple grounds of rejection for the same claim
            • Read & heed Liberty Mutual Co. v. Progressive Casualty Insurance, slip op. CBM2012-00003 (PTAB Oct 25, 2012)
          • Objective Evidence of Non-obviousness
            • Consider introducing (either at Preliminary Amendment or Opposition stage); even though it may not gain much traction with the PTAB it could prove important on appeal at the Federal Circuit
  • Claim Amendments
    • Must be responsive to grounds of invalidity at issue
    • No broadening
    • Only 1-for-1 substitution allowed (absent a showing of good cause)
      • Consider dropping weak dependent claims to make room for better new claims
    • Only a single motion to amend permitted (absent showing of good cause)
    • Petitioner is entitled to oppose proposed claim amendments
    • Amendments give rise to intervening rights
  • Choosing an Expert
    • Same as or different from trial expert?
    • Company employee vs. independent expert?
    • Coordinate with litigation team re costs & timing of depositions, credibility of witness, impact on evidence in litigation, etc.
  • Deposing Petitioner’s Expert
    • Only arises if petition included an expert declaration
    • Effectively serves as cross-examination of expert testimony captured in declaration filed with petition
    • Practice tip: use experienced litigator – i.e., someone who has taken lots and lots of depositions
  • Update on Post-Grant Statistics
    • Over 400 IPRs filed to date – way more than 250 discretionary annual limit reserved by PTAB (as a docket control mechanism)
    • IPR instituted in almost all cases but usually with pared down grounds and/or claims
      • But a handful petitions have been denied in full, typically for one or more of the following reasons:
        • Petitioner failed to propose claim constructions that the PTAB felt were required
        • Petitioner failed to submit expert declaration
        • Petitioner’s obviousness arguments were no more than hand-waving combination argument
      • Moral: PTAB is scrutinizing the initial petition very carefully
        • Petitioner in effect has to anticipate, and address, all claim constructions that PTAB might require
      • Stays in related district court proceedings:
        • 52 published stay orders
          • Granted 36 (including several unopposed motions to stay) (~69%)
          • Denied 16 (~ 31%)
        • Grant / denial rate is fairly uniform across all jurisdictions
        • Main reasons for denial include prematurity (i.e., IPR not yet instituted) and advanced state of litigation
        • Stay may be available to litigation defendant even if not party to the co-pending IPR (i.e., a party other than defendant filed the IPR petition), provided defendant agrees to be bound by outcome of IPR

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