“Your shopper’s litigation marketing campaign hopefully includes the assertion of a number of patents, not only one or two, to have a great alternative to flee the IPR course of with no less than a number of confirmed claims.”
Litigating the validity of claims in an inter partes assessment (IPR) on the Patent Trial and Enchantment Board (PTAB) is vastly completely different from litigating validity in district courtroom. PTAB judges are scientists and engineers, and they’re additionally patent attorneys. They’ve vital technical coaching, and most have superior technical levels. You’ll be able to assume they know substantive patent legislation chilly. PTAB judges symbolize a really completely different viewers from a lay decide or a jury in district courtroom.
With regards to validity, the playbook for district courtroom is most positively not the playbook for IPRs. If you don’t make a acutely aware effort to put aside district courtroom methods whereas arguing validity, it will possibly wreck your case.
Whether or not you’re the petitioner or the patent proprietor, the papers you file should be oriented to this viewers of extremely educated specialist judges. Your petition or patent proprietor response and accompanying skilled declarations should deal with serving to administrative patent judges (APJs) perceive the core technical points on the coronary heart of the authorized dispute on obviousness. They need to additionally persuade APJs to just accept your reasoning and the related proof on why claims are apparent or nonobvious.
Whether or not presenting within the papers or at oral argument, ask your self whether or not every argument is more likely to be considered as professional by the APJs on the panel. If not, it is best to take away that dropping argument. Weak arguments undercut and dilute the sturdy arguments you could have on the deserves. Maybe worst of all, weak arguments undercut your credibility earlier than the panel. Additionally they undercut the credibility of your skilled, who the Board will wish to cite favorably in case you are to prevail within the continuing.
Know What You Are Up In opposition to
For patent house owners, the PTAB is a particularly difficult discussion board. It’s not essentially the “death squad” it was alleged to be in its early days, however it’s nonetheless a continuing that’s a lot much less pleasant to the patent proprietor than a district courtroom. The PTAB has not turned out to be the executive various to district courts that patent house owners envisioned when the America Invents Act (AIA) was enacted.
In 2023, the institution rate for IPRs was 67%. It was 66% in 2022, and it’s tracking at 64% the primary two quarters of 2024. When you symbolize the patent proprietor, your shopper wants to know that more often than not the Board goes to institute a trial if a petition is filed.
For IPRs that attain a remaining written resolution, the Board discovered all challenged claims to be unpatentable 67% of the time in 2023. Within the first two quarters of 2024, the Board discovered all challenged claims to be unpatentable 70% of the time. Thus, the vast majority of patents get instituted, and the vast majority of patents get fully invalidated.
it one other approach, 45% of challenged patents might be killed if a petition is filed.
The Federal Circuit hardly offers respite: it affirms PTAB choices in IPRs more than 83% of the time.
There are two takeaways. First, your shopper’s litigation marketing campaign hopefully includes the assertion of a number of patents, not only one or two, to have a great alternative to flee the IPR course of with no less than a number of confirmed claims. Second, it’s good to observe greatest practices for IPRs and keep away from a few of the widespread pitfalls to provide the patent the very best probability.
Crafting Your Petition/Patent Proprietor Response and Professional Declaration
The PTAB conducts trials, nevertheless it hardly resembles a district courtroom. It has a unique model and guidelines.
The PTAB typically frowns upon a few of the antics and techniques that may work in a district courtroom setting. The usage of bombastic language to assault the opposite occasion’s positions doesn’t play nicely. Submitting briefs with extreme use of emphasis doesn’t impress and may undermine the credibility of the deserves arguments you current.
The transient and supporting skilled declaration needs to be crafted with the experience of APJs in thoughts, explaining with out being repetitive and by no means being condescending.
Particular care must be taken with skilled declarations. An skilled declaration is just not an skilled report. Whereas a report is a disclosure giving discover of the testimony the skilled expects to provide in some unspecified time in the future, an skilled declaration submitted in an IPR is the direct testimony. The skilled is essentially sure to that testimony, and thus the skilled declaration should be full and correct.
One widespread downside is the submission of skilled declarations that monitor the petition or patent proprietor response too intently. An skilled declaration that appears like a cut-and-paste from the petition/patent proprietor response is problematic. Such a declaration doesn’t assist the APJs on the panel higher perceive the arguments within the principal paper, which they learn rigorously. In the event that they acknowledge a declaration that “parrots” the principal paper, the declaration might be given little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624 (PTAB Aug. 24, 2022); Xerox Corp. v. Bytemark, Inc., IPR2022-00624 (Feb 10, 2023) (Vidal, Dir.) (prec.) (criticizing the skilled declaration as repeating the petitioner’s argument verbatim and assigning it little weight). See, e.g., Am. Honda Motor Co., Inc. v. Blitzsafe Tex., LLC, IPR2016-01473, Paper 9, 16-17 (PTAB Jan. 24, 2017) (“Lastly, counting on the Geier Declaration as assist is inadequate, when, as right here, the cited paragraphs within the Declaration are repeated within the Petition verbatim, and, thus, provide no extra clarification or factual assist than what seems within the Petition.”) (quotation omitted); Free-Circulation Packaging Int’l, Inc. v. Automated Packaging Sys., Inc., IPR2016-00447, Paper 7, 10 (PTAB June 22, 2016) (“Dr. Kimmel’s declaration … does nothing greater than parrot the language of the Petition phrase for phrase, with out offering any evaluation or underlying info to assist the opinion.”).
One query that arises for the patent proprietor is whether or not to submit an skilled declaration with the preliminary response. As a common rule, it’s higher to carry off on submitting an skilled declaration till after establishment to keep away from the chance of affirmation bias. A panel of APJs will resolve whether or not to institute the IPR primarily based on the low threshold of whether or not there’s a “cheap probability that the petitioner would prevail with respect to no less than 1 of the claims challenged within the petition.” 35 U.S.C. § 314(a). If there’s an establishment after you submitted a preliminary response with an skilled declaration, you’ll then be submitting a second skilled declaration with the patent proprietor response asking the identical panel of APJs to return to a unique conclusion within the remaining written resolution.
Another excuse to not submit an skilled declaration with the preliminary response is that it can provide the looks of a real dispute of reality between the petitioner’s skilled and the patent proprietor’s skilled, which the panel might really feel is greatest left to decision by trial.
The petitioner’s skilled declaration ought to handle all necessities of the obviousness evaluation: (1) the prior artwork mixture meets all limitations, (2) there’s an obvious motive to mix/modify, and (3) there’s a cheap expectation of success. The petition and the skilled declaration ought to submit a number of, various causes for why a POSITA would have motive to mix the references. If there’s any query as as to whether a reference expressly discloses a limitation, the petition and skilled declaration ought to set forth another argument on why the limitation is inherently disclosed by the reference. The failure to make an inherency argument within the petition might represent forfeiture as a result of the petition successfully defines and cabins the arguments for unpatentability. See SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (U.S. 2008) (“in an inter partes assessment the petitioner is grasp of its grievance”); 37 C.F.R. § 42.104(b)(4) (“The petition should specify the place every component of the declare is discovered within the prior artwork patents or printed publications relied upon”).
We are going to discover a few of the pitfalls that patent house owners encounter in responding to petitions in Half II of this text and a few methods for making the patent proprietor’s response as efficient as doable.
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