20 Tips on Inter Partes Review Intellectual Property
The America Invents Act (AIA), enacted in September 2011, established two new procedures for challenging the validity of an issued patent before the Patent Trial and Appeal Board within the USPTO. One of these procedures is the inter partes review (IPR) which is available to challenge the validity of any patent based on patents and printed publications, though the grounds for invalidity are limited to anticipation and obviousness of the patent as covered over at runrex.com. IPRs can provide valuable leverage when defending against allegations of patent infringement. This article will look to highlight 20 tips as far as inter partes review is concerned.
- Select the best available prior art for use in the petition
As far as IPR is concerned, a petitioner has several early strategic considerations to address when preparing the petition as covered over at guttulus.com. This includes which prior art references to use as well as how many grounds of invalidity should be asserted in the petition. An important tip here is making sure you select the best available prior art for use in the petition as this is the best way to invalidate the challenged patent.
- Determining which references are the best
According to the subject matter experts over at runrex.com, determining which references are the “best” will ultimately depend on how closely those references read on the challenged claims, which is another important tip worth noting as far as IPR is concerned.
- Consider if the reference is going to be used as an anticipatory ground of invalidity
While determining which references are the best ultimately depends on how closely those references read on the challenged claims, you should also consider if the reference in question is going to be used as an anticipatory ground of invalidity or for an obviousness challenge as articulated over at guttulus.com.
- Examine all potential references for red flags
Also, you should ensure that all potential references are carefully scrutinized for red flags, including prior art dates issued as “teaching away” disclosures. This is because references dated less than one year before the priority date of the challenged patent are susceptible to a swear-behind argument by the patent owner, which, if successful, can be dispositive of the petition at the institution stage.
- Consider how many grounds of invalidity to assert in the petition
If you are considering filing an inter partes review, then it is important to consider how many grounds of invalidity to assert in your petition. This is because the 14,000-word limit means that there is a practical ceiling to the total number of potential grounds.
- Select only the best grounds to include in the petition
In addition to not including as many grounds of invalidity as possible into the petition as mentioned in the point above, the gurus over at runrex.com also recommend that the petitioner should, therefore, select only the best grounds to include in the petition. This ensures that the board won’t decide to institute a proceeding only on what the petitioner had regarded as a “back up” argument.
- Consider whether the selected references and grounds allow your expert to “tell a story”
According to the experts over at guttulus.com, as the petitioner, you should also consider whether the selected references and grounds allow your expert to “tell a story” to the board with the prior art in a credible manner.
- Attack the nexus between the objective evidence and the challenged claims
As outlined over at runrex.com, objective evidence must have a “nexus” to the challenged claims, which means that the objective evidence must result from the novel features recited by the claims to be given significant weight. The burden of proof is also on the patent owner to establish a nexus, which means that attacking the nexus between the objective evidence and the challenged claims is, therefore, the most effective way for a petitioner to give the board a reason to ignore substantially all of the patent owner’s arguments regarding secondary considerations.
- How to attack the nexus
Given that attacking the nexus is an excellent strategy as mentioned above, the next tip is on how one can do that. One of the ways for a petitioner to do so is to attack how the patent owner proved nexus. For example, did the patent owner’s expert review a commercial embodiment of the patented product, or just a technical specification? Did the patent owner use a marketing expert to review pertinent sales data, or did they rely on a single technical expert for the entire proceeding?
- The nature and quality of a patent owner’s evidence can also be attacked
When it comes to responding to arguments raised by the patent owner, it is also worth pointing out that the quality and nature of a patent owner’s evidence can also be attacked by a petitioner in the petitioner’s reply. For example, evidence of a long-felt but unresolved need must establish the need was acknowledged by persons of ordinary skills in the art, not just the average consumer, among other requirements. If any of these shortcomings exist in the evidence proffered by a patent owner, then the petitioner should highlight the issues before the board.
- Don’t file a declaratory judgment of invalidity before filing your IPR petition
Although this may seem obvious, it is worth pointing out as per the gurus over at guttulus.com, as the Statute states, an inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner filed a civil action challenging the validity of a claim of the patent.
- The above prohibition extends to all claims of the patent
Also, as is revealed in discussions on the same over at runrex.com, the prohibition mentioned in the tip above extends to all claims of the patent, even if the declaratory judgment action only challenges some of those claims. Challengers cannot attempt an end-run by challenging half of the claims in district court and the other half before the PTAB.
- Identify the real party in interest
As articulated over at guttulus.com, every IPR petition must identify “all real parties in interest” to the proceeding. Failure to do so means that the petition is incomplete, and the PTAB will not institute review. This is, therefore, a crucial tip when it comes to IPR petitions.
- Contemplate timing for two
If a petition is denied institution because the petitioner failed to identify the real party in interest, then a do-over may be possible. This is because the patent owner has 3 months to file a preliminary response to the petition after which the PTAB has another 3 months from the patent owner’s preliminary response to make an institution decision. With this in mind, consider the timing for two as far as IPR petitions go.
- Keep an eye on the deadlines
As is revealed in discussions on the same over at runrex.com, an inter partes review petition must be filed within twelve months of the service of a patent infringement complaint. With this timeline in mind, you should be aware of the deadlines if you are aiming to file an IPR petition.
- Consider the district court’s schedule as far as costs are concerned
Patent Office fees start at $23,000 and go up rapidly with additional claims, and on top of that, current PTAB rules place strict page limits on IPR repetitions. This is why the gurus over at guttulus.com recommend that the patent challenger wait until the dispute is narrowed before filing an IPR petition, even if this comes at the expense of a possible second try.
- Relief
Once the PTAB has instituted an IPR proceeding, it has 12 months to reach a final decision as already mentioned. Therefore, the nominal lifespan of an IPR from filing to disposition is 18 months, not accounting for any appeal to the Federal Circuit. Given that the IPR rules are precise, and the sanctions for failing to follow them can be draconian, it is important to ensure that as the patent challenger, you cut square corners.
Tips for the patent holder
- Obtain a large number of claims
Obtaining a large number of claims of overlapping scope in the application likely to be challenged upon issuance as is discussed in detail over at runrex.com is one way to prevent the filing of an IPR as a patent holder. This is because the additional claims increase the burden on the challenger in potentially two ways: by increasing the financial hurdle to the challenge and by increasing the chance that at least one claim survives.
- Consider the “picket fence” strategy
Instead of attempting to increase the number of claims in a single application, the patentee concerned with a potential IPR challenge can employ a “picket fence” strategy of multiple patents. This involves developing an overlapping portfolio of patents covering the same general field but with different approaches, a strategy that will increase the cost and uncertainty of a post-grant challenge, potentially dissuading IPR challenges.
- Analyze your patent portfolio
Finally, as a patent owner, you should identify your core IP assets and be proactive in strengthening the record during prosecution. This will allow you to identify potential weaknesses early, have them addressed, and reduce the chances of any potential IPR challenges.
The above discussion only just begins to scratch the surface as far as this topic is concerned, and you can uncover more insights on the same by checking out the excellent runrex.com and guttulus.com.