Patent Owner Tips for Surviving an Instituted IPR: From Depositions to Sur-Replies

By William A. Meunier, Michael T. Renaud, Brad M. Scheller

As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind – from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your sur-reply. The Mintz IPR team authored the “Patent Owner Tips for Surviving an Instituted IPR” series to provide valuable practice insights from institution forward. In the summary below, we provide key takeaways from throughout the series. All 19 tips can be read on Mintz.com here: Surviving an Instituted IPR. (You may also be interested in reading our series on Avoiding IPR Institution.)

Depositions

Tip #1: Approach IPR Depositions Like A Cross-Examination

Tip #2: Don’t Swing for the Fences in IPR Depositions

Expert Declarations

Tip #3: How Patent Owner Experts Go from Zero to Hero

Tip #4: Take the Time to Use Your Expert as an Expert

Tip #5: The Right Expert Can Save Your Patent

Tip #6: Using Objective Sources & Evidence to Support the Expert Declaration

Tip #7: Work with Your Expert to Make the Declaration Navigable and Well Supported

Seeking Additional Discovery

Tip #8: Additional Discovery is Possible, but Should be Carefully Planned

Tip #9: Issues Warranting Limited Additional Discovery

Drafting Response

Tip #10: Address Claim Construction and Public Availability

Tip #11: Use It or Lose It (in the POR)

Tip #12: Address Individual Claims – Dependent Claims Can Save the Day

Motions to Amend 

Tip #13: When to Amend Claims in an IPR

Tip #14: When Not to Amend Claims in an IPR

Tip #15: Procedure for Motions to Amend

Tip #16: Improve Your Chances of Getting Amendments

Tip #17: Alternatives to Motions to Amend in IPR Proceedings

Defending Depositions of Declarants  

Tip #18: Defending Depositions

Sur-Replies

Tip #19: Sur-Reply Strategies

See the full series of Tips for Surviving an Instituted IPR, from depositions to Sur-Replies, here on Mintz.com.

We hope you find these strategies to be practical and helpful for navigating instituted IPRs. As always, the Mintz Intellectual Property team is happy to discuss further or assist in any of your IPR needs.

 

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Authors

William A. Meunier

Member

William A. Meunier is a Mintz attorney who has mastered inter partes review (IPR) proceedings and high-stakes patent litigation. He has helped patent owners achieve success in over 90% of IPRs, compared to the industry average of only 35%. Bill has decades of experience litigating patent cases.

Michael T. Renaud

Member / Chair, Intellectual Property Division

Michael T. Renaud is an intellectual property litigator and patent strategist who helps Mintz clients protect and generate revenue from their patent holdings. Clients rely on Mike's counsel on complex and sensitive licensing agreement negotiations, acquisitions, and other technology transactions.

Brad M. Scheller

Member

Brad M. Scheller is an experienced patent litigator and strategic counselor to start-up ventures and established businesses in the mechanical and electrical arts, with a focus in EV and battery technologies and advising clients on patent portfolio growth, management and enforcement. He represents clients before the United States Patent and Trademark Office and as lead counsel in federal district court and appellate litigation across the country.