Intellectual Property

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. We provide a summary of key takeaways from throughout the series and invite you to access all of our tips for more detail on Surviving an Instituted IPR.

In this final patent owner tip for surviving an instituted IPR we discuss sur-reply strategies. At this point, the Patent Owner has filed its Response, developed all the facts and evidence, and taken and defended expert depositions.

In our penultimate patent owner tip for surviving an instituted IPR, we turn our discussion to defending the deposition of your expert. At this stage of the proceeding, your Patent Owner Response has been filed, and all the facts and arguments you need have already been developed, including any necessary expert testimony.

After an inter partes review (“IPR”) is instituted, a patent owner may move to amend challenged claims to overcome the prior art. Here we provide some further information for patent owners considering ways to amend claims that are challenged in IPR by filing a reissue application or requesting reexamination.

Here are four tips for improving your chances of convincing PTAB to grant a motion to amend your claims.

See the guidelines on the procedural aspects of filing a motion to amend claims.

We look to those circumstances when a patent owner should think twice about amending, including when significant past damages exist, the current claims possess strong infringement reads and claim scope, petitioners are highly-motivated to fight and patent owner is cost sensitive.

After an inter partes review (“IPR”) is instituted, a patent owner has an opportunity to file a motion to amend the claims and thereby propose a reasonable number of substitute claims. Here we provide some instances where a motion to amend may be a favorable option for a patent owner to consider. 

In inter partes review (IPR) proceedings, the PTAB will often uphold the validity of dependent claims despite finding the independent claim invalid.  Dependent claims recite additional limitations that must be separately accounted for in the prior art references in the Petitioner’s asserted grounds.

When faced with an instituted IPR, the Patent Owner should include all arguments it wishes to preserve for appeal in its Patent Owner Response (“POR”), including arguments that the Patent Owner believes are unlikely to succeed before the Board but may be attractive to the Federal Circuit.  Otherwise, the argument will be deemed waived and unavailable in any subsequent appeal.

When confronted with instituted IPRs, Patent Owners should identify and exploit issues that the Petition glossed over and bring those to the attention of the Board.  This will highlight for the Board important issues that the Petition failed to sufficiently address and can lead to victory for the Patent Owner. 

In our previous post we started talking about discovery procedures in inter partes review (“IPR”) proceedings under 37 CFR § 42.51 and, in particular, the scope and timing of seeking limited additional discovery under Rule 42.51(b)(2). We reviewed timing considerations and emphasized the importance of anticipating the need for additional discovery and, to the extent necessary, moving the Board as early as possible following Institution.

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. 

Expert declarations are an essential component of any patent owner’s effort to survive an instituted inter partes review (“IPR”). The Board relies heavily on expert testimony in order to evaluate and understand the technology at issue from the point of view of a person of ordinary skill in the art (“POSA”).

As we have previously discussed, expert testimony is a critical aspect of the Patent Owner’s case-in-chief of an inter partes review (“IPR”) proceeding. In addition to retaining the right expert witness and maximizing that expert’s testimony in the expert declaration, it is imperative that expert testimony is supported by objective, contemporaneous documentary evidence.

The right expert can be the critical piece that saves the validity of your patent. Finding the right expert for a patent owner requires careful selection and due diligence. We previously detailed how your expert’s testimony can make or break your Patent Owner’s Response (“POR”).

The expert declaration provides a unique opportunity for Patent Owners to bolster their case during the discovery period of an inter partes review (“IPR”) proceeding. We previously detailed how to effectively use an expert declaration in the Patent Owner’s Preliminary Response (“POPR”). Now we turn to maximizing your expert’s testimony for the Patent Owner’s Response (“POR”).

Drafting the expert declaration is another critical task for Patent Owners during the inter partes review (“IPR”) discovery period. As noted in our previous post, IPR expert witnesses provide declarations as affirmative testimony in lieu of live testimony before the Board at the hearing.

As discussed in our previous post, one of the most critical tasks for Patent Owners during the Inter Partes Reviews (“IPR”) discovery period is deposing the Petitioner’s expert. Since IPR depositions are treated differently than fact-gathering depositions in district court litigation, a Patent Owner should approach the IPR deposition with different goals.

As a Patent Owner in an instituted Inter Partes Reviews (“IPR”), one of the first and most critical tasks before you is deposing the Petitioner’s witnesses, including its experts.  But approaching an IPR deposition like a typical litigation deposition could be a big mistake.