Skip to main content

IPRs & Other Post Grant Proceedings

Viewpoints

Filter by:

IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

PTAB Continues Streak of IPR Denials

June 14, 2021 | Blog | By Brad M Scheller, Paul Brockland

US Patent Trial and Appeal Board (PTAB) institution denials for inter partes review (“IPR”) and other post-grant review petitions have steadily risen from 13 percent in 2012 to 44 percent in 2020. In 2020, the institution rate has fallen to 56%, down from 63% a year ago.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
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.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

PTAB Admits Mistake, Reverses, and Institutes

June 8, 2021 | Blog | By Brad M Scheller, James Thomson

In a rare turn of events the Patent Trial and Appeal Board recently granted a rehearing request in Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appl. Co., Ltd., No. IPR2020-00208, Paper 14 (P.T.A.B. June 1, 2021), stating that “we abused our discretion in denying institution” based on an improper allocation of the parties’ burdens when a petitioner challenges an alleged priority date.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
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. 
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
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”).
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
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.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Patent Owner Tip #5 for Surviving An Instituted IPR: The Right Expert Can Save Your Patent

May 6, 2021 | Blog | By Daniel Weinger, Monique Winters Macek

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”).
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
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”).
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
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.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

PTAB Reinforces Uneven Evidentiary Playing Field in IPRs

April 16, 2021 | Blog | By Daniel Weinger, Nana Liu

The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) recently grappled with the admission into evidence of expert deposition testimony that was presumably harmful to the petitioner in an inter partes review (IPR), and barred the testimony from coming into evidence. 
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
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.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
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. 
Read more
Patent Litigation Viewpoint Thumbnail
The Federal Circuit’s recent Uniloc 2017 v. Facebook Inc. decision is a mixed bag of good and bad news for both patent owners and inter partes review petitioners.  On the plus side for patent owners (but not for petitioners), the Federal Circuit determined that the so-called “No Appeal” provision does not necessarily apply to 35 U.S.C. § 315(e)(1), and, therefore, a patent owner may still appeal a Patent Trial and Appeal Board determination that a petitioner is not estopped from maintaining an IPR under § 315(e)(1). 
Read more
Intellectual Property Viewpoints Thumbnail

Year in Review: The Most Popular IP Posts of 2020

January 14, 2021 | Blog | By Christina Sperry

As 2021 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2020.  According to many readers, hot topics included Chinese foreign filing licenses, patenting involving either artificial intelligence (AI) or COVID-19, inter partes review, and attorney fee awards.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

An Informative PTAB Decision on Fintiv Factors

January 8, 2021 | Blog | By Brad M Scheller, Justin J. Leisey

The U.S. Patent Trial and Appeal Board (“PTAB”) recently designated its decision in Snap, Inc. v. SRK Technology LLC (§ II.A), IPR2020-00820, Paper 15 (Oct. 21, 2020) (“Snap”) as being informative regarding the Fintiv factors analysis.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
Building on Tip #4, one effective way to avoid institution and not address facts is to point out shortcomings in the petition’s application of KSR when asserting motivation to combine for an obviousness analysis. The Patent Trial and Appeal Board (“PTAB”) is an administrative tribunal that frequently encounters proposed grounds that challenged claims are obvious pursuant to 35 U.S.C. ¶103.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Tip #4 for Avoiding IPR Institution: Don’t Argue Facts

November 9, 2020 | Blog | By Brad M Scheller, Serge Subach

We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing the Patent Owner’s Preliminary Response (“POPR”) on areas where the Petitioner failed to adequately support its argument.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Tip #3 for Avoiding IPR Institution: Use Disclaimers Strategically

November 5, 2020 | Blog | By William Meunier, Peter Cuomo

Under U.S. patent law, “No inter partes review will be instituted based on disclaimed claims.”  37 C.F.R.  § 42.107(e).  And petitioners only need to demonstrate a reasonable likelihood of prevailing with respect to one challenged claim in order to secure a favorable institution from the PTAB. 35 U.S.C. § 314.  
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
If you are a patent owner facing an inter partes review (“IPR”) or other post-grant review at the Patent Trial and Appeal Board (“PTAB”), your best chance of success is to convince the PTAB not to institute a trial.  But that does not mean that you should pack all of your substantive arguments about patentability into your preliminary response.
Read more
Sign up to receive email updates from Mintz.
Subscribe Now

Explore Other Viewpoints: