Patent Owner Tips for Avoiding IPR Institution

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

 

Inter partes reviews have a very high institution rate. And worse, once instituted IPRs result in invalidated claims at an inordinately high rate. The best defense against an IPR petition is to convince the Patent Trial and Appeal Board to deny institution. The Mintz IPR team has been very successful in achieving denials of institution for our clients, and we produced and shared a series of Tips for Avoiding IPR Institution. Those tips are listed below and are all linked to the full posts. (You may also be interested in reading our series on Surviving an Instituted IPR.)

Tip #1: Litigation Venue Selection

Tip #2: Focus on a few arguments that will affect all challenged claims

Tip #3: Use Disclaimers Strategically

Tip #4: Don’t Argue Facts

Tip #5: Policing KSR’s motivation requirement for the ‘how’ and ‘why’

Tip #6: Advocate Claim Constructions the Petition Ignored

 

See the full series of Patent Owner Tips for Avoiding IPR Institution here on Mintz.com.

You may also want to read our series of Patent Owner Tips for Surviving Instituted IPRs.

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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Tip #6 for Avoiding IPR Institution: Advocate Claim Constructions the Petition Ignored

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Tip #5 for Avoiding IPR Institution: Policing KSR’s motivation requirement for the ‘how’ and ‘why’.

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

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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.