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Navigating the PTAB Waters: How TechPats Helps with Inter Partes Review (IPR)

 

ShipThe America Invents Act of 2011 (AIA) created a number of administrative trials and proceedings that can be beneficial in the defense and monetization of patents. Along with our litigation support services, TechPats has experience in these proceedings—bringing the technological expertise and the patent savviness necessary for optimal outcomes.

While TechPats’ experts can help by supporting efforts in various administrative trials in front of the Patent and Trademark Office’s Patent Trials and Appeal Board (PTAB)—e.g., Appeal, Ex-parte Reexamination, Post Grant Review, Transitional Program for Covered Business Method Patent, or Derivation Proceedings —the most prevalent of the patent proceedings has become the Inter Partes Review.

IPR

Inter Partes Review (IPR) is a PTAB administrative trial used to challenge a patent’s validity based on prior art made up of solely patents and printed publications. Since the inception in September 2012, we’ve seen IPRs largely wielded as a defense tactic to thwart, or at least stall, infringement litigation.

In an IPR, a party petitions the PTAB attempting to demonstrate that there is a reasonable likelihood that they will prevail on at least one claim of the patent-in-question. The PTO reviews the petition and the prior art to determine if there is a reasonable likelihood that the petitioner will prevail. Statistically, that has been fairly likely as a high percentage of these petitions for IPR have been granted and trials instituted. It can be alarming to a patent owner who spent 3-5 years prosecuting the patent application to allowance as a patent, when she sees how quickly the claims can go back under scrutiny for patentability by the patent office.

While the burden may seem low, the petitioner must essentially show how and why the alleged claims are rendered either anticipated or obvious by the prior art. In defending your patent claims against an IPR, you need not prove validity—you need to demonstrate that the petitioner and the PTAB have not met their burden in demonstrating that the prior art renders your patent claim anticipated or obvious.

Expert Witness in front of the PTAB: Declarations & Depositions

Like patent infringement trials, PTAB proceedings can come down to which party has the better expert on their side. The standard for challenging validity dictates that the patent claims be examined from the point of view of one of ordinary skill in the art (POSITA) at the time of invention. In IPRs, experts are typically POSITAs who (1) help identify the patents and printed material that qualify as relevant prior art for the subject invention and (2) present their thoughts on what (or what not) would have been anticipated or obvious in light of the prior art at the time of invention. Because of the significance of a POSITA, having an expert who was a person of ordinary—if not extraordinary—skill in the art can be invaluable to your IPR case.

In most cases it is a good idea to pinpoint your expert in the art before petitioning for an IPR or responding to a petition. In fact, most petitions are accompanied by an expert declaration that echoes and clarifies the reasoning.

Much like a claim chart can be the cornerstone of patent infringement cases, validity/invalidity charts are often the best way to contrast/compare the claim elements with the alleged prior art. An IPR challenge to a patent’s validity may be limited to prior art grounds based on patents and printed publications, but an expert’s validity/invalidity chart may allow a clearer explanation of what the disclosed art meant at the time of invention.

One little secret is that while there may be 60-page limits for the petition and responses, an expert’s declaration and appendices are virtually boundless. While you may never want to create too much work for a judge, when you’re confined to a page limit, having the right expert expounding on your arguments is a must.

Early cooperation with an expert in the field helps to ensure that the expert’s declarations and depositions will corroborate the initial filings and responses. Cross examination at deposition will have your position viciously attacked, so the best assurance that an expert is well-prepared is intimate involvement in shaping the positions taken.

Because most IPRs come alongside of infringement trials, it is important to have many eyes watching out for you from the earliest moment of filing strategy. For instance, certain claim and art interpretations can potentially limit future arguments—some may even estop you from asserting certain arguments at a later trial. The right expert as a partner in litigation and an IPR can help you articulate a clear and consistent message across your cases.