The statistics for patent owners in IPRs are daunting: Trials are instituted about 70% of the time and one or more claims are invalidated in about 85% of trials. Our Post-Grant Group has consistently beaten those odds and had great success in representing patent owners. We’ve done it by attacking petitions and exploiting the other side’s mistakes.
The petitioner must make its case in the petition and supporting evidence (typically an expert declaration). Petitioners often make mistakes that when highlighted to the Board can prove fatal. Some of the mistakes listed below may seem obvious, but every one is drawn from an actual case where we exploited a problem in a petition to prevail for our patent owner client.
Claim construction: A petitioner is supposed to make its case by demonstrating that every claim term is met by the prior art. The petitioner’s burden to demonstrate that a claim term is met by the prior art can’t be met if the term is not construed correctly. Petitioners often fail to construe terms and rely on prior art that fails to meet any reasonable construction. We’ve even seen petitioners fail to apply constructions that are explicitly defined in the specification.
Stretching a §102 ground rather than making it a reasonable §103 ground: Petitioners are more comfortable with § 102 grounds and often stretch their claim construction and/or their assertions about what their references show to try to “make it fit.” When a petitioner overreaches to make a §102 ground and the weaknesses are highlighted for the Board, the ground falls apart. Many times, a missing feature could have been addressed with a secondary reference in a strong §103 ground but the petitioner failed to advance such a ground. When we represent petitioners, we often tell them that a strong §103 ground is better than a weak §102 ground for precisely this reason.
Obviousness: Petitioners commonly find a number of references, line them up with the claim limitations and provide some boilerplate “reasons” to combine the references. The reasons to combine often make no sense from a technical perspective and do not withstand scrutiny. We have had success in deposing the petitioner’s technical expert and gaining helpful admissions about whether a person skilled in the art would have actually combined the references in the way the petition suggests.
Real party in interest: A petition that does not name all real parties in interest is defective and should be dismissed. When representing the patent owner, it is advisable to gather information about the entity or entities named in the petition and determine whether there are unnamed entities (e.g., a parent or sister company) that might also be real parties in interest. While the Board is hesitant to grant discovery in other areas, they have granted discovery in many cases on the real party in interest issue. Pre-institution discovery can be helpful in gathering facts to establish that there is a real party in interest that is not named in the petition so that the petition must be dismissed.
Prior art: A petitioner must demonstrate that any patent or publication relied upon is actually prior art. For non-patent publications, careful scrutiny should be given to whether the petitioner has met its burden to establish that the documentary evidence relied upon is a printed publication, and that it was available prior to the critical date of the challenged patent. The petitioner should be held to the four corners of its petition and supporting evidence to determine whether it has met its burden.
For more useful IPR strategies, view the presentation from our recent seminar.