Five Techniques To Stop an IPR Before it Starts

Inter partes review is a popular and successful tool for invalidating patents. It is increasingly likely that at some point your company will be served with an IPR petition challenging the validity of one or more of its patents.

A full IPR proceeding consists of two phases: the preliminary phase and the trial phase. However, the proceeding will not progress to the trial phase if the Patent Trial and Appeal Board decides to not “institute” the IPR trial. Filing a well-crafted patent owner response during the preliminary phase is highly recommended, and this article provides strategies to employ when filing that preliminary response.

Argue that the asserted “prior art” isn’t actually prior art. Several types of documents are susceptible to dispute by patent owners, including website printouts, graduate theses, presentations, advertisements, white papers and user’s guides. For anticipation challenges, find a claim limitation that the petition failed to address. For obviousness challenges, you can argue that the petition failed to provide a motivation to combine the prior art references, or lacks a reasonable expectation of success. Argue that a claim term requires construction, and that the petition failed to account for the claim term under correct construction.

Determine if the petitioner or a real party-in-interest is statutorily barred from filing the petition. The patent owner should consider monitoring any changes in real party-in-interest and determining if such a change opens an opportunity for a one year bar challenge.