In less than five minutes, you can hear insights into the process of successfully managing IPRs. Topics include:
· A clear description of the timeline associated with an IPR proceeding
· A walk-through of an IPR proceeding, including a trial
· What skills a successful IPR practitioner must possess to ensure the best representation at the Patent Trial and Appeal Board (PTAB)
STRATEGIC INSIGHTS FOR IPRs
With the institution of the America Invents Act, Congress provided the Patent Office with a new trial procedure for evaluating the patentability of a previously issued patent. This new trial proceeding is administered by the Patent Trial and Appeal Board, or PTAB. These post-grant proceedings include inter partes reviews, or IPRs. For each party, an effective IPR team is necessary to navigate and leverage the specifics of the IPR proceedings and to identify opportunities to achieve a desired goal or business outcome.
The phases of an IPR proceeding are different than those in patent litigation. The IPR process is a specialized procedure that concludes within 18 months of the filing of the IPR petition. At various times, the parties will have distinct settlement opportunities.
Now let’s take a look at the timing considerations involved in an IPR.
First is the Preparation and filing of the Petition, which takes two to four months. Points to keep in mind for preparing the petition are that:
The Petitioner should cite key supporting prior art along with the petition, and the Petitioner’s supporting expert declaration should not copy the petition verbatim.
Additionally, the Petitioner should be strategic in arguments raised in the petition. In one aspect, the relative strength of possible arguments should be considered to allow for the filtering of underdeveloped issues, which could prove to be counterproductive. In a second aspect, the Petitioner should consider that challenges to patentability based on theories of obviousness have often proven more successful than challenges based on theories of anticipation. In a third aspect, reliance on inherency principals to complete a challenge to patentability should be used sparingly because they are often difficult to establish.
Next comes the Preliminary phase, which lasts six months. Points to keep in mind for this phase are that:
The Patent Owner should consider any procedural weaknesses in the petition, including failure to identify real party-in-interest, and the Patent Owner should evaluate the benefits of using an expert witness at this stage. The PTAB judges will make an initial determination on whether the petition is reasonably likely to succeed. If it is, the petition is granted and the IPR trial commences. If it is not, the petition is denied, and the proceeding is terminated.
The first phase in the IPR trial is the Patent Owner Discovery and Response, which takes two to three months. In this phase:
The Patent Owner should focus on the shortcomings of the Petitioner’s arguments, identifying key claims and vigorously defending them. Also, the Patent Owner should strongly consider using an expert witness to rebut the Petitioner’s arguments. The Patent Owner can also submit claim amendments to the PTAB.
Next comes Petitioner’s Discovery and Reply, which also lasts two to three months. Points to keep in mind for this phase are that:
The Petitioner should consider evaluating all arguments in the Patent Owner response. And additionally, the Petitioner should consider using an expert along with the Reply, and it is often best to use the same expert as with the Petition.
At the conclusion of the Discovery and Reply phase, both parties have the opportunity to submit evidentiary motions, and the oral hearing is held. This phase usually lasts two to three months. At this phase of the IPR, parties should consider filing motions to exclude evidence from the IPR.
The final portion of the parties’ involvement is the oral hearing. At the oral hearing, the parties should focus on key points and clarify anything potentially ambiguous in the record.
For both petitioners and patent holders, moving quickly and effectively is critical. As an active firm before the PTAB, we are ideally positioned to work with you to quickly create an effective and comprehensive strategy that takes into account IPRs and related litigation. Regardless of which side of the patent dispute you’re on, Knobbe Martens may be able to assist you.
Knobbe Martens. IP for a New Age.