IPR proceedings are a risky proposition for patent owners. Statistics provided by the USPTO show that, as of August 2, 2014, the Board has upheld only 30% of the claims challenged in all completed IPR proceedings. In four recent cases (IPR2013-00133, IPR2013-00139, IPR2013-00137, and IPR2013-00138), however, the Patent Owner successfully defended all of its claims. We analyzed these IPRs to identify what approaches patent owners might use to increase their chances of success.
1. Raise the Best Arguments Early. The Patent Trial and Appeal Board appeared to respond favorably to the parties raising critical issues and coming forward with the best arguments early in the proceeding. The Board may not ultimately agree with every contention, but raising and arguing issues as early as possible could place a party in a more favorable position.
For example, in these four cases, the Petitioner did not provide an explicit construction for a critical claim term, "repository." Although the Petitioner saw the meaning of the term as a potential issue, it failed to provide an interpretation that would be favorable to its position in its petition.
The Patent Owner, on the other hand, argued a construction for "repository" in its Preliminary Response, contending that the term should be construed in a particular way, and relying on the specification to support the proposed interpretation. Although the Board rejected several contentions of the Patent Owner regarding the interpretation, it ultimately adopted part of the Patent Owner's interpretation, placing the Patent Owner in a more favorable position.
2. Attack Weak Inherency Arguments. The Board appeared to show restraint in applying weak references in invalidity arguments based on inherency. Here, the Board rejected the Petitioner's argument based on inherent disclosure and held that the claim element at issue must be necessarily required by the teaching of the reference in order to establish inherency. Mere probabilities or possibilities are insufficient to establish inherency. Patent owners could benefit by pointing out shortcomings in both the reference and the Petitioner's arguments attempting to show inherency.
3. Carefully Craft Expert Declarations. In these IPRs, the Board found that the Declaration by the Petitioner's expert was inadequate. First, the Board concluded that Petitioner's expert was not credible because the facts cited by the declaration did not support the conclusion of the declaration. Second, the Board held that the Petitioner's expert declaration was tenuous, because it failed to affirmatively state that the structure in reference is the element required by the claim, as interpreted by the Board. Both parties would be well advised to attempt to identify what arguments will ultimately be required to support their case, and be certain their expert's declaration are explicit on these points.
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