United States: IPR Proactive Defense Measures – Strategies And Considerations For Patent Owners

Many patent owners have not yet had to defend against an inter partes review (IPR), but the popularity of this proceeding increases the chances that they will encounter it down the road if they have not already faced one. This article explores IPR proactive defense measures that may be useful for patent owners to deploy in advance of facing an IPR.

Defense Starts With a Sound Patent

Few patent owners would be pleased to learn that a petition for inter partes review (IPR) has been filed against one of their prized patents. Crafting a robust portfolio of IP protection around a given product can help patent owners be prepared to respond to the news that their patents are being challenged.

According to the latest statistics available from the USPTO, more than 1,500 petitions for inter partes review (IPRs) were filed in fiscal year 2015 and roughly 80% of the patents involved in these petitions were also involved in co-pending district court litigation.

The Patent Trial and Appeal Board (PTAB) has a different standard of review from district court, and it is important for a patent owner to remember the standard of review under which their claims will be analyzed in the event that a petition is instituted.
The PTAB reviews claims under the "broadest reasonable interpretation" standard, which means the PTAB will stretch the metes and bounds of a claim with disputed terms to its practical limits, and broadly interpreted claims can be problematic for a patent owner when validity is being tested. One option to address this problem is to try to define any potentially disputable claim terms in the specification of the patent, and taking extra care during prosecution to avoid ambiguity in claim language.

While encouraging careful application drafting and prosecution may sound self-evident, a surprising number of practitioners do not approach the drafting process with defense in mind. This can lead to unintended interpretations of claim terms that are either too limiting for enforcement or too broad for validity defense. Either mistake can lead to a situation in which the intended scope of the patent is inconsistent with the literal language of the claim. Ensuring that the patent owner is afforded the interpretation that it envisioned, rather than allowing the PTAB to construe the claims in an unintended light, is of paramount importance to surviving an IPR attack.

Moreover, the evidence of record in the prosecution can also be used to the patent owner's benefit. Although recent rule changes allow a patent owner to submit new expert evidence with its patent owner preliminary response (POPR) (see “USPTO Releases New Rules for AIA Proceedings”), practically it is very difficult to produce new expert evidence prior to the three-month statutory deadline for filing a POPR. But if the patent owner has previously produced expert testimony or objective evidence during prosecution of the challenged patent or in a related patent, it may be useful for bolstering the patent owner's claim construction in the POPR, if it does not prevent IPR from being instituted in the first instance.

Given the PTAB's high cancellation rate of instituted claims, the old adage "an ounce of prevention is worth a pound of cure" is apt in preparing for an anticipated IPR attack, as a "cure" can be difficult to find if the claims are construed unfavorably.

Use Continuation Applications to Keep Competitors Guessing

A strong defensive portfolio should not depend on a single patent, regardless of how clearly and painstakingly the specification and claims are drafted.

It is always good practice to maintain a pending application in any commercially valuable patent family. Although the option to amend the instituted claims in an IPR is theoretically available, to date the PTAB has only granted motions to substitute claims in four cases. Thus, having an alternative mechanism for pursuing a different claim scope is key.

Continuation practice is one such mechanism, and it allows the patent owner to pursue claims that are patentably distinct from those at issue in a post grant proceeding while the PTAB decides the fate of the instituted claims. Furthermore, having a pending related application at the USPTO during review of a related patent by the PTAB allows the patent owner to consider the cited art and craft claims to explicitly avoid the assertions in the post grant proceeding. This allows the patent owner to pivot to a fallback position and potentially maintain protection of a commercialized product even if the instituted claims are canceled.

Keep Reissue In Mind

As discussed above, the PTAB has rarely granted motions to substitute claims. In case certain claim amendments are needed to hedge against the risk of invalidity, while the patent family under IPR attack has no pending application, the patent owner should consider filing a reissue application to achieve the necessary claim amendments. In this regard, the Federal Circuit has recognized that “adding dependent claims as a hedge against possible invalidity of original claims is a proper reason for asking that a reissue be granted.” In re Tanaka, 640 F.3d 1246, 1249 (Fed. Cir. 2011). The patent owner can even broaden the issued claims in one or more aspects if the reissue application is filed within two years of the issuance date of the original patent.

Unlike in an IPR where a patent owner can file only one motion to amend and carries the immediate burden of showing patentability of the amended claims over all known prior art, a reissue applicant has a right to amend claims prior to a final office action. A reissue applicant also has the flexibility of filing a request for continued examination (RCE) or even a continuing or divisional reissue application, if additional claim amendments are desired. For these reason, a patent owner should keep reissue in mind when preparing for anticipated IPR filings.

Carefully Weigh the Benefits of a POPR

Prior to institution, the patent owner only has one chance to present arguments to the PTAB regarding why the petition should be denied. Submission of a POPR is optional, but if a patent owner wants the petition to be denied, it should likely file a POPR. In approximately 90% of the petitions that are denied by the PTAB, the patent owner submitted a POPR, thus underscoring the importance of this single chance to argue against institution.

However, in certain situations, a patent owner may have an incentive to refrain from preparing a POPR and waive the right to file. For example, the estoppel effects of post grant proceedings are only tied to final written decisions. Even if a petition is instituted, a settlement between the parties will allow another third party to attack the same patent using the same art. Thus, if a patent owner believes that it has a good chance of succeeding on the merits of a case, then it may want to allow institution of the proceeding and pursue a final written decision that would prevent the petitioner and any other would-be petitioners from repeatedly attacking the patent.

Alternatively, the patent owner may decline to file a POPR in order to maintain the element of surprise. One drawback of filing a POPR is that if the proceeding is instituted, the patent owner has given the petitioner a six month head start on developing arguments to counter the patent owner's substantive assertions. If, on the other hand, the patent owner waits to file its substantive response until after the proceeding has been instituted, then the petitioner has a fraction of the time to react to the arguments and develop counterarguments. Of course, the patent owner could always avoid substantive arguments in the POPR and instead rely solely of procedural arguments for why institution should be denied and save the substantive arguments for post-institution.

Of course, sometimes the decision may boil down to concrete considerations like budget. If a patent owner is trying to minimize expense, then foregoing an optional preliminary response if an easy, albeit undesirable, place to start. But the patent owner should consider that while refraining from filing a POPR prevents some short-term spending, it is cheaper for the patent owner in the long run to prevent institution altogether.

Monitoring and Competitive Intelligence

Many services are available to keep track of IP litigation as well as patent application publications and grants. These monitoring services can help patent owners to keep an eye on major competitors. For example, a patent owner can receive automated updates for patent portfolios of interest. Monitoring services further allow patent owners to keep track of their competitors' activities in court and before the PTAB. Such information can help a patent owner avoid being caught off guard by an aggressive competitor.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions