As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind - from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your sur-reply. The Mintz IPR team authored the "Patent Owner Tips for Surviving an Instituted IPR" series to provide valuable practice insights from institution forward. In the summary below, we provide key takeaways from throughout the series. All 19 tips can be read on Mintz.com here: Surviving an Instituted IPR. (You may also be interested in reading our series on Avoiding IPR Institution.)
Seeking Additional Discovery
Tip #11: Use It or Lose It (in the POR)
Motions to Amend
Tip #13: When to Amend Claims in an IPR
Tip #14: When Not to Amend Claims in an IPR
Tip #15: Procedure for Motions to Amend
Defending Depositions of Declarants
Tip #18: Defending Depositions
Tip #19: Sur-Reply Strategies
See the full series of Tips for Surviving an Instituted IPR, from depositions to Sur-Replies, here on Mintz.com.
We hope you find these strategies to be practical and helpful for navigating instituted IPRs. As always, the Mintz Intellectual Property team is happy to discuss further or assist in any of your IPR needs.
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.