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Inter partes reviews have a very high institution rate. And worse, once instituted IPRs result in invalidated claims at an inordinately high rate. The best defense against an IPR petition is to convince the Patent Trial and Appeal Board to deny institution. The Mintz IPR team has been very successful in achieving denials of institution for our clients, and we produced and shared a series of Tips for Avoiding IPR Institution. Those tips are listed below and are all linked to the full posts. (You may also be interested in reading our series on Surviving an Instituted IPR.)
Tip #1: Litigation Venue Selection
Tip #2: Focus on a few arguments that will affect all challenged claims
Tip #3: Use Disclaimers Strategically
Tip #4: Don't Argue Facts
Tip #5: Policing KSR's motivation requirement for the 'how' and 'why'
Tip #6: Advocate Claim Constructions the Petition Ignored
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.
