Common Pitfalls That Patent Owners Should Avoid
“When making oral argument, listen for judges that may be steering your argument into one of these pitfalls. Don’t take the bait.”
Part I of this article discussed how the Patent Trial and Appeal Board (PTAB) is a very different tribunal from district courts. It is a venue where fact and issues of law are decided by technical specialists, who are also highly trained in patent law, instead of lay judges and juries. It also discussed the formidable challenge presented to patent owners by the PTAB, where inter partes review (IPR) institution rates are about 67% and final written decisions find all challenged claims unpatentable up to 70% of the time. Part II will discuss strategies that give patent owners a better chance at successfully navigating the IPR process.
Arguments to Avoid (Or at Least to Think Twice About)
Weak arguments undermine a patent owner response in two ways. They can dilute and distract from strong merits arguments, and they can undermine your credibility. Here are some examples:
- Teaching away: Although this is a common practice in prosecution, arguments that something in a reference or in the art teaches away from a combination rarely succeed at the Board. Even the disclosure in a reference that a given course of action is not preferred does not negate obviousness. See Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)
- Hindsight reconstruction: A stand-alone argument that the proposed combination is an exercise in impermissible hindsight reconstruction, without more, will rarely persuade the Board. Hindsight reconstruction can be effective if it can be paired with strong arguments and supporting evidence of reasons why a person of skill in the art (POSITA) would not combine the references as proposed.
- Non-analogous art: Arguments that references cannot be combined because they are non-analogous art rarely succeed, especially in the predictable arts. The standard is that prior art is analogous if within the same field of endeavor as the invention, or it is pertinent to the problem being addressed by the invention. See Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023).
- Arguing references individually: Arguments on missing limitations must be framed in terms of the combination of references that is proposed. If the argument enumerates the deficiencies reference by reference, the Board will dismiss that as an improper attack on the individual references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
- Combination brings disadvantages: An argument that the proposed combination would bring about some disadvantages or drawbacks will rarely win the day. The Board will cite case law that a given course of action often has simultaneous advantages and disadvantages, and the existence of some disadvantages does not negate obviousness. See General Electric Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1349, 1351 (Fed. Cir. 2020); Medichem S.A. v. Rolabo, S.L., 437 F. 3d 1157, 1165 (Fed. Cir. 2006).
Frame Your Argument to Avoid the Traps
While the examples discussed above are identified as weak arguments, it is often a question of how the argument is framed. For example, when arguing the ground does not meet a limitation, be sure to point out that the combination is missing the limitation, not merely that the individual references do not disclose it. Instead of arguing the references cannot be physically combined, argue that combining the references would produce an inoperative device or violate a principle of operation of one of the references. Also, when making oral argument, listen for judges that may be steering your argument into one of these pitfalls. Don’t take the bait.
Formulating and framing your arguments with these considerations in mind will help give your client the best chance at getting claims confirmed.
Positioning for Success
The PTAB was something of an unknown quantity when the first IPRs were filed in 2012. The nearly 12 years of decisions from the PTAB and opinions from the Federal Circuit since that time provide some reliable guidelines on how to proceed.
Patent Owner Preliminary Response (POPR): The preliminary response should focus on discretionary denial arguments and, sometimes, one or two strong merits arguments that apply to all challenged claims so there is an opportunity for denial of institution. The “save your powder” adage applies—do not present all merits arguments at the preliminary stage.
The potential discretionary denial arguments include:
- Section 325(d) argument that a prior proceeding already addressed the same or substantially the same prior art and/or arguments. See Beckton, Dickinson v. Melsungen (PTAB 2017, prec.); Advanced Bionics v. MED-EL EG (PTAB 2020, prec.).
- The petition is an unfair serial petition filed by the petitioner or the petitioner and a party having a “significant relationship” with the petitioner. See General Plastic v. Canon Kabushiki (PTAB 2017, prec.); Valve v. Electronic Scripting (PTAB 2019, prec.). But see April 19, 2024, Notice of Proposed Rulemaking (narrowly defining “serial petitions” and limiting “significant relationship” to real-parties-in-interest and privies of the petitioner).
- The institution of trial would be an inefficient use of the Board’s resources because 90% of the claims are patentable (i.e., do not meet the “reasonable likelihood” threshold). See Cultec v. StormTech (PTAB 2017, inform.); Chevron v. Infineum (PTAB 2018, inform.); Deeper UAB v. Vexilar (PTAB 2019).
- Fintiv argument that it will be inefficient to institute when a parallel district court proceeding will decide validity before the PTAB. See Apple v. Fintiv (PTAB 2020, prec.); Sotera v. Masimo (PTAB 2020, prec.). But see June 2022 Fintiv Guidance Memo from Director Vidal.
If the grounds in the petition rely on non-patent documents, consider challenging whether those references qualify as “printed publications.” The fact that a document was available on the Internet is insufficient “because ‘public accessibility’ requires more than technical accessibility.” Acceleration Bay, LLC v. Activision Blizzard Inc. (Fed. Cir. 2018). Thus, the petitioner’s submission of a declaration from the Internet Archives showing that the document was available on the Internet is not itself sufficient. A printed publication requires a showing that the reference was sufficiently disseminated (actual distribution) or was sufficiently accessible such that a person interested in the subject matter could locate the reference exercising reasonable diligence. See Acceleration Bay; Blue Calypso, LLC v. Groupon, Inc. (Fed. Cir. 2016); In re Cronyn (Fed. Cir. 1989).
Patent Owner Response (POR): The patent owner response should present arguments on the merits, starting with the strongest ones. The lead arguments should preferably focus on missing claim limitations. It is more challenging to prevail on motivation to combine. It is even more difficult to prevail on an argument that the petitioner has failed to demonstrate a reasonable expectation of success, especially in the predictable arts. See Elekta Ltd. v. Zap Surgical Systems, Inc. (Fed. Cir. 2023) (a reasonable expectation of success finding can be made implicitly, unlike a reason to combine, which requires an explicit analysis).
The patent owner should avoid the common practice in prosecution of focusing on the independent claims and providing little to no argument on dependent claims. In IPRs, the Board will give meaningful review of dependent claims if you make the argument.
The patent owner response should anticipate the arguments and additional evidence that the petitioner will present in reply to the patent owner response. This makes it less likely that the Board will find that the patent owner is presenting improper new arguments on sur-reply. It also mitigates the fact that the petitioner can submit new evidence on reply, but the patent owner cannot do so on sur-reply.
Experts: The patent owner should consider engaging an expert before the preliminary response, if that is feasible. Engaging the expert earlier enables IPR counsel and the expert to work independently and collaboratively to formulate and develop arguments in defense of the challenged patent.
It is critical that experts understand the key issues in the case, including claim construction, before they sit for deposition. Many a case is lost because an expert makes a statement during cross-examination that contradicts the party’s position on claim construction or how the claim reads on the prior art. More often than not, final written decisions of the PTAB include a citation to an admission made by one party’s expert in deposition.
Experts also need to be prepared to “just say no.” Absent unusual circumstances, the expert’s opinions should be viewed as confined to the expert declaration. The expert should decline to give new “on-the-fly opinions” in deposition and be prepared to explain that new opinions require time and careful study, which is typically not feasible in a deposition.
The expert should be prepared for deposition with the understanding that the objective is not to score points but is to avoid damage. It is a win for the expert to finish the deposition without the taking party having undercut the expert’s opinions in the declaration or otherwise elicited testimony that casts doubt on the expert’s credibility.
Closing Thoughts
The PTAB is an alternative to district courts for litigating validity, but it is a forum with very different decisionmakers for questions of fact and ultimate questions of law. There is now a substantial body of experience with the PTAB, which can be used by petitioners and patent owners to formulate their strategies to have the best chance for success.
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Author: ivelin
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Stephen Schreiner
Stephen T. Schreiner is a partner in Carmichael IP. He focuses on all aspects of intellectual property law, including: patent litigation, Inter Partes Reviews and other post-grant proceedings, patent portfolio […see more]
Brad Close
As the Executive Vice President of Licensing and Transactions at Transpacific IP Group Limited, Brad Close adds to the strength of the transactions team with his years of experience on patent […see more]
