Patently Strategic Podcast – PTAB Survival Guide
The worst thing that can happen to an owner of a patent is receiving a petition for inter partes review. This is a tool accused infringers use to invalidate a patent. They have an alarming effect. As we have discussed, the Patent Trial and Appeal Board’s (PTAB) kill rate is staggering. The Patent Death Squad, or PTAB, as it is more commonly known to regular listeners, has a claim execution percentage north of 84%. This means that thousands of valid patents have been killed by infringers who want to profit from innovations in which they did not invest. While we continue to work on reform, we must also deal with the reality of the world and create the best possible patents. So we’re dedicating Part 2 of our series on patent quality to creating a guide for how to help IPR-proof your patent – things you can do when you write and prosecute patent applications before an examiner to maximize the likelihood that the resulting patent will survive the IPR that it will eventually experience if it’s a valuable patent.
Drafting and Prosecution Pointers to Help Survive an IPR
Outside of building awareness, lobbying representatives, and voting accordingly, there’s not much we can do as practitioners and inventors when it comes to PTAB injustices like panel stacking, conflicts of interest, ethical codes, evidentiary standards, standing requirements, and serial petitioning. While there’s little that can be done to help those who have already lost their rights, understanding the rules and reducing invalidation surfaces can go a long way in increasing your chances of surviving an IPR. Guest Host: Matt Phillips
Matt Phillips, an experienced patent attorney, is a teacher and has a wealth of experience from both sides of IPR. His practice focuses primarily on post-grant procedures, including review proceedings before the PTAB and reexaminations. Matt says that post-grant proceedings have accounted for about 80% of his work over the past 10-15 years. He also taught the “Post-Grant Patent Practice”, a course for Patent Resources Group, for 11 years. He is the co-author of two-volume treatise with the same title. Matt has been an adjunct professor at law schools. He has published over 40 articles on post-grant patent topics and has been an invited speaker around the country and internationally on post-grant topics.
Episode Overview: Quality Patents Part 2
Building nicely on so much of the framework established by Kristen Hansen in the prior episode of this series on crafting quality patents, Matt and the panel discuss:
What the PTAB is, its two primary functions, and what IPRs are
Why Matt thinks we need to reevaluate assumed best practices that were established pre-America Invents Act (AIA)
- Matt’s Top 10 (11) Prosecution Pointers to Survive an IPR
- Best Practices Paradigm Shift
- Some of these tips will seem unnatural and contrary to conventional wisdom. Matt’s Top 10 (11) Prosecution Pointers to Survive an IPR
Best Practices Paradigm Shift
Some of these tips will seem unnatural and contrary to conventional wisdom. But times have changed. The AIA brought about a sea-change in the way that patents are enforced. You are doing your clients a disservice if you haven’t adapted your patent prosecution and drafting practices accordingly. Old “best practices” are no longer always valid. The old “best practices” always aimed for claim breadth, and a record that preserved breadth. But that was premised on an assumption that an accused infringer would seek an “early out” of litigation by seeking summary judgment of noninfringement based on a narrow claim construction.
Today, however, page one of every accused infringer’s playbook is to seek an early, cheap “out” by promptly filing an IPR petition at the PTAB and a motion for stay at the district court. Why? Because the PTAB judges are able to determine unpatentability with a simple preponderance. They are also comfortable in finding claims obvious, and are skeptical of secondary considerations. You now need to obtain patents with that in mind. You now need to obtain patents with that in mind.
Matt’s Prosecution Pointers to Survive an IPR
For the complete heretical context and justification, you’ll have to listen to the episode, but the following is a brief overview of Matt’s Top 10 … or rather 11 with the bonus because, as Matt says, “Like that amplifier in Spinal Tap, my list goes to 11”.
- Conduct thorough pre-filing prior-art searches.
- Include claims, claims, claims, and more claims.
- Draft a crystal-clear, super-detailed specification that unquestionably satisfies 35 U.S.C. SS 112(a).
- Draft the application as if the claims as granted are set in stone and will be interpreted under the broadest reasonable interpretation, not just Phillips.
- Consider defining some claim terms.
- Consider using some “patent profanity.”
- Consider telling the story of the invention.
- Build an evidence-laden prosecution history.
- Keep a continuation or divisional pending.
- If no continuation is possible, consider reissue.
- File for and obtain foreign patents.
Discussion Panel
Matt is joined today by our always exceptional group of IP experts, including:
Mossoff Minute: Injunctive Relief Studies
In this month’s double-feature Mossoff Minute, Professor Adam Mossoff discusses a pair of recent studies featuring significant statistical analysis empirically proving that there are fundamental issues with the patent system when it comes to obtaining injunctions to stop infringers from stealing IP. A 2006 SCOTUS ruling created a new standard for receiving injunctions. This claim has been confirmed by a new study conducted by Kristina Lybecker, a professor at Colorado College. The study was based on a rigorous statistical analysis. Since the eBay decision, patent holders who license their patents have seen their ability to get injunctions reduced by 91.2% (even manufacturing companies saw a reduction in 66.7%). Adam also discusses the history of the four-factor tests that the Supreme Court incorrectly used in its decision which sent injunctive remedies into their current death spiral. The bill was sponsored by Senator Chris Coons and Senator Tom Cotton. Representative Nate Moran and Representative Madeleine Dean also endorsed the bill. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok
- Related Listening and ReadingTo further explore the topics discussed, see the following past episodes and resources:
- Crafting Quality Patents. Part One in our Patent Quality series focusing especially on drafting.
Patent Wars: Innovators. Revolutionaries. And The Race to Reform.
A deep dive We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok
Related Listening and Reading
- To further explore the topics discussed, see the following past episodes and resources:Crafting Quality Patents.
- Part One in our Patent Quality series, focused especially on drafting.Patent Wars: Innovators, Revolutionaries, and the Race to Reform.
- A deep dive into the problems plaguing the patent world. Topics include eligibility, enablement, injunctions, and the patent troll myth.American Inventor Horror Story.
- A breakdown of the consequences of AIA and the PTAB through a wide array of personal perspectives from inventors, patent practitioners, and a former USPTO patent examiner.Patent Anatomy: What’s in a patent?
- Deep dive guide into the parts of a patent and how they connect.Patent Claims: The Name of the Game.
- Part one of our claims series, discussing the basics of claims and claim strategies.Claim Construction: Building Strong Patent Foundations.
- Part two of our claims series, laying down the essentials of claim construction.CAFC Chronicles: Costly Tales of Claim Construction Fails.
- Part three of our claims series, analyzing key takeaways from CAFC cases with serious claim construction mistakes.Patent Profanity Dictionary.
- Our new guide for avoiding the use of certain words that can limit the scope of a claim or alter the meaning because of their use of absolute phrasing or terminology.Sleuthing Your Way to Stronger Patents.
An overview of patent searching and practical tips from an industry expert.Josh Sloat[…see more]
Josh Sloat is an Executive Technology Advisor at Aurora Consulting. He provides patent consultation in the software, telecommunications and information technology spaces. With over 15 years experience in engineering Matt Philips[…see more]
Matt Phillips is a founder partner at Laurence & Phillips IP Law. The firm has been recognized by US News & World Reports on multiple occasions as one of the top 01001010
