We’ve written before about how patent owners can use to their advantage the mistakes that petitioners make in IPRs. As a petitioner, what can you do to avoid these pitfalls and put together the strongest petition possible? Most importantly, view your petition with a critical eye before you file it. The ability to supplement the case afterwards is highly limited, so anticipate any potential responses from the patent owner, and make your petition bullet-proof by following these strategies.
Prior art: Don’t assume that the Board is going to automatically accept that whatever documentary evidence you submit meets the statutory requirements for prior art. You need to show with evidence that this burden has been met. This may sound like a no-brainer, but cases have been won or lost on this point.
Claim construction: Make sure you have reasonable and supportable claim constructions. If you overreach for a claim construction that’s overly broad, there’s the potential that you won’t have demonstrated that the prior art meets the claim when properly construed by the Board.
Litigation: In litigation, it’s common for patent owners to take very broad, aggressive positions about the claims of their patent covering the nature of the defendant’s products, so exploit those positions. If you show the Board that the patent owner has construed a term in litigation to cover specific subject matter, the patent owner will not be in a position to say that the position they took is unreasonable, and the Board should be willing to interpret the claim at least that broadly in reading it onto the prior art.
Expert declaration: Avoid situations where a lawyer has written a report that his or her expert hasn’t fully digested and can’t fully defend. The expert needs to be fully comfortable with the substance in the report. To that end, we think it’s a good idea to annotate expert declarations. That way, when the expert is challenged on a specific point, he or she can look back at and defend those positions—allowing for much better performance during deposition.
Ordinary skill in the art: There’s an instinct to say that the level of ordinary skill in the art is high—because the higher the level of skill in the art, the more likely it is that subject matter is obvious—but be conservative. If you take an aggressive position about a very high level of skill and the Board does not agree with you, all of your expert’s conclusions and opinions are at risk. Pick a level of skill in the art that the expert will be comfortable defending and that you can get the Board to adopt.
Redundancy: If you offer up multiple grounds attacking the same claim, the Board has very often considered grounds to be redundant. As a result, it may pick one ground and refuse to institute on the others. Despite a recent decision in which a petitioner used redundancy to its advantage, this is usually a situation to be avoided. If you offer multiple grounds, proactively explain to the Board why they are not redundant.