Inter Partes Review (IPR) is emerging as an attractive alternative for invalidating United States patents because it is seen to offer cost and strategic advantages when compared to district court litigation. Instead of having to address competing issues simultaneously and dealing with a crowded docket, the IPR process allows a challenger to obtain an invalidity decision, on a defined schedule, from a panel of patent law experts narrowly focusing on a small set of documents.
To begin the review process, the Patent Trial and Appeal Board (PTAB) requires the challenger of the patent to submit a petition. You should view the petition strategically, as it will not only start the review but also be key to invalidating the patent.
The following tips can help ensure that your petition will start the review on a path towards invalidity of the patent.
1. How good is your prior art?
An IPR petition will be evaluated by someone with a technical background. Not only are they technically savvy, but PTAB judges also have extensive experience evaluating patents and prior art references. It should be assumed that they will carefully read each of the prior art references when evaluating the petition, rather than relying on your summary of the reference or an expert’s discussion.
So, it behooves you to consider the strength of the prior art reference. Does it meet each element? If there is uncertainty, consider whether an obviousness attack with a secondary reference will provide a stronger basis for initiating review than an arguable anticipation position. If launching an obviousness attack, what are the reasons for combining references?
More important, consider the weakness of each prior art reference. Are there aspects of the reference that are incomplete? Are the aspects of a reference inconsistent with discussions in other references? How would you attack a petition that relied on these references? How do you plan to deal with secondary considerations of obviousness that the patent owner may rely on later in the case?
The content of the petition should reflect a balanced evaluation of the references, as a petitioner does not have the opportunity to revise and recast arguments before the petition is decided. On the other hand, the patent owner will have an opportunity to comment on the petition (37 C.F.R. § 42.107).
