Winning Strategies at the PTAB, Part II: 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 articlePTAB 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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12 comments so far. Add my comment.

  • [Avatar for George]
    George
    June 3, 2024 03:18 pm

    Just have AI decide now!!! Would do a much better and 100% consistent job! Replace most examiners & judges! They can’t do this anymore – way too complicated and way too much information out there (including case histories). Humans can’t do through examination and analysis in the 21st century! Just not possible if it’s to be fair and unbiased. So, perfect job for AI!

  • [Avatar for George]
    George
    May 30, 2024 10:33 pm

    The USPTO is now run like a private business, catering solely to its best paying, most loyal and most powerful ‘customers’, who don’t like ‘upstarts’ and the competition they might offer. The USPTO knows who butters its bread and who pays for all their salaries and its not small entities, much less ‘micro-entities’. They no longer care those ‘little guys/gals’ who pay much less for the possible (but unlikely) ‘honor’ of getting a patent from them, especially a strong and enforceable one! The PTO, the AIA and the PTAB are just other ‘tools’ of big business, used to keep ‘upstarts’ in their place and prevent them from competing in the marketplace of new ideas and products.

    The above ‘much needed’ advice is just more evidence of this and also clear proof that ‘logic alone’ won’t work anymore at the PTO! It now requires ‘extreme cleverness’, ‘tack’ and maybe even ‘legal genius’ to survive a PTAB review. Just providing facts, convincing arguments and economic reasons to support a patent is no longer sufficient.

    It’s clear (and even provable in a court) that the USPTO (and Congress) just DON’T GIVE A DAMN if many American inventions never see the light of day here, and instead are allowed to be freely handed over to, developed and commercialized by China, who can then proudly declare them as ‘their inventions’ and then sell them back to us at a substantial profit!

    Who came up with this INSANE ‘new world’ of NON-IP or FREE-IP? Who devised such a STUPID set of ‘disincentives’ to American innovation and why didn’t the Founders do it first if it was such a great idea? Who do our now ‘draconian’ IP policies and ‘nefarious’ PTAB decisions benefit? Large US companies? Multinational monopolies? China? Certainly NOT American inventors, who now face ‘extinction’ rather than being highly valued by society, encouraged, financially supported and protected by the same country they pay taxes to. A country that now effectively just ‘gives away’ American IP to other countries, as it tries to protect its existing large corporations and monopolies, who don’t believe they should ‘have to share their wealth’ with others!

    American innovation is all a big fiction now, foisted on would-be inventors and dreamers who’d at least like ‘a real chance’ of becoming the next Edison or Tesla or Bell, even though that can no longer happen anymore (especially post-AIA)! Patent ‘protection’ is not even a real thing anymore, unless maybe you are lucky enough to already be extremely wealthy (but even that didn’t help ‘Hyatt’ any)!

    For most, inventing and ‘trying to get’ GOOD and ENFORCEABLE patents issued on those inventions, is just a BIG SCAM now. The ‘little guy’ will never again be ‘allowed’ to become rich or compete with big corporations, with a single or even many inventions and patents. And, even if allowed, the patent or patents they might be lucky enough to get will all be legally and commercially worthless. Patent lawyers know this but ether don’t have the heart or desire to tell inventors that, can’t ethically do so, and also isn’t in their financial interest to tell them that.

    American inventors are just being bankrupted now and relegated to the dustbin of history. They are much better off going to Vegas or ‘investing in’ Bitcoin instead of becoming inventors and going bankrupt that way. At least with the former you can have a lot more fun with $15K-$20K, while not having to waste your life and money on unproductive efforts, such as inventing new things.

    Only existing large corporations are will be allowed to innovate (or not) in the future. You can work for them, but you won’t be allowed to compete with them – at least not in America anymore. The USPTO will also not allow you – as a small entity – to become wealthy or obtain any power over other larger companies anymore! The PTO is no longer in the business of “making big companies out of small companies”.

    This is exactly what the rich and powerful corporations wanted, paid for, and got in the AIA! They wanted to essentially ‘buy’ and ‘own’ the USPTO and Congress gave them what they wanted. They now effectively run it and dictate what changes can and can’t be made to US IP law and also how those laws are to be interpreted and decided (to their benefit of course).

  • [Avatar for George]
    George
    May 30, 2024 02:20 pm

    You shouldn’t have to become a legal ‘contortionist’ in order to be able to defend a patent and its claims before a ‘real’ court! The PTAB is NOT a ‘real court’. Its judges are paid by the USPTO. So it can’t possibly police itself or the decisions made by the PTO. This requires an independent body not being compensated by the same organization that is being asked to be judge itself. That’s just ‘stupid’ and invites corruption.

  • [Avatar for George]
    George
    May 30, 2024 02:14 pm

    When the USPTO finds ‘excuses’ to ‘successfully deny’ a patent at the PTAB, or as a result of just frustrating inventor into abandoning an application (especially following MULTIPLE search efforts in order to raise new 103 objections) then those ‘America inventions’ just end up going to China – for FREE!

    What kind of a STUPID innovation and economic policy is THAT and does anyone in Congress or at the USPTO even care??? And why do rejections ‘mainly apply’ to the inventions of small entities, startups and in particular the inventions of ‘women’? Does anyone in our government even have a clue anymore? Where’s the economic logic of THAT? Where do ‘new jobs’ and ‘competition’ originate from? Companies can’t create new jobs, if they can’t get ‘good’ and ‘enforceable’ patents anymore! That’s just common sense that the PTAB and Congress doesn’t CARE ABOUT?!!! Yikes!

    Why haven’t attorneys sought to point all this out and taken action to have the courts look into abuse of 103 for the purpose of denying ‘valuable patents’ that already disclose valuable new products and technologies that can then be exploited by China and other countries – for free! And, there still needs to be a full investigation (including by the FBI) into how the ‘super secret’ SAWS program came about, ‘who authorized it’ and what has now (secretly) replaced it. I believe ‘intentional misuse’ of 103 has replaced it, since it is so easy to ‘concoct’ obviousness objections now and to invent a ‘Magical POSITA’, especially in an effort to protect large corporations & monopolies from competition! It is pretty clear that the USPTO answers to and is in bed with these large corporations, ever since it became self-funded (i.e. run like a business) rather than publicly funded like the PTO used to be. Hasn’t anyone else noticed this?

  • [Avatar for OneVision]
    OneVision
    May 29, 2024 01:45 pm

    Messrs. Schreiner & Close: I echo others’ praise of your piece. Thank you for sharing your useful information and views.

  • [Avatar for Pro Say]
    Pro Say
    May 29, 2024 10:33 am

    Excellent, useful post guys — thanks.

    Any reason why you didn’t also discuss just telling the PTAB “judges” that they’re full of you-know-what? Even when they clearly are? Even when they yet again show their corporate bias by finding against the inventor and in favor of the Big Tech / Big Corp challenger? Even then?

  • [Avatar for George]
    George
    May 28, 2024 11:02 pm

    There won’t be anymore ‘patent owners’ soon, except large corporations and monopolies. Their goal is to wipe out as much competition as they possibly can, especially originating from small ‘upstarts’ and wannabe big companies. They hope to permanently wipe out those ‘annoyances’ by driving them into bankruptcy, if necessary, with the cooperation of Congress and the USPTO.

    The Ford Motor company used to have a (very cynical) saying when they wanted to justify ‘tricking’ and ‘enticing’ a small company into revealing their secrets to them (without a NDA). It was along the lines of pump’em and dump’em: “We’re not in the business of making big companies out of small companies!” I think they still do it if they can get away with it. So, I guess, never be naive when going to pitch to the Ford Motor Company! They’ll eat you alive! I think Edison used to do that too! In fact Edison totally lied to and defrauded Nicola Tesla when he worked for him! Tesla swore never to work for anyone else again!

    Why are creative people always exploited? Anyone have an answer for that?

  • [Avatar for George]
    George
    May 28, 2024 10:44 pm

    Let’s face it, the AIA and PTAB is now just a recipe for total destruction of innovation, international commerce and competition both in America and around the world! Nothing can really be protected anymore, especially from China. That’s why we’ll NEVER allow publication of our applications UNLESS we get ‘strong’ and ‘enforceable’ patents as a reward for disclosure (as ‘promised’ in the Constitution)! We don’t just ‘give away’ our inventions or allow them to be wrestled away from us using ‘dirty tricks’ ‘that somehow are approved by Congress, the PTO and the PTAB! Why would we do that? That’s just insane and stupid! No entrepreneur, much less VC or other investor would allow doing that (unless they were as rich and powerful as Elon Musk who can develop products so fast, that patents are completely outdated for him). By the time Musk could get a patent, he is already first to market and has already dominated it with a new product that no one else can possibly compete with (such as Starlink).

    And China WON’T do things this way, either. China will kick our butts in innovation and IP too! Ironically, they might even adopt a system more like our original one, since it worked so well for us in the beginning and resulted in the Industrial Revolution. That would also be the ultimate insult to America! China could then brag about how many ‘Nicola Teslas’ it has produced, while the U.S. would no longer have ANY left (thanks to U.S. monopolies and the PTO driving them into extinction)! Maybe soon they’d even try to recruit talented American inventors and engineers, by offering them huge incentives and free housing to move there. Wouldn’t that be an embarrassing slap in the face to America and its now ‘corrupt’ IP laws and unfair and ‘rigged’ enforcement practices?

    Are you listening China? America no longer cares about its small entity innovators. It’s willing to let them become extinct in order to protect its more wealthy and powerful corporations and monopolies, so they no longer have to deal with them, share the wealth with them, or have to compete with them ever again! Even innovation in America could then be totally controlled by them, with the acquiesce and cooperation of Congress and the USPTO (owned by the same large corporations and monopolies)! Then if they want to slow down innovation or even prevent it, they can. They can then also force consumers to accept what they give them, nothing else. No more Teslas! No more Wright Brothers! No more Bells! Just ‘expendable employees’ that have to sign over any ideas they may have to their employers, in exchange for a paycheck (and nothing more)! Talk about a dystopia that will keep the same powers in power!

  • [Avatar for George]
    George
    May 28, 2024 10:28 pm

    How can any lone inventor afford to protect their patent ‘rights’ if they don’t have the money to do so, even at the PTAB? Does the Constitution say “Then too bad SUCKER, you’re just out of luck and can’t keep your patent rights!” (even though the U.S. government declared that you could – in writing)?!

    So, are we now just back to survival of the ‘wealthiest’ in America, just like it was back in England?” Yeah, somehow I don’t think the Founders had that in mind. And I don’t think they had the AIA in mind either, since the AIA is just modeled on English and European patent law. We’ve lost 17 year term from date of issuance and also ‘First to Invent’. We also lost ‘free’ Interference Proceedings. Should’ve been the other way around, shouldn’t it? Didn’t America have the ‘best’ and ‘most fair’ patent system in the world originally?

    Indeed, isn’t that WHY Nicola Tesla came to the U.S. from Europe in the first place? He wanted patents that would actually protect him and that he could actually enforce and profit from, not just worthless pieces of paper, like he could get in Europe or England! He also didn’t want to have to file 10-50 applications in order to protect a single invention. How much time would that have taken him? Would he even have had the time to invent more than 1 or 2 things had that been the case? And how did he continue to invent and get patents, even when he had little or no money? He ‘couldn’t’ have done that today! That’s obvious. He would’ve just been another ‘failed inventor’ and have been relegated to the dustbin of history, along with 100’s of others.

    Our ‘old’ and ‘original’ patent system worked great. It issued patents on mostly ‘significant’ and ‘valuable’ inventions, not absurd ‘garbage’ patents or patents on minor tweaks to existing technology (like round corners on cell phones or time-release capsules – which no ‘independent’ inventor would ever have been allowed to get)! 90%-95% of current patents would not have been issued under our original criteria for allowance that included PROVING that an invention actually worked as claimed (with the submission of models or samples if necessary to do so)!

  • [Avatar for George]
    George
    May 28, 2024 10:23 pm

    The PTAB can also be ‘extremely expensive’ and not save much money over a ‘real trial’ in the federal courts! Interference proceedings used to also be paid for by the USPTO (unless inventors needed to hire lawyers).

    So how is the PTAB better than prior methods of resolving patent disputes, except that it makes the cost of challenging patents (even multiple times) much less expensive for big companies compared to going to the courts, while still making it prohibitive for most inventors to do so, thereby forcing THEM to just ‘forfeit their patent rights’ or go into bankruptcy. The PTAB won’t even ‘try’ to protect them, despite the PTO being the agency that gave them those ‘rights’. The PTAB can’t speak on their behalf even though the PTO on issuance of patents is indeed asserting that they are in fact valid and enforceable (NOT just legally worthless, seriously flawed, and likely indefensible pieces of paper).

  • [Avatar for George]
    George
    May 28, 2024 01:20 pm

    So basically almost ‘no arguments’ work when dealing with the PTAB, that’s paid for by the same agency that issues patents it considers valid at the time of issuance. Got it! Thanks anyway.

    And you guys don’t COMPLAIN or take legal action against this INSANITY??? The same agency that issues IP rights, can then just take them away?! What’s even ‘logical’ about that, much less legal and constitutional?! Article I, Section 8 says nothing about that! It assumed that all issued patents would be valid and legal rights that cannot be infringed, much less by the same agency that issued them! Who thought of such a STUPID thing?

    At least any examiner and/or their SPE who is found to have seriously erred by the PTAB, should be fired, right? That’s one consequence of a PTAB decision going against an inventor, issued IP rights that are then retracted at a later date! It would also be ‘proof’ of incompetence and negligence, by the examiner and his/her SPE, wouldn’t it? It would be ‘gross negligence’ on the part of an examiner, wouldn’t it? Issuing ‘bogus’ patents??? That’s like issuing ‘fraudulent’ patents, isn’t it? Inventors and investors could lose lots of money as a result of that, right? So where is the accountability for that? Only the inventor gets punished now! The lawyers always make money, win or lose. And examiners keep making money, whether they make good or bad decisions. How’s THAT fair and in keeping with the Constitution?! They should at least get a refund of all they expenses, including legal fees!

  • [Avatar for George]
    George
    May 28, 2024 01:04 pm

    The PTAB is just corrupt and should be eliminated along with the entire AIA! The AIA needs to now be repealed by Congress, who was ‘duped’ into passing it by the large corporations and monopolies that paid for it and WROTE it! It’s a catastrophe and has no place in the 21st century of innovation & IP protection! The PTAB is not a ‘real court’ anyway and has no real power. It can’t even ‘order’ examiners to issue patents, only ‘ask them’ to and can’t even fire incompetent or lying examiners! What kind of ‘court’ is that?! That’s absurd!

    NO INVENTOR should ever seek to take matters to the PTAB for adjudication. It’s a complete waste of time and won’t be fair at all. The PTAB acts as ‘arbitrators’ who are paid for by the USPTO. Who thinks that ‘arbitrators’ employed by a company, will ever side with consumers bringing complaints to them? All arguments with the PTO must go to either an federal court, or as we are now suggesting a STATE court having a PTO office in the state. Any such court must be ‘completely independent’ from the PTO. The PTO cannot police itself! There, claims of ‘fraud’ and even ‘RICO fraud’ can be made against the PTO and its employees, in addition to claims of lying and deceit, maintaining secret ‘illegal policies’, denial of constitutional rights, unfair business practices, unfair competition, intentional infliction of emotional and financial harm, using ‘forced bankruptcy’ as a ‘weapon’ against inventors, interfering with national and international commerce, and many, many other claims as well. You can’t bring such charges to the PTAB, since they are not independent and are paid by USPTO mainly to just ‘back them up’!

    And stay tuned for the first-ever lawsuit brought against the PTO and its employees in a STATE court! May take place in the a few years, as clear evidence of RICO fraud continues to accrue. Will be very hard for the USPTO to escape its conclusions and even sovereign immunity may not protect them, if criminal ‘RICO fraud’ is able to be proven. Then many people could even go to jail for a long time!

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