Patently Strategic Podcast: PTAB Survival Guide

The most terrifying thing that can happen to a patent owner is receiving an inter partes review (IPR) petition. This is a tool that accused infringers can use to invalidate patents. And they have … to alarming effect. As we’ve discussed, the kill rate at the Patent Trial and Appeal Board (PTAB) is staggering. The PTAB – or, as regular listeners of this audience more commonly know it, the “Patent Death Squad” – has racked up a claim execution rate north of 84% and the death of thousands of valid patents at the hands of infringers looking to profit from innovations they didn’t invest in to create. This is an institution that is clearly out of balance and screaming for reform.

And while we continue to diligently work toward those necessary reform solutions, we also have to deal with the world as it is and craft the highest quality, most future-proof patents possible. 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. And while there is less that can be done for those who’ve already lost their property rights, knowing the rules of the game and reducing invalidation surface area for those currently in the drafting and prosecution stages can go a LONG WAY to increasing your odds of patent survival down the road. To help author this important guide, we’ve enlisted the help of someone who’s spent considerable time in the belly of the beast, successfully representing both petitioners and patent owners.

Guest Host: Matt Phillips

Matt Phillips is an experienced patent attorney and educator who draws from a deep well of real-world expertise built from both sides of the IPR table. His practice focuses on post-grant proceedings, including review proceedings at the PTAB, reexaminations, and reissues. According to Matt, post-grant proceedings are about 80% of what he’s done for the past 10-15 years. He also created and taught the “Post-Grant Patent Practice” course for the Patent Resources Group for eleven years and is a co-author of a two-volume treatise of the same name. Matt has taught as an adjunct law school professor. 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. In fact, your first reaction might be that some of them are heretical. But times have changed. The AIA ushered in a sea change in the way patents are enforced and litigated. If you have not adapted your patent drafting and prosecution practices accordingly, you are doing a disservice to your clients. The old “best practices” do not always make sense anymore. Old-fashioned “best practices” would always strive for claim breadth and a breadth-preserving record. 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 unpatentability can be easily shown with a mere preponderance of the evidence to PTAB judges who are comfortable finding claims obvious and strongly skeptical of secondary considerations. That’s a complete flip of the pre-AIA world. 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”.

1. Conduct thorough pre-filing prior-art searches.
2. Include claims, claims, claims, and more claims.
3. Draft a crystal-clear, super-detailed specification that unquestionably satisfies 35 U.S.C. § 112(a).
4. 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.
5. Consider defining some claim terms.
6. Consider using some “patent profanity.”
7. Consider telling the story of the invention.
8. Build an evidence-laden prosecution history.
9. Keep a continuation or divisional pending.
10. If no continuation is possible, consider reissue.
11. File for and obtain foreign patents.

Discussion Panel

Matt is joined today by our always exceptional group of IP experts, including:

• Ashley Sloat, President and Director of Patent Strategy at Aurora
• David Jackrel, President of Jackrel Consulting
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP
• Ty Davis, Patent Strategy Associate at Aurora

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 decision created a new test for receiving injunctions. It’s been widely asserted that this decision had radical, negative effects on patent owners’ abilities to enforce their property rights.

• This claim has now been confirmed with a new study done by Kristina Acri née Lybecker of Colorado College in a rigorous statistical analysis. Since the eBay decision, patent owners who license patents have seen a reduction of 91.2% in their ability to obtain injunctions when people are using their patents without their permission (even manufacturing companies have seen a reduction of 66.7%!).
• The justification for the decision is historically wrong. Adam also discusses his own research into the historical application of the four-factor test the Supreme Court wrongly relied upon in its decision that sent injunctive relief into its present death spiral.

After recording, exciting news also broke that the RESTORE Act was introduced in Congress to restore the presumption that courts will issue an injunction to stop patent infringers. This bill has been sponsored by Senator Chris Coons, Senator Tom Cotton, Representative Nate Moran, and Representative Madeleine Dean. Stay tuned as we’ll be unpacking this news with Adam in next month’s installment. 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.