Save Your Claims: How to Beat the PTAB’s 70% All Claims Invalidation Rate

As I have written previously, litigating the validity of a patent at the Patent Trial and Appeal Board (PTAB) is very different than litigating validity in district court. The audience is different, the rules are different, and the presentation of your case is different.

If you try to apply the district court rulebook at the PTAB, you are setting yourself up for a rough ride in what is already a very challenging forum. By and large, tactics and strategies for litigating validity in district court do not apply in the PTAB, and in some instances, can get you into trouble. If your patent has been challenged by an IPR petition, you need counsel with IPR expertise to defend that patent.

We discuss below some “rules of the road” for defending a patent (if you are patent owner) or challenging a patent (if you are petitioner) as you navigate the expedited trial before specialized judges.

Many of these points were discussed at the 2024 IPWatchdog PTAB Masters conference in the panel discussion so nicely moderated by Gene Quinn: “Unforced PTAB Errors: Pitfalls Patent Owners Should Avoid.”

Know the Forum

If you are patent owner, the PTAB is a daunting forum that finds all challenged claims unpatentable at a 70% rate. That means that if the inter partes review (IPR) reaches a final written decision, 70% of the time all challenged claims—not just some claims—will be found unpatentable. That’s just the cold reality, and you need to have it in your mind as you prepare to defend a patent.

The fate of your patent will be decided by three Administrative Patent Judges (APJs). APJs could not be more different from a typical lay district court judge. APJs are highly trained specialist judges who have advanced technical training and who know patent law cold. Strategies for arguing before a jury or lay judge almost never work with the PTAB. Further, deploying jury argument tactics can undercut your credibility. If you lose credibility, you can end up losing a winnable case.

APJs can be thought of as “super-POSITAs” (persons of ordinary skill in the art) when it comes to obviousness. And, as many have observed, the PTAB is essentially an obviousness forum where most patents live or die under Section 103. The legal burden is on the challenger to establish the patent is invalid. 35 U.S.C. § 316(e). But as a practical matter, most would agree (the author included) that the burden is on the patent owner to establish the claims are patentable once an IPR is instituted. The PTAB statistics bear that out.

Many tactics that work in district court will not work at the PTAB. For example, colorful stories about the inventor or how the invention was conceived do not impress. If you engage in storytelling, it is not only ineffective, but it makes you look like a PTAB novice. That is not the look you want.

Strategies that Work

Your PTAB brief—whether it is the Petition, Patent Owner Preliminary Response (POPR), Patent Owner Response (POR), or a reply paper—should set forth focused arguments on why the claims are patentable (or not patentable) over the prior art. Shotgun approaches with too many arguments can undermine your case.

• Test your arguments: Make a conscious point to check each argument to determine whether it is likely to be perceived as weak. If an argument doesn’t pass the weakness test, take it out. Weak arguments present two problems: (1) they undercut your credibility, and (2) they dilute your good arguments.
• Tailor the papers to the audience: Draft your papers to help these highly trained specialists understand the (a) core technical issues and the (b) associated legal arguments on why the claims are patentable or not. You should never appear condescending, and you should avoid excessive sarcasm. The PTAB is genteel, if you will, compared to most district courts. APJs do not appreciate antics that may work in district court.
• Disclaim weak claims: If there are overly broad or otherwise weak claims being challenged, give serious consideration to disclaiming them in your POPR. This is very important. It removes grounds and strengthens your case. The Board appreciates patent owners that remove overly broad claims from the case. It focuses the case on claims having good arguments for nonobviousness.
• Argue the dependent claims: It is common practice in prosecution to focus only on the independent claims. The Board will find dependent claims patentable if you argue them. It is a win at the PTAB if one or a handful of asserted claims is found patentable, even if the independent claim is lost. You can save your client’s district court case by arguing dependent claims that have meaningful limitations.
• Don’t Forget Reasonable Expectation of Success: The obviousness case must establish that a POSITA would have a reasonable expectation of success (REOS). If you are the petitioner, make sure REOS is addressed by your expert and in your Petition. It might be surprising, but sometimes petitioners forget to address REOS in their obviousness argument. If you are the patent owner, this can be an effective angle of attack. See, e.g., Juniper Networks v Correct Transmission, IPR2021-00682 (PTAB Oct. 3, 2022), at *23 (“Petitioner leaps silently over the requirement to evidence a reasonable expectation of success to establish obviousness”).
• Expert declarations: Unlike expert reports in district court, expert declarations in PTAB proceedings are not giving notice of direct testimony to come. The expert declaration is the direct expert testimony. Thus, the expert declaration needs to be complete, thorough, and clear. If the expert declaration appears to be duplicative of your paper (e.g., Petition or POR), then it doesn’t help APJs understand the issues. You should avoid the appearance of excessive cutting-and-pasting between the expert declaration and the principal paper. It will result in the expert evidence being given little weight as it is “merely parroting” the principal paper. Xerox v. Bytemark, IPR2022-00624 (PTAB Aug. 24, 2022) (prec.) at *6 (expert statements that repeat the petition verbatim are given little weight). See Garmin International, Inc. v. LoganTree, LP, 825 Fed.Appx. 894, 898 n.5 (Fed. Cir. 2020).
• Expert declarations with the POPR: The conventional wisdom is that the POPR should be submitted without an expert declaration. If a Petition is filed, the PTAB is likely to institute a trial based on the low “reasonable likelihood” standard. 35 U.S. Code § 314(a). In that case, the patent owner has the risk of “confirmation bias,” meaning that you will be asking the APJs to come to the opposite conclusion on facts and legal determinations that were not successful in avoiding institution. Like anything, there are exceptions to this general rule. For example, you might include an expert declaration if you believe you have a strong “knock-out” argument on the merits. You may also include an expert declaration if the grounds include a non-patent reference that can be disqualified as a printed publication because it was not sufficiently accessible to persons interested in the art. See Acceleration Bay v. Activision (Fed. Cir. 2018). Acceleration Bay and other cases consistently hold that the mere fact that a document was “technically accessible” because it was posted on the Internet is insufficient to establish public accessibility.
• Expert depositions: Expert depositions are cross-examination based on the expert’s direct testimony set forth in the declaration. If you are defending, the goal is not to score points, but it is to avoid damage to your expert’s direct testimony. If the expert emerges from the deposition with the declaration testimony intact, that is a victory. As it is cross-examination, the scope of the deposition is limited to the scope of the declaration. Your expert needs to understand that the scope is limited to the opinions in the declaration, and that he/she should not be venturing new “on-the-fly” opinions. The most damaging admissions in depositions usually arise from experts venturing new opinions that open the door to a series of unanticipated questions leading to damaging admissions that the expert doesn’t even realize are damaging.

Strategies that Do Not Work

Here are some things to avoid during an IPR trial:

• Teaching Away: Arguing that a reference “teaches away” from a combination is almost never successful. There is case law that even if a reference criticizes or disparages a course of action, the fact that the criticized course of action is mentioned can be enough to establish a motivation to combine. Syntax Apotex (Fed. Cir. 2005). Arguing “teaching away” is usually a weak argument that will undercut your credibility. Instead, address motivation to combine head-on and explain why a POSITA would not have reason to make the proposed combination,
• Non-analogous art: An argument that references cannot be combined because they are non-analogous art is almost never successful. The standard for analogous art is very low. Art is analogous if (1) it is in same field of endeavor as  the invention, or (2) it is reasonably pertinent to problem addressed by the invention. Sanofi-Aventis v. Mylan Pharma (Fed. Cir. 2023).
• Hindsight Reconstruction: A stand-alone argument that a proposed obviousness combination is a “mere exercise in hindsight reconstruction” is rarely successful. The point of the KSR requirement for establishing an apparent reason to combine is to avoid hindsight reconstruction. You are better off attacking that issue head-on instead of arguing hindsight reconstruction. Presenting a stand-alone hindsight construction argument can undermine your credibility with the Board.

• Avoid the traps of arguing bodily incorporation or arguing references in a combination individually: APJs are very prepared to dismiss your argument of nonobviousness if you fall into the traps of (1) arguing the references based on their physical combination instead of their combined teachings, or (2) arguing the references individually, instead of as a combination. You may want to preemptively rebut a bodily incorporation attack or an individual references attack. See Facebook v. Windy City (Fed. Cir. 2022) (bodily incorporation); In re Merck (Fed. Cir. 1986) (attacking references individually).
• Quibbling about the definition of a POSITA: It typically does not make sense to expend effort disputing the definition of the POSITA. The Board will almost always preface its determination with a statement that the outcome is the same regardless of the competing definitions of the POSITA.

Closing Thoughts

Whether you are on the patent owner side or the petitioner side, litigating before the PTAB requires a different skill set and different strategies than district court. You have your best opportunity for success if you avoid common pitfalls and focus on providing APJs with information that helps them understand the material facts and the core arguments.