Tactics & Strategies: Crafting the IPR Petition*

Tactics & Strategies: Crafting the IPR Petition*

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One of the first tasks for counsel for the petitioner is to consider the grounds for invalidity, the number of references, and which references to use. For example, would you ever consider including a reference disclosed in an IDS? How many grounds for invalidity is too many grounds? How many references is too many? How does estoppel factor into selection of grounds and/or references? Should you use printed publications, or doesn’t it matter anymore?

With the death of Fintiv litigation teams feel more comfortable waiting longer to file inter partes review (IPR) challenges, which allows for more careful consideration and preparation of the petition, but not everything is easy for challengers after the demise of discretionary denials. While it is early, and the sample size is small, one new issue facing petitioners since the death of discretionary denials seems to be an increase in denials as the result of insufficient motivation to combine. Notwithstanding, the problems facing petitioners, and the non-appealability of institution decisions, Director Vidal has recently suggested the possibility of an error review panel to review denials of institution.

What is the proper use and content for the expert declaration? What should you include in the petition versus the expert declaration? How much color should you add to the expert declaration? Is it appropriate to incorporate by reference from the declaration into the petition, and if so, what is the right balance?

Is there a downside to staking out a position on indefiniteness that may come back to bite you later during litigation, particularly when dealing with means plus function limitations?

This panel will address these questions and strategic decisions facing petitioners, discussing the pros and cons and what the various choices mean both short-term and long-term.

Materials*

Top Five Takeaways From a Deep Dive Into Obviousness at the PTAB

Top 5 Mistakes in IPR Petition Drafting (PatentsPostGrant.com)

PTAB Denies Petition Overlooking Objective Indicia of Non-Obviousness (PatentsPostGrant.com)

Denied Petition Grounds May Be Relevant to PTAB Trial (PatentsPostGrant.com)

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