Unforced PTAB Errors: Pitfalls Patent Owners Should Avoid

Unforced PTAB Errors: Pitfalls Patent Owners Should Avoid

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A formidable challenge is 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.

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. Often the pitfall facing patent owners relates not to the argument, but to how the argument is framed.  Formulating and framing your arguments to avoid traps and pitfalls will help give your client the best chance at getting claims confirmed.

This panel will discuss pitfalls and traps waiting for patent owners, including (1) the patent owner preliminary response; (2) use of expert opinions and expert declarations; and (3) arguments relating to issues such as impermissible hindsight reconstruction, teaching away, references not being able to be physically combined and the proposed combination would bring some disadvantages.

Materials

Winning Strategies at the PTAB, Bring Your Game

Winning Strategies at the PTAB, Part II: Common Pitfalls That Patent Owners Should Avoid

Survey

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