Law360: Strategies for Avoiding Institution of an IPR
As the five-year anniversary approaches for American Invents Act inter partes reviews at the Patent Trial and Appeal Board, the available statistics confirm that a patent owner’s best chance at avoiding cancellation of its claims is to avoid
institution of the proceeding in the first place. Once an IPR has been instituted, the chances for survival of instituted claims drops dramatically. Accordingly, arguments and evidence presented in a patent owner’s preliminary response to the petition should be carefully crafted to convince the PTAB that there is not a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable. Fortunately, for patent owners, there have been a number of developments in the past few years that have improved their chances at avoiding institution.
First, the rule changes adopted by the PTAB in April 2016 now allow patent owners to include supporting evidence in the form of new testimonial evidence (e.g., expert testimony) in preliminary responses to the petition. While genuine issues of material fact created by such testimonial evidence will be viewed in a light most favorable to the petitioner, the ability to challenge testimonial evidence presented in the petition and to present new evidence to support the patentability of the challenged claims greatly increases the chances for a denial of institution.
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