Lessons From PTAB Full or Partial Denials to Obtain a Denial and Avoid an IPR

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, July 6, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide patent counsel with an analysis of the ever-increasing number of Patent Trial and Appeal Board (PTAB) denials and partial denials and offer take-home lessons applicable in practitioners’ daily practice.

Description

The PTAB is denying almost a third of all inter partes review (IPR) petitions (60% granted FY2015-FY2017 to date + 7% joinder granted). Importantly, even in the granted petitions, some were granted on less than all of the challenged claims or on less than all asserted grounds. The grant rate for post-grant review (PGR) petitions is lower, 56% (19/34, FY2015-FY2017 to date).

These denials and partial denials provide a source of extremely valuable information for patent owners looking to avoid institution of an IPR or PGR and petitioners looking to avoid a denial. For example, in an overwhelming number of petitions denied, a Patent Owner Preliminary Response (POPR) was filed.

Early concerns by patent owners about “showing your hand” when it was not required seem to have been overcome by results indicating the PTAB’s desire to have cases front-loaded applies to both parties.

PTAB proceedings are supposed to be, by statute, “just, speedy, and inexpensive.” The PTAB can most efficiently use its resources to make the decision to institute based on the most information possible. Further, patent owners who regret not filing a POPR do not really have much recourse. Motions to reconsider IPR institution decisions so far have been routinely and resoundingly rejected.

As a patent owner, filing a proper POPR is the way the patent owner can help PTAB conclude that the petitioner has not met its burden of showing “a reasonable likelihohood” of prevailing with respect to at least one challenged claim. The POPR is also an opportunity to attack the petitioner’s standing and proposed claim construction before a decision on institution. As noted by PTAB APJs recently, the POPR is the patent owner’s chance to show the PTAB the flaws or inadequacies of the petition, not to get bogged down in the substantive arguments that will be presented if the petition is granted.

Listen as our authoritative panel of patent practitioners, with pioneering expertise in PTAB practice and differing backgrounds covering chemical, life science, computer, and business methods technologies, analyzes the substance of PTAB denials and partial denials for take-home lessons applicable in practitioners’ daily practice.

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Outline

  1. Analysis of IPR/PGR petitions denied: patent owner arguments that worked
  2. Analysis of IPR/PGR petitions granted but number of claims to trial reduced
  3. Analysis of IPR/PGR petitions granted but grounds narrowed

Benefits

The panel will review these and other key issues:

  • How can practitioners use the lessons of the PTAB denials to learn what patent owners are doing to achieve their ultimate success: An IPR petition denial?
  • What can petitioners learn from the partially denied IPR institution decisions?
  • How can practitioners prosecute applications and claims to enhance likelihood of denial of IPRs and PGR petitions?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Joshua L. Goldberg
Joshua L. Goldberg

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Goldberg focuses on patent office proceedings, client counseling, and litigation. Devoting the majority of his time...  |  Read More

Cory C. Bell, Esq.
Cory C. Bell, Esq.

Finnegan Henderson Farabow Garrett & Dunner

Mr. Bell focuses on patent prosecution management, client counseling, post-grant practice, and litigation, with an...  |  Read More

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