Leveraging Experts for USPTO Prosecution and PTAB

Description

In the past, the trend was for lean and clean file histories because unnecessary statements or submissions in patent prosecution potentially led to patent claims having an unnecessarily narrow construction and created more points of attack for inequitable conduct. Now, in the post-AIA world of post-grant proceedings, patent owners may want to reconsider whether less is still more in a specification and/or file history.

Solid evidentiary showings and/or expert declarations, in addition to on-point and compelling legal arguments, may help to develop strong patentability records. Prudently establishing such records during prosecution could support a patent owner’s efforts to withstand an IPR or PGR challenge.

Submission of this evidence during prosecution requires careful thought and planning. Evidence or a declaration thrown together in haste, or otherwise considered defective, may be harmful rather than helpful. Additionally, inequitable conduct is still alive and well post-Therasense. Since inequitable conduct cannot be raised during an IPR or PGR, there is apparently no estoppel precluding a losing IPR or PGR petitioner from raising inequitable conduct in subsequent litigation.

Carefully considered declarations putting more in the record during prosecution may benefit the patent in the face of an IPR or PGR challenge. Consider solid and compelling arguments and/or declarations during prosecution supporting §112 positions and §103 positions.

As it stands now, in the Patent Owner Preliminary Response (POPR), the patent owner cannot “present new testimony evidence beyond that already of record.” But, to defeat institution, the patent owner should be able in the POPR to rely on declarations setting forth §112 and §103 positions originating from the prosecution or even from other publicly available documents (as in Anova Food L.L.C. v. Leo Sandau and William R. Kowalski, IPR2013-00114 and Omron Oilfield & Marine Inc. v. MD/TOTCO, A Division of Varco L.P., IPR2013-00265). A POPR also allows the patent owner to show PTAB how the intrinsic evidence completely supports the patent owner’s desired claim construction.

Listen as our authoritative panel of patent attorneys discusses best practices for practitioners of how and when to use experts in patent prosecution to strengthen claims against IPR and PGR challenges.