Challenging Patents in IPR: Strategies for Filing Petitions

An IPR procedure provides a path to challenge the validity of a patent that is often a faster, cheaper and more likely way to invalidate the patent. However, potential challengers must carefully weigh several factors when considering whether to filing a petition. An IPR proceeding that results in a final written decision will bar the petitioner from raising any grounds for invalidity in the future that were raised or reasonably could have been raised. Further, if an IPR is not instituted, a district court will likely give weight to that if the matter is in litigation.

There is a growing trend of one petitioner filing multiple IPRs for single patent. This strategy allows the petitioner to challenge the patent on additional grounds. Also, filing an IPR petition may promote resolution of the patent validity dispute without the need for litigation. Only a petition that is well drafted and with strong support will succeed.

Listen as our authoritative panel of patent attorneys discusses the factors that should be considered when determining whether and when to file an IPR petition. The panel will examine the benefits and risks of filing multiple petitions on the same patent and will discuss claim construction strategies. The panel will offer best practices for filing an IPR petition.

1. Pre-filing considerations
2. Timing—whether and when to file
3. Multiple petitions—benefits and risks
4. Claim construction strategies
5. Best practices for filing an IPR petition

The panel will review these and other key issues:

• What are the advantages and disadvantages of utilizing the IPR process?
• What strategies have petitioners used to achieve a successful result in IPR proceedings?
• How can patent counsel leverage multiple petitions on a single patent to challenge its validity?