Defending Patents in IPR Proceedings: Best Practices to Mitigate Risks of Claim Cancellation

Counsel to patent owners dread receiving notice that a petition for IPR has been filed against a patent. The Patent Trial and Appeal Board (PTAB) is granting IPR petitions at a significant rate, while owners' patent claims are being cancelled at a high rate in PTAB final decisions.

Statistics reflecting the outcome from the PTAB's final written IPR decisions are unfavorable for patentees. As of June 2016, the PTAB cancelled 77% of instituted patent claims and denied 95% of proposed substitute claims. In 73% of IPRs no instituted or substitute claims survived (source of estimates: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; http://www.aiablog.com, June 1, 2016).

Patent owners have few options to prevent IPR challenges. However, patent counsel can learn from successful arguments made by patent owners in prior IPR proceedings to develop a strategic approach to minimize the risk of losing valuable patent rights.

Listen as our authoritative panel discusses what patent owners can/should do when defending their patents in IPR challenges, including when and if to file a preliminary response; how to use testifying and consulting experts, conduct discovery, file motions to amend or substitute claims, and raise evidentiary objections; and when/how to use secondary considerations, such as commercial success.

1. What patent owners can/should do when defending their patents in IPR challenges
2. IPR strategy
3. Tools in the patent owner toolbox
4. Best practices for minimizing risk of claim cancellation

The panel will review these and other key issues:

• What strategies have patent owners used to achieve a successful result in IPR proceedings?
• How can patent owners best use expert testimony to effectuate an IPR defense strategy?
• How can patent owners persuasively present motions to amend or preliminary responses in IPR defense?