PTAB Survival Guide: Quality Patents Part 2

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The most terrifying thing that can happen to a patent owner is receiving what’s called an IPR or Inter Partes Review petition. This is a tool that accused infringers can use to invalidate patents. And they have … to alarming effect. As we’ve discussed, the kill rate at the PTAB is staggering. The Patent Trial and Appeal Board – or as regular listeners of this audience more commonly know it as, the "Patent Death Squad" – has racked up a claim execution rate north of 84% and the death of thousands of valid patents at the hands of infringers looking to profit from innovations they didn’t invest in to create. This is an institution that is clearly out of balance and screaming for reform.
And while we continue to diligently work toward those necessary reform solutions, we also have to deal with the world as it is and craft the highest quality, most future-proof patents possible. So we’re dedicating Part 2 of our series on Patent Quality to creating a guide for how to help IPR proof your patent – things you can do when you write and prosecute patent applications before an examiner to maximize the likelihood that the resulting patent will survive the IPR that it will eventually experience if it’s a valuable patent.
** Guest Host: Matt Phillips **
Your expert author of this guide is someone who’s spent considerable time in the belly of the beast, successfully representing both petitioners and patent owners. Matt Phillips is a clear thinker, a great speaker, and draws from a deep well of real world expertise built from both sides of the IPR table. His practice focuses on post grant proceedings including review proceedings at the PTAB, reexaminations, and reissues. According to Matt, post-grant proceedings are about 80% of what he’s done for the past 10-15 years. He also created and taught the “Post-Grant Patent Practice” course for the Patent Resources Group for eleven years and is a co-author of a two-volume treatise of the same name. Matt has taught as an adjunct law school professor. He has published over 40 articles on post-grant patent topics and been an invited speaker around the country and internationally on post-grant topics.
** Discussed Links **
⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Wars: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ American Inventor Horror Story: https://www.aurorapatents.com/blog/new-podcast-american-inventor-horror-story

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Chapters

1. Intro (00:00:00)

2. Mossoff Minute: Injunctions Studies (00:04:10)

3. Matt Phillips' background (00:09:39)

4. What is the PTAB? (00:12:40)

5. PTAB functions: appeals and trials (00:13:20)

6. What is an IPR? (00:14:07)

7. The old “best practices” (00:16:18)

8. Top 10 pointers to survive an IPR (overview) (00:24:17)

9. 1. Prior art searching (00:25:59)

10. 2. Claims: quantity and kinds (00:29:43)

11. 4. Claim interpretation assumptions (00:36:52)

12. 5. Define claim terms (00:38:17)

13. 3. Write a really good specification (00:40:10)

14. 7. Tell the story of the invention (00:47:41)

15. 6. Consider using some "patent profanity" (00:49:50)

16. 8. Build an evidence-laden prosecution history (00:51:01)

17. 9. Keep a continuation or divisional pending (00:51:01)

18. 10. If no continuation is possible, consider reissue (00:58:17)

19. 11. File for and obtain foreign patents (bonus pointer) (00:59:15)

20. Outro (01:09:48)