"But even if the IPR is not rejected, I still beli
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Posted On: 10/08/2017 5:39:01 PM
"But even if the IPR is not rejected, I still believe SFOR will prevail in the review, and gain further advantage against the defendants."
While everyone believes we have to have the IPR rejected (Rejection would be absolute best case scenario), its not the case. The Patent Owner Preliminary Response is the most valuable part of this process. R&G and BR did a great job on this front.
Heres some info.:
I. ARGUING AGAINST IPR INSTITUTION: SUBSTANTIVE BASES OF CHALLENGE
In the context of an inter partes review (IPR), Patent Owner’s first goal should be to prevent institution, particularly since decisions on institution are not appealable.6 For the Patent Trial and Appeal Board (PTAB) to grant an IPR petition, Petitioner must meet a number of technical and substantive requirements. For example, Petitioner must propose claim constructions, meet mandatory reporting requirements, and show a “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.“7 In Part 1 of this article, we discussed technical requirements that Patent Owner may challenge to prevent IPR institution. Part 2 will explore the substantive arguments Patent Owner may make in an attempt to avoid institution of an IPR, as well as strategies for patent owners to employ when drafting and prosecuting applications to enhance the possibility that patent claims will withstand an IPR challenge. Pre-petition preparation is important for patent owners, as once a challenger files an IPR petition and PTAB grants it a filing date,8 patent owners have only three months to prepare an optional Patent Owner Preliminary Response (POPR).9
Patent Owner should seek to provide PTAB with a concise, compelling argument in the POPR as to why PTAB should not institute the IPR. This should enable the panel to make institution decisions based on the most relevant information possible to achieve a “just, speedy, and inexpensive” alternative to litigation, and may even lead to higher rates of unpatentability of those that do merit institution. Even where PTAB grants the IPR petition, however, a POPR may lead to institution on fewer claims, fewer grounds, or PTAB adopting Patent Owner’s desired claim construction rather than Petitioner’s. Any of these outcomes may be positive for Patent Owner because the subsequent trial will be narrower in scope and/or at least proceed on Patent Owner’s desired claim construction. Thus, the pre-institution stage of any IPR is critical for both petitioners and patent owners, as petitioners’ first goal is to bolster their petitions against patent owner challenges and patent owners’ first goal is to try and get the petition denied.
More here:
https://www.finnegan.com/en/insights/pre-inst...r-win.html
IMO
While everyone believes we have to have the IPR rejected (Rejection would be absolute best case scenario), its not the case. The Patent Owner Preliminary Response is the most valuable part of this process. R&G and BR did a great job on this front.
Heres some info.:
I. ARGUING AGAINST IPR INSTITUTION: SUBSTANTIVE BASES OF CHALLENGE
In the context of an inter partes review (IPR), Patent Owner’s first goal should be to prevent institution, particularly since decisions on institution are not appealable.6 For the Patent Trial and Appeal Board (PTAB) to grant an IPR petition, Petitioner must meet a number of technical and substantive requirements. For example, Petitioner must propose claim constructions, meet mandatory reporting requirements, and show a “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.“7 In Part 1 of this article, we discussed technical requirements that Patent Owner may challenge to prevent IPR institution. Part 2 will explore the substantive arguments Patent Owner may make in an attempt to avoid institution of an IPR, as well as strategies for patent owners to employ when drafting and prosecuting applications to enhance the possibility that patent claims will withstand an IPR challenge. Pre-petition preparation is important for patent owners, as once a challenger files an IPR petition and PTAB grants it a filing date,8 patent owners have only three months to prepare an optional Patent Owner Preliminary Response (POPR).9
Patent Owner should seek to provide PTAB with a concise, compelling argument in the POPR as to why PTAB should not institute the IPR. This should enable the panel to make institution decisions based on the most relevant information possible to achieve a “just, speedy, and inexpensive” alternative to litigation, and may even lead to higher rates of unpatentability of those that do merit institution. Even where PTAB grants the IPR petition, however, a POPR may lead to institution on fewer claims, fewer grounds, or PTAB adopting Patent Owner’s desired claim construction rather than Petitioner’s. Any of these outcomes may be positive for Patent Owner because the subsequent trial will be narrower in scope and/or at least proceed on Patent Owner’s desired claim construction. Thus, the pre-institution stage of any IPR is critical for both petitioners and patent owners, as petitioners’ first goal is to bolster their petitions against patent owner challenges and patent owners’ first goal is to try and get the petition denied.
More here:
https://www.finnegan.com/en/insights/pre-inst...r-win.html
IMO
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