Avoid These Litigation Inspired Drafting Errors

One of the biggest misconceptions about the new patentability challenges of the America Invents Act (AIA) is the notion that these administrative  trial proceedings are somehow analogous to district court litigation — nothing could be further from the truth. Rather, the new AIA proceedings simply skip over the previous patent reexamination examiner phase and go straight to the Patent Trial & Appeal Board (PTAB) phase, with a very limited opportunity for expert depositions along the way.

While it is certainly true that Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) proceedings are “trials,” these PTAB trials are governed by their own unique procedures, and are almost exclusively conducted on paper. As is made clear from the 12 months of proceedings to date, discovery practice is quite limited for these trials since they are based on documentary evidence only (i.e., patents and printed publications).

Looking at the top 5 IPR petition drafting mistakes, it is not surprising that most stem from the failure to recognize the key differences between PTAB and district court proceedings.

1. Deficient Evidentiary Declarations

Almost every IPR or CBM petition filed to date has been accompanied by a supporting declaration of one of skill in the art. The reason for presenting a declaration in support of a petition is simple: (1) the Patentee will almost always respond with their own once trial is ordered, and not filing one at the time of petition may foreclose rebuttal opportunity; and (2) Given that the patentee may not introduce new testimonial evidence at the time of the preliminary response, the petitioner declaration should insulate the petition from being denied by the PTAB in most circumstances.

These declarations, properly presented, are not expert reports that provide ultimate opinions. Instead, declarations are intended to provide evidence of the level of skill in the art, scope and content of the art, or technical understanding of a subject patent specification. Keep in mind that unlike district court judges PTAB judges are technically trained in engineering and/or the sciences. In district court litigation, expert reports provide a notice of later testimony intended to be offered at trial, at the PTAB, the declaration is the testimony. For this reason, declarations presented in an expert report style are sometimes deficient with respect to the requisite factual presentation.

2. “Mix and Match” Grounds of Unpatentability

As IPR petitions are commonly pursued at the time preliminary invalidity contentions come due in a concurrent litigation, filers sometimes try to repurpose their invalidity contentions as grounds of unpatentability in their IPR filing; this can have disastrous consequences. For example, preliminary invalidity contentions commonly identify multiple references for every claim element. By utilizing these contentions in an IPR petition there is no coherent ground of unpatentability presented. In such cases, the PTAB is likely to find the majority of combinations redundant, or completely lacking in requisite detail. If the PTAB rejects a petition on such grounds outside of the 12 month IPR window, there may be no way to refile the challenge in a more appropriate form.

3.  Lack of Coherent Claim Construction Positions

It is well known that the claim construction applied by the PTAB is different than that of the district courts. Still, petition filers are hesitant to provide a proper  PTO claim read in their petitions fearing that their adversary will point this out to the court to argue inconsistency. (That is to say, a broad read at the PTO may be inconsistent with a narrower read advanced in court for non-infringment purposes). In such cases, filers will typically discuss/advocate for their district court claim briefing/Markman hearings, or simply take no position whatsoever. Not surprisingly, the PTAB will arrive at a proper BRI construction in the Trial Order. However, the petitioner loses valuable credibility, which could unfavorably color the findings of the Trial Order. 

It would be a rare district court judge that did not have significant experience with concurrent PTO proceedings at this point. Simply explain the rationale for the different construction.

4.  Redundancy in the Grounds of Unpatentability

Similar to mistake (2) above, redundancy is another common trait of district court invalidity contentions. That is, the presentation of lengthy grounds of invalidity without any explanation of the relative strength for any one ground. In some cases the Board found that a §102 ground of unpatentability may be redundant with a §103 which relies on a different primary reference where the Petitioner does not “articulate any meaningful distinction between those separate disclosures in terms of potential strengths and weaknesses in the application of each disclosure to those claim limitations.”  It is therefore incumbent on the Petitioner to explain why various grounds are materially different with respect to their disclosures of the claimed features.

While PTAB page limits constrain the amount of prior art grounds that may be presented, especially as compared to the former inter partes reexamination practice, it is clear that the PTAB will not go forward on multiple grounds absent an explanation. As such, it is crucial to address redundancy to avoid the PTAB inadvertently picking a less preferred ground.

5.  Failure to Recognize the Importance of the 12 Month Window

While not a drafting mistake per se, the last mistake is one of timing. Petitioners have 12 months to file a petition for IPR from the time of being served with a complaint for infringement of the subject patent. Filings made outside this window are time barred. While this limited window would seem straight forward to track, large manufacturers need to be especially mindful of their supply chain and/or customers that are sued on the same patent at an earlier point in time. In some IPR filings, privity between businesses, indemnification obligations, corporate relationships, and the like could trigger the start of the window prior to a complaint being lodged against the parent company. This is because 35 USC 315 (b) extends to service of a complaint on a petitioner, real-party-in-interest or privy of the petitioner

Moreover, even when within the window, waiting to file beyond the 6 month mark means that there will be no second chance if a petition is ineffective due to one or more of the presentation mistakes noted above. Keep in mind that it takes 5-6 months from petition filing to receive the Trial Order.