5 Things To Consider Before Heading To PTAB
By Harper Batts and Jeffrey Liang
Law360, October 16, 2018, 1:21 PM EDT
Those familiar with Patent Trial and Appeal Board proceedings are no doubt aware of
some basic trends with respect to post-grant challenges: Institution rates have dropped
over the past two years to around 60 percent, and the likelihood of at least some
challenged claims surviving a PTAB proceeding has correspondingly increased. This
article, rather than focusing on statistics, analyzes recent case law developments, rule
changes and shifting legal frameworks, and presents five factors that companies facing
patent infringement claims should consider when determining how to best leverage the
advantages of PTAB proceedings.
SAS Institute Inc. v. Iancu
The U.S. Supreme Court’s SAS decision generated significant debate over whether
petitioners or patent owners will benefit more from the decision. Regardless of the
overall balance, it is clear that the threat of estoppel with respect to prior art has grown
significantly, and petitioners can no longer expect that printed prior art will be available
at trial. Petitioners can alleviate estoppel concerns by (1) investigating system art early,
because that art is not subject to potential estoppel; (2) conducting more intensive and
thorough prior art searching earlier in cases, so that the best art is presented in an inter
partes review petition; and (3) preparing high quality IPR challenges shortly after a
patent lawsuit has been filed.
In addition to estoppel, SAS requires that the parties address grounds which the PTAB
found unlikely to be successful at institution. While this provides a petitioner an
additional opportunity to change the panel’s view on a ground that otherwise would not
have gone forward, it will require both petitioners and patent owners to make difficult
strategic decisions regarding how much effort and attention to place on such grounds.
For example, when preparing a patent owner response and during the deposition of the
petitioner’s expert, the patent owner will have to decide whether to spend time attacking
grounds that the PTAB has already found unlikely to succeed, which will likely reduce
the patent owner’s ability to attack and focus on other grounds.
SAS will also require petitioners to carefully consider whether to include potentially
weaker grounds in petitions, as such grounds can still result in estoppel even if the
board finds them unlikely to succeed at the institution stage. Previously, the denial of
such grounds at institution would not have triggered estoppel.
35 U.S.C. § 314, 325, and the Evolving General Plastic Analysis
SAS changed the estoppel landscape and increased the need to present stronger prior
art arguments at the PTAB. Additionally, the board has limited the prior art grounds and
