Hubs1. Locate the Best Prior Art.
Invest the time and resources to track down the best prior art eligible for the IPR proceeding. This is probably the most important “tip.” Do not engage in “hand-waiving” before the PTAB. If there are any gaps in the prior art, the PTAB will find them, and you will not succeed. If you cannot locate the art by the statutory deadline, you are likely better off waiting and just taking your chances in front of the jury, rather than filing a less-than-ideal IPR petition.
2. Attack the Patent from Multiple Angles.
If there are different ways to attack the patent, it is usually wise to do so. For example, consider a patent which claims elements A, B, C, D, and E. And, assume you have located three prior art references: prior art reference 1 that discloses elements A, B, C, and D; prior art reference 2 that discloses element E; and prior art reference 3 that discloses elements B, C, D, and E.
You can combine the reference 1 and 2 to come up with the claimed combination, but using references 1 and 3 may make your IPR arguments stronger. Using references 1 and 3 allows you to argue that the patent is invalid based on reference 1 in view of 3 or based on the reference 3 in view of 1. In other words, reference 1 or 3 could be the primary reference with reference 3 or 1 being secondary. This can work to your advantage because there may be a different motivation to combine reference 1 with reference 3 as opposed to reference 3 with reference 1. In addition, perhaps the patentee successfully convinces the PTAB that element B is missing from reference 1. If you selected references 1 and 2, you will lose the IPR because one of the claim elements is missing. But, if you selected references 1 and 3, you should still prevail (as element B is disclosed in reference 3).
3. Use the IPR to Elicit Claim Construction Positions.
You may be able to force the plaintiff to take some uncomfortable positions to distinguish the prior art in the IPR proceedings, which you can use to your benefit in the co-pending litigation. Even if the timing isn’t perfect and the district court has already issued a claim construction order, you might still convince the district court to reconsider a claim construction ruling in view of admissions/disclaimers the patent owner is making in the PTAB proceedings.
4. Use the IPR for Settlement Leverage.
Before filing the IPR, consider serving a copy under Rule 408 on your adversary. There is little downside since you are using Rule 408, and the plaintiff patent owner may settle with you prior to your filing just to avoid the IPR proceedings.
5. Understand the Risks.
If you decide to move forward and file an IPR petition, you must understand the risks. If you lose the IPR, even a weak infringement case will likely get far stronger due to the estoppel provision. This is why spending the time and resources to locate the best prior art is important.
6. Understand your Audience.
Just about every patent challenger would like to find Section 102 art for invalidity purposes. But don’t be afraid of Section 103 art. The PTAB is a sophisticated tribunal and invalidates claims based on obviousness, just like patent examiners do all the time.
7. Know the Rules.
A person might assume that the Federal Rules of Civil Procedure apply to IPR proceedings, but that person would be incorrect. For example, you must understand which objections to make at a deposition in order to preserve the objection for trial. When practicing before the PTAB, make sure you are familiar with the applicable rules.