As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind - from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your sur-reply. The Mintz IPR team authored the "Patent Owner Tips for Surviving an Instituted IPR" series to provide valuable practice insights from institution forward. In the summary below, we provide key takeaways from throughout the series. All 19 tips can be read on Mintz.com here: Surviving an Instituted IPR. (You may also be interested in reading our series on Avoiding IPR Institution.)
Depositions
Tip #1: Approach IPR Depositions Like A Cross-Examination
Tip #2: Don't Swing for the Fences in IPR Depositions
Expert Declarations
Tip #3: How Patent Owner Experts Go from Zero to Hero
Tip #4: Take the Time to Use Your Expert as an Expert
Tip #5: The Right Expert Can Save Your Patent
Tip #6: Using Objective Sources & Evidence to Support the Expert Declaration
Tip #7: Work with Your Expert to Make the Declaration Navigable and Well Supported
Seeking Additional Discovery
Tip #8: Additional Discovery is Possible, but Should be Carefully Planned
Tip #9: Issues Warranting Limited Additional Discovery
Drafting Response
Tip #10: Address Claim Construction and Public Availability
Tip #11: Use It or Lose It (in the POR)
Tip #12: Address Individual Claims - Dependent Claims Can Save the Day
Motions to Amend
Tip #13: When to Amend Claims in an IPR
Tip #14: When Not to Amend Claims in an IPR
Tip #15: Procedure for Motions to Amend
Tip #16: Improve Your Chances of Getting Amendments
Tip #17: Alternatives to Motions to Amend in IPR Proceedings
Defending Depositions of Declarants
Tip #18: Defending Depositions
Sur-Replies
Tip #19: Sur-Reply Strategies
See the full series of Tips for Surviving an Instituted IPR, from depositions to Sur-Replies, here on Mintz.com.
We hope you find these strategies to be practical and helpful for navigating instituted IPRs. As always, the Mintz Intellectual Property team is happy to discuss further or assist in any of your IPR needs.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
