5 Tips For Killing Patents In AIA Reviews

The patent review proceedings created by the America Invents Act have presented a golden opportunity for accused infringers to invalidate patents, but they involve a tremendous amount of work. Here, attorneys who have successfully navigated these trials by fire and knocked out patents in the new proceedings share what attorneys need to know to make an airtight case.

Most of the final decisions to date in inter partes reviews and business method patent reviews have invalidated some or all of the claims that have been challenged, but getting to that point is a daunting task that requires deep preparation, attorneys say.

Not only is the Patent Trial and Appeal Board, which hears the cases, staffed by judges with an extensive knowledge of patent law and technology, the proceedings must be completed within a year of being instituted, a rapid pace for such complex cases.

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Prepare Like You’ve Never Prepared Before

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The goal for practitioners at the oral hearing should be to ensure that the judges fully understand and are satisfied with the argument being presented, which requires them to explain rather than advocate, said W. Karl Renner of Fish & Richardson PC Attorneys must be nimble and anticipate the judges’ questions, with detailed discussions rather than sound bites, he said.

“It is hard to imagine a better way to waste the opportunity presented through an oral hearing than to focus exclusively on delivery of a message that is perfectly consistent with your briefing,” he said. “More effective presentations are designed to surface and address questions by your audience the judges.”

Excerpted from “5 Tips For Killing Patents in AIA Reviews” which was first published on law360.com on April 17, 2014.