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Developing a patent portfolio that can withstand the ‘death squad’ for patents (Part 2)

Several strategies for developing patent portfolios that are more likely to withstand scrutiny by the PTAB before or during enforcement

In our last article, we reviewed how defendants in patent litigation are using post-grant proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes review (IPR), to defend against infringement claims, and in many cases, invalidate patent claims, disrupt litigation and delay enforcement. In this article, we present several strategies for developing patent portfolios that are more likely to withstand scrutiny by the PTAB before or during enforcement. These strategies are predicated on the notion that any patent worth enforcing will have to withstand review by the PTAB at the request of a highly motivated petitioner. In many cases, these strategies can be implemented quickly and inexpensively by simply re-orienting existing resources.

All of our recommendations arise out of a conviction that a patent application that anticipates a post-grant validity challenge will anticipate and address all of the subsidiary issues that courts (and the PTAB) consider when examining validity. The historical patent prosecution practice of leaving many validity-related factual issues unaddressed now appears to be a flawed strategy that can backfire. Rather than giving the patent owner increased flexibility for enforcement, leaving key issues relating to validity unaddressed or ambiguous when drafting a patent application tends to undermine validity by allowing petitioners or the PTAB to later frame a debate about validity in a way that may predetermine a negative outcome. Patent applicants can avoid this scenario with a few simple changes to their patent preparation practices.

1. Write your patent application for the PTAB

A patent application is written for many audiences: inventors, patent examiners, investors, licensees, judges and juries. It should also be written for the PTAB. An application that is written for the PTAB includes key information that the PTAB will need to assess the validity of the patent years or even a decade after it issues.

It can be difficult or impossible to reconstruct the state of the art or level of ordinary skill in the art after the fact, so take precautions to prevent your adversaries or the Board from misinterpreting the historical record. Instead of including a cursory “Background of the Invention” section, use the “Background of the Invention” to discuss the state of the art in greater detail, albeit without providing a rationale for combining the prior art to arrive at the claimed invention. Cite more evidence to back your assertions about the state of the art than you have in the past. Characterize the level of ordinary skill in the art, and include evidence to support your assertions. Defining the level of ordinary skill in the art will help deter future adversaries from using hindsight bias to mischaracterize the level of skill in the art or misinterpret what was or was not obvious.

Finally, explain the limitations of the prior art and the claimed invention’s benefits over the prior art in a specific and concrete way in the “Summary” or “Detailed Description” sections of the invention. Linking the benefits to the claim terms can be particularly helpful. If appropriate, define key claim terms in the specification to limit their “broadest reasonable interpretation in light of the specification” by the PTAB.

2. Know the prior art

Our second tip for surviving the PTAB is a mantra for many patent attorneys: know the prior art. About 40 percent of the prior-art rejections sustained by the PTAB are anticipation rejections, so it makes sense to investigate the prior art when preparing a patent application. We are not necessarily suggesting conducting a prior-art search before filing every patent application; prior-art searches can be helpful, but no practical prior-art search can be truly exhaustive. Rather, ask the inventors about their experience in the field and any references or products that they think are relevant. This should be a standard step in the invention disclosure process. In many cases, the inventors’ own work will be the closest prior art; your own patent portfolio probably includes other relevant work as well. The patent attorney preparing the patent application may also be familiar with other relevant prior art from prosecuting other patent applications in the same field, including those patent applications themselves and any prior art cited in them. All of this prior art should be disclosed to the USPTO in accordance with the duty of disclosure.

It can be more effective to identify and distinguish over the closest prior art in the body of the application itself. Doing so allows you to proactively characterize the prior art and its shortcomings. This is often more effective than merely including key prior art in an information disclosure statement and waiting for the Patent Office to come back with a rejection.

3. Pursue modest claims that cover commercially valuable technology

Unless you are claiming a foundational invention, pursue claims of modest scope that cover commercially meaningful technological innovations and distinguish the prior art. For many patent applicants, this may involve re-orienting patent strategy away from pursuing the broadest possible claims in order to establish the widest possible basis for enforcement. Generally, however, narrower claims should be less susceptible to invalidation by the PTAB than broader claims. Narrower claims also tend to be allowed more quickly and with a shorter prosecution history; this reduces both the cost of developing a patent portfolio and the likelihood of creating undesired prosecution history estoppel.

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These narrower claims should focus on commercially meaningful technological innovations for at least two reasons. First, if the claims cover commercially valuable technology, they are more likely to deter competitors, to attract licensees, to be infringed—in short, to offer a return on your investment in the patent application. Second, a link, or nexus, between the claims and commercially valuable technology, together with proof that the technology has been commercially successful or copied, provides objective indicia that the claimed technology is not obvious. Put differently, we propose setting up an argument for secondary considerations of non-obviousness based on commercial success when drafting the application. About 60 percent of the rejections sustained by the PTAB are obviousness rejections, hence our recommendation to prepare positions on non-obviousness at the application stage.

4. File many meaningful dependent claims

In many patents, the dependent claims simply list conventional steps, components or combinations that complete or complement the elements of the independent claims. Unfortunately, dependent claims like this do little to nothing in terms of preserving patent validity. Instead, consider filing dependent claims that provide meaningful fallback positions for patentability challenges, yet still cover commercially valuable technological innovations.

If the budget allows, include more than the allotted number of dependent claims in your application in order to make your patent more difficult and more expensive to invalidate. To see how, consider the USPTO fees for extra dependent claims: The USPTO fee for filing an extra dependent claim is only $80, but the USPTO fee for requesting inter partes review of an extra dependent claim is $200. This does not include the cost of searching for invalidating prior art, much less the cost of the inter partes review itself, assuming that invalidating prior art exists. Thus, making a modest investment in extra dependent claims at filing can significantly increase the cost of attempting to invalidate the patent later on.

We also suggest provoking restriction requirements or species elections with dependent claims and extra independent claims in order to avoid the estoppel provisions that apply to a patent owner who loses an IPR. Essentially, a restriction requirement or species election is the USPTO’s way of saying that the claims cover patentably distinct inventions. Filing unelected claims in divisional applications hedges against these harsh estoppel provisions, which preclude a losing patent applicant or owner from “obtaining in any patent ... [a] claim that is not patentably distinct from a finally refused or canceled claim.”

5. Keep inventor notebooks and other documents

Ever since the first-to-file provisions of the America Invents Act went into effect on March 16, 2013, the emphasis on keeping inventor notebooks and other records has diminished. But inventor notebooks and other contemporaneous records are invaluable for showing the state of the art at the time of filing. This knowledge can be difficult, if not impossible, to recreate during post-grant proceedings several years after the patent application was filed. With inventor notebooks in hand, the patent owner can present a more accurate account of why a patent being reviewed by the PTAB is patentable, e.g., by identifying shortcomings in the prior art, technical challenges overcome by the inventors, and possibly showing that the inventors proceeded contrary to the conventional wisdom. We therefore suggest keeping copies of inventor notebooks and other documents that show the state of the art, and in particular the conventional wisdom, when the patent application was filed.

We also suggest keeping material relating to products embodying the patented technology in a separate file that accompanies the patent file, including product brochures and manuals (including information on competitors’ products), press coverage, product reviews, correspondence from customers and competitors, and pertinent sales figures (including market share). If there’s a nexus between the patent claims and this material, then it may be possible to use accolades, customer reactions, strong sales figures, and copying as evidence that the claimed technology is not obvious.

6. Assess your patent strategy regularly

Most important, we suggest assessing your patent strategy in the context of both product development and the market on a regular basis. This can be as simple as asking the product development and marketing teams whether the patent claims cover commercially valuable aspects of your products or your competitors’ products whenever a patent application gets rejected or allowed. If not, then consider amending the patent claims to cover these commercially valuable aspects or filing a continuation application with appropriate new patent claims. As explained above, linking commercially valuable technology to patent claims provides the basis for arguments regarding the patent claims’ non-obviousness. It may also increase the likelihood that the patent claims will be infringed by your competitors.

In our next article, we’ll discuss how to use continuation applications, reissue applications, and ex parte reexamination to address rejections in inter partes review. We will review options for amending claims under inter partes review and for obtaining new claims informed by the prior art and arguments made in the inter partes review. And we will also discuss how claim amendments and new claims may affect strategy in concurrent litigation.

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Max Colice

Max Colice is an associate at Cooley LLP. He provides strategic counseling and day-to-day patent prosecution advice for clients pursuing patent protection on photonics, optics,...

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Orion Armon

Orion Armon is a partner at Cooley LLP. His practice focuses on patent litigation, with particular emphasis on cases involving software and electronics technologies. He...

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