PTAB Survival Guide

By: Josh Sloat

Prosecution Pointers to Survive an IPR

The most terrifying thing that can happen to a patent owner is receiving what’s called an IPR – or Inter Partes Review – petition. This is a tool that accused infringers can use to invalidate patents. And they have … to alarming effect. As we’ve discussed, the kill rate at the PTAB is staggering. The Patent Trial and Appeal Board – or as regular listeners of this audience more commonly know it as, the "Patent Death Squad" – has racked up a claim execution rate north of 84% and the death of thousands of valid patents at the hands of infringers looking to profit from innovations they didn’t invest in to create. This is an institution that is clearly out of balance and screaming for reform.

And while we continue to diligently work toward those necessary reform solutions, we also have to deal with the world as it is and craft the highest quality, most future-proof patents possible. So we’re dedicating Part 2 of our series on Patent Quality to creating a guide for how to help IPR proof your patent – things you can do when you write and prosecute patent applications before an examiner to maximize the likelihood that the resulting patent will survive the IPR that it could eventually experience if it’s a valuable patent.
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Guest Host: Matt Phillips

Your expert author of this guide is someone who’s spent considerable time in the belly of the beast, successfully representing both petitioners and patent owners. Our guest host today is Matt Phillips. Matt is a founding partner at Laurence & Phillips IP Law, a firm that has been recognized multiple times by US News & World Reports as one of the top fifty Tier 1 firms nationwide for patent law. Formerly, he was a partner at an AmLaw 200 firm, law clerk for Judge Alan D. Lourie at the U.S. Court of Appeals for the Federal Circuit, patent examiner at the USPTO, and communications systems engineer. Matt has a doctorate degree in electrical engineering.  

Matt’s practice focuses on the types of proceedings that can happen with your patent after it’s been granted – including review proceedings at the PTAB, reexaminations, and reissues. According to Matt, post-grant proceedings are about 80% of what he’s done for the past 10-15 years. He also created and taught the “Post-Grant Patent Practice” course for the Patent Resources Group for eleven years and is a co-author of a two-volume treatise of the same name. Matt has taught as an adjunct law school professor. He has published over 40 articles on post-grant patent topics and been an invited speaker around the country and internationally on post-grant topics. We couldn't imagine a better host to help us navigate this topic.

Episode Overview: Quality Patents Part 2

Building nicely on so much of the framework established in the prior episode of this series on crafting quality patents, Matt and the panel discuss:

• What the PTAB is, its two primary functions, and what IPRs are
• Why Matt thinks we need to reevaluate assumed best practices that were established pre-AIA
• Matt's Top 10 (11) Prosecution Pointers to Survive an IPR

​​​Matt is joined today by our always exceptional group of IP experts, including:

• Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
• Dr. David Jackrel, President of Jackrel Consulting
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Ty Davis, Patent Strategy Associate at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP​

Mossoff Minute: Injunctive Relief Studies

In this month's double-feature Mossoff Minute, Professor Adam Mossoff discusses recent studies featuring significant statistical analysis empirically proving that there are fundamental issues with the patent system when it comes to obtaining injunctions to stop infringers from stealing your IP. ​We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
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How to Listen

Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
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Resources.

To further explore the topics discussed, see the following past episodes and resources:

Related Episodes

• Crafting Quality Patents
• CAFC Chronicles: Costly Tales of Claim Construction Fails
• Patent Claims: The Name of the Game
• Claim Construction: Building Strong Patent Foundations
• Patent Anatomy: What's in a patent?​
• Patent Searching: Sleuthing Your Way to Stronger Patents​
• Patent Wars: Innovators, Revolutionaries, and the Race to Reform
• American Inventor Horror Story: 10 Years of AIA and the PTAB

Related Reading

• Patent Anatomy: What's in a Patent?
• Patent Profanity Dictionary
• Enablement and Written Description: Hindsight Gotchas

Transcripts​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.