How Patent Owners Can Increase Their Odds: Lessons Learned From Recent IPR Decisions

IPR proceedings are a risky proposition for patent owners. Statistics provided by the USPTO show that, as of August 2, 2014, the Board has upheld only 30% of the claims challenged in all completed IPR proceedings. In four recent cases (IPR2013-00133, IPR2013-00139, IPR2013-00137, and IPR2013-00138), however, the Patent Owner successfully defended all of its claims. We analyzed these IPRs to identify what approaches patent owners might use to increase their chances of success.

1. Raise the Best Arguments Early. The Patent Trial and Appeal Board appeared to respond favorably to the parties raising critical issues and coming forward with the best arguments early in the proceeding. The Board may not ultimately agree with every contention, but raising and arguing issues as early as possible could place a party in a more favorable position.