5 Tips for Saving Patents From The PTAB's Ax
- Ryan Davis
- IP Law360
Jon E. Wright was quoted in this IP Law360 article discussing strategies for defending patents before the Patent Trial and Appeal Board (PTAB). Since the passage of the America Invents Act, most of the patents reviewed by the PTAB have been invalidated – the few that survived this rigorous review provide valuable insight on how best to keep patents alive
"If you've got a knockout punch because of glaring weakness in the petitioner's case, and you can convince the board not to initiate a trial, that's a huge win," said Mr. Wright, discussing the best-case scenario in which a well-crafted preliminary response persuades the board not to review the patent at all.
Mr. Wright also emphasized the importance of attacking a petitioner's invalidity arguments where they are weakest. "You're always looking for places where the petitioner has dropped the ball," he said.
Differences between the patent and the prior art the petitioner says renders the patent invalid must be rooted in the language of the patent's claims says Mr. Wright. "You can find all the differences you want, but if there is not a claimed feature in the patent that cuts to that difference, it's a meaningless distinction, and the patent judges are going to be hyper-focused on that," said Mr. Wright, emphasizing the importance of technical details in defending patents before the PTAB.
Subscribers can read the full article at law360.com.