Navigating the PTAB: Strategies to Protect Your Patent from Invalidation Patent owners facing inter partes review (IPR) challenges at the Patent Trial and Appeal Board (PTAB) need to approach their defense strategically, as the PTAB invalidates all challenged claims in 70% of cases that reach a final written decision. In his recent article, Save Your Claims: How to Beat the PTAB’s 70% All Claims Invalidation Rate, Stephen Schreiner outlines key tactics to improve the chances of success in this highly technical and specialized forum. Unlike district court litigation, PTAB proceedings require a unique approach, as Administrative Patent Judges (APJs) are experts in patent law and technical fields, making traditional jury-oriented arguments ineffective. Schreiner advises patent owners to focus on strong, well-supported arguments while avoiding weak points that could undermine their credibility. One key strategy is to tailor submissions to the APJs by emphasizing core technical issues and legal arguments rather than engaging in storytelling. Additionally, disclaiming weak or overly broad claims early on can strengthen a patent owner's overall case. Schreiner also highlights the importance of arguing dependent claims, as they can still be found patentable even if independent claims are lost. Another critical factor is addressing the “reasonable expectation of success” in obviousness arguments. Schreiner notes that petitioners sometimes overlook this requirement, which can provide patent owners with an opportunity to challenge the validity of an obviousness claim. He also warns against ineffective arguments such as “teaching away,” non-analogous art, and hindsight reconstruction, which rarely succeed at the PTAB. Expert declarations must be carefully crafted, as they serve as direct testimony in PTAB proceedings, and duplicative or vague expert reports can diminish credibility. Successfully navigating the PTAB requires a precise and informed approach, ensuring that arguments align with the expectations of highly specialized judges. For a deeper dive into these strategies, read the full article by Stephen Schreiner on IPWatchdog: https://ipwatchdog.com/2025/02/20/save-claims-beat-ptabs-70-claims-invalidation-rate/id=186275/

Posted by InventorNews at 2025-02-22 15:00:01 UTC