Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
PTAB Survival Guide: Quality Patents Part 2
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 will eventually experience if it’s a valuable patent.
** 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. Matt Phillips is a clear thinker, a great speaker, and draws from a deep well of real world expertise built from both sides of the IPR table. His practice focuses on post grant proceedings 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.
** Discussed Links **
⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Wars: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ American Inventor Horror Story: https://www.aurorapatents.com/blog/new-podcast-american-inventor-horror-story
** Follow Aurora Patents **
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[00:00:00] Josh: G'day and welcome to the Patently Strategic podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting. It is for inventors, founders, and IP professionals alike, established or aspiring. And in this month's episode, we're talking about steps you can start taking now to increase your odds of survival should you ever face a challenge at the patent trial and appeal board.
In today's patent world, the most terrifying thing that can happen to a patent owner is receiving what's called an IPR, or Inter Parties Review Petition. This is a tool that accused infringers can use to invalidate patents, and they have, to an alarming effect. As we've discussed in our American Inventor Horror Story episode and again in our Patent Wars interviews, 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 [00:01:00] 84 percent 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 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 will eventually experience if it's a valuable patent. Your expert author to this guide is someone who 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 Lawrence Phillips IP Law, a firm that has been recognized multiple times by U. S. News World Reports as one of the top 50 Tier 1 [00:02:00] firms nationwide for patent law. Formerly, he was a partner in an Amlaw 200 firm. Law clerk for Judge Allen D.
Laurie at the U. S. Court of Appeals for the Federal Circuit. Patent examiner at the U. S. PTO and communications system 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 percent of what he's done for the past 10 to 15 years. He also created and taught the Post Grant Practice course for the Patent Resources Group for 11 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's published over 40 articles on post grant patent topics.
I've been an invited speaker around the country and internationally on post grant topics. Matt is a clear thinker, a great speaker, and draws from a deep well of real world expertise built from both sides of the IPR table. I couldn't imagine a better guest to help [00:03:00] us navigate this domain. Matt boils his guidance down to an easy to follow top 10 list.
According to Matt, some of this list will sound controversial, some of it will sound like common sense, and some of it will sound like he's crazy, including questioning sacred pointers practitioners have repeatedly been told not to do since baby patent agents and attorneys. While I appreciate that just hearing that could make some in the audience a little nervous, Matt lays down a great case up front for why some older school best practices need re evaluation in light of new legal paradigms and problems that have come to life in the post America Invents Act world we find ourselves in.
As a final editorial note, I do want to add that not all views expressed in this episode are consistent with the opinions of Aurora and this podcast, especially with regard to patents as property rights, and that the content shared does not constitute legal advice, so please consume accordingly. Matt is joined today by our always exceptional group of IP experts, including Dr.
Ashley Sloat, President and Director of Patent Strategy here at Aurora. Dr. David Jackrell, President of Jackrell [00:04:00] Consulting. Kristen Hansen, Patent Strategy Specialist at Aurora. Ty Davis, Patent Strategy Associate at Aurora. And Marie Smith, Patent Agent at Brake Hughes Bellarmine LLP. Now, before jumping in with the panel, we'd like to take you to the next installment of the Mossoff Minute, a monthly segment that builds on our Petent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references.
In this month's minute, Adam 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
[00:04:39] Adam Mossoff: IP. Some important new research has been released on the patent system and how it's functioning.
This research concerns the ability of patent owners to stop people from infringing. In the law it's called an injunction and the ability to obtain an injunction to stop someone from stealing your property. In the same way that you can stop someone from trespassing in your [00:05:00] home or taking your bicycle, you can get an injunction in those contexts as well.
Patent owners, as owners of property rights, get an injunction to stop someone from using their property rights in their invention or technology without their permission. Unfortunately, a Supreme Court decision in 2006 created a new test for receiving injunctions and it has long been said that this test has had a very radical negative effect on the ability of patent owners to enforce their property rights.
This claim has now been confirmed, uh, a new study by Dr. Christina Acri of Colorado College doing a rigorous, uh, statistical analysis found that, uh, since the eBay decision, uh, the ability of patent owners who licensed their patents, people who licensed their patents, like universities and inventors and small startups, um, have seen a reduction of 91.
2 percent in their ability to obtain injunctions for when people are using their patents without their permission. And even manufacturing companies have seen a reduction of [00:06:00] 66. 7 percent in the ability to receive injunctions when people are using their patents without their permission, stealing their inventions.
Um, this is really significant because this is now serious statistical data that confirms that there is a Fundamental problem in the patent system today that patents are not being secured by courts as property rights, um, and the ability not to be able to say no to someone stealing your property undermines and devalues your property.
Um, if someone can come and start living in your bedroom, um, and you can't kick them out, if you want to sell your home, someone's going to discount the fact that there's now a stranger in the bedroom. Um, and the same thing happens, uh, in, in patent law. They discount the fact that you cannot enforce your.
exclusive right, your property right, um, against others. And so they pay less for that in the marketplace. This has really undermined and destabilized the role of patents as property rights in the modern innovation economy. And hopefully this data will serve as the basis for evidence based policymaking by [00:07:00] Congress as it considers reform here, um, much needed reform in writing this important system that has driven our innovation economy for 200 years.
[00:07:09] Josh: We usually only do one of these per month, but given how much this issue is heating up, we recorded a second injunctions related Mossoff Minute with Adam, where he also discusses his own research into the historical application of the four factor test the Supreme Court wrongly relied upon in its 2006 eBay decision that sent injunctive relief into its present death spiral.
Here's a clip.
[00:07:29] Adam Mossoff: The Supreme Court changed the rules on injunctions, um, in 2006, although there's been a very big debate today about whether it in fact did change the rules. Because the Supreme Court justified its decision in this, in this case, by saying that it was applying a long standing historical test, uh, for how patent owners have received injunctions.
Well, I took a look at all of the patent cases in the 19th century, approximately 899 of them, and I found that the number of times that the courts applied this [00:08:00] test that the Supreme Court said in 2006 is a long standing historical test, is not correct. Zero. Yes, you heard that right. Zero out of 899 cases.
Um, so what is this? Why is this important? Well, she proves and confirms a, uh, that the fact that the Supreme Court did change the law and then this ties into and confirms why then it's become more difficult and, uh, for patent owners since this decision to obtain injunctions for people who are stealing their Their inventions and their technologies.
Hopefully my research will serve as a basis for evidence based policymaking by Congress as it considers reform or perhaps even by the Supreme Court if it chooses to reconsider its fatal error in that 2006 decision.
[00:08:44] Josh: Thanks, Adam. On the eve of recording this intro, exciting news also broke that the Restore Act was introduced in Congress.
This act aims to restore the presumption that courts will issue an injunction to stop patent infringers. This bill has been sponsored by Senator Chris Coons, Senator Tom [00:09:00] Cotton, Representative Nate Moran, and Representative Madeline Dean. Stay tuned as we'll be unpacking this exciting news with Adam in next month's installment.
We're also publishing clips from the Mossoff Minute and short form videos on Instagram Reels, YouTube Shorts, and TikTok. You can check out these shorts and follow us at Aurora Patents on all three platforms. And now without further ado, take it away, Matt.
[00:09:21] Matt Phillips: Thank you very much for that introduction. And thank you, Ashley and Josh and everyone for inviting me here.
I've listened to a number of your podcasts and they're always, uh, extremely informative and it just sounds like you guys are having fun while you do them. So I'm thrilled to be here. Thank you. So I'm a patent attorney who specializes in post grant proceedings. Uh, that's probably been about 80 percent of what I have done over the last 10 to 15 years.
Um, before the AIA, uh, before IPRs and, um, the PTAB, uh, I mostly worked in [00:10:00] reexaminations. Um, and I still do that occasionally today, but they are much, much less popular than, um, IPRs. Um, and, and you mentioned, uh, reissues, Ashley. I, I file a lot of reissue applications as well. Um, and I do a little bit of prosecution.
Um, it tends to be for continuation applications where we're going after a specific target infringer. Um, or we're, we're setting the case up for an appeal to the PTAB. And, and, um, uh, that that's when I get involved as I'm, as I may have mentioned, before we started recording, I used to do litigation, patent litigation.
Uh, I stopped doing that about 10 or 12 years ago when I left a partnership position at a big AMLA 200 firm and started my own firm. Um, which was the predecessor of my current firm, Lawrence and Phillips, and at Lawrence and Phillips, all we do is PTO work, um, [00:11:00] mostly post grant, but, uh, some prosecution as well.
We are not set up to do district court litigation. We all have experience doing it, but. I don't personally like doing district court litigation. So, uh, I'm, I'm happy to team up with litigators and in almost all of my IPRs, that's what I do. So I'm coordinating with litigation council. Um, I'm handling the PTAB proceeding.
They're handling the parallel proceedings in district court, which may or may not get stayed. And just a little bit more about Lawrence and Phillips. We're a tiny firm. There are only four attorneys at Lawrence and Phillips. We're all highly experienced. We have no associates. We work our cases ourselves personally, um, from, you know, everything.
We do it all. I mean, we have a staff that helps, but, um, all of the legal work we, we do ourselves. And, um, we, we've been fortunate that U. S. News and World Report [00:12:00] has ranked us three years in a row in their national top tier for patent law. So that's the top 50 firms in the country. Uh, I don't know how this has happened, but it's happened and we're proud of it.
Um, one year I checked and the, the next smallest firm on the list had about 80 attorneys. Um, we are a completely different model. Um, you know, we're former big law partners. We go up against the big law firms and, and, you know, maybe it's our record. I mean, we're proud of our record. We, um, we've done well at the PTAB, even representing patent owners, um, where the statistics are a little bit less in your favor.
Okay, so I know everyone in this virtual room knows what the PTAB is and what they do, but for the broader audience out there, I thought I would pause for a moment and give a little bit more background. The PTAB is the Patent Trial and Appeal Board. It's a part of the Patent and [00:13:00] Trademark Office. There are 200 something Judges, administrative patent judges that make up this board.
Um, they're all experienced attorneys experienced in patents and patent litigation, um, and they're now working as government lawyers, um, as, as judges on these cases, and there are two primary functions that the PTAB performs. One is they hear appeals from examiners, patent examiners who have made final rejections of patent applications.
That's actually the biggest part of what the PTAB does. That's the, um, appeal part, the A in the PTAB. And then the T in PTAB is the trial division, and that's where, uh, they conduct trials to review. And those trials take two forms. IPRs, or Interparties Review, and PGR, or Post Grant Review. Over 90 percent of these trials are [00:14:00] IPRs, not PGRs, so I'll probably just refer to IPRs, but most of what I have to say today will apply to both.
very much. An IPR begins when a petitioner files a petition and the petition sets forth reasons why one or more claims in the patent are unpatentable due to prior art. So either it's a novelty issue or an obviousness issue, and that frames the the case. The thing is, and and this is what. Practitioners, prosecutors need to know is that you can expect an IPR for every valuable patent.
Every valuable patent will get litigated. Um, no one will give your clients money for free short of litigation. Um, and every litigated patent. Almost, um, you know, 90 percent has a, has an IPR, at least one, sometimes multiple ones. So it is an [00:15:00] important topic to, to understand as a patent attorney or patent practitioner.
Um, and I will note that these are relatively new proceedings. They were created about 11 years ago by the. America Invents Act, the AIA. Um, before that we did not have IPRs or PGRs. Okay. So my, with that, but a little bit of background, my goal here today is to give you some ideas of things you can do when you write and prosecute patent applications before a patent examiner to maximize the likelihood that that Patent that results from that application will survive the IPR that it will eventually, um, experience if it's a valuable patent.
In other words, how to IPR proof your patents and. I'll warn you some of what I'm going to say will sound controversial. Um, some of it you'll say, um, gee, that that's common sense. You're not telling me anything. I I hadn't [00:16:00] already known that. That's fine. And some of it. You'll say, Matt, you're crazy. You're you're telling me to do something that.
I have been repeatedly trained and told since I was a baby patent attorney not to do and, and I'll explain why, um, so I'll present this in the form of a top 10 list. But before I, I get to that, I want to give a little bit of historical perspective that explains how I come to this topic. I want to. To go back and give this digression, and I'm sorry it will take a few minutes, but I think it's worthwhile.
We're probably all accustomed to following best practices for writing patent applications and prosecuting them. And what I'd like to do is kind of dissect those practices. Why? Why are they the best practices? Um, and, and to do that, I want to, and, and by the way, all of these best practices, [00:17:00] traditional best practices, which I put under the old paradigm of patent prosecution, the common premise behind all of them is that we must do everything we can to preserve the scope of the claims.
We're trying to preserve claim scope and to minimize the The likelihood that our patent claims will be interpreted narrowly. And the reason for that is that in the past, before the AIA, the way patent litigation would typically proceed is that an accused infringer would seek a quick out from the litigation by going for a summary judgment of non infringement.
Based on a narrow claim construction, um, that was extremely common, especially after the Markman case in the early nineties, which made claim construction a legal issue for the judge to decide, you know, made it perfect to [00:18:00] tee up these issues for summary judgment and avoid a jury juries, by the way.
Judgment day verdict day is the number one fear that an accused infringer faith, uh, thinks about. The fact is that litigations patent infringement litigations that go all the way to a jury verdict are extremely likely to come out in favor of the patent owner. So defense strategy has always been let's Avoid getting to the jury.
Let's do it as quickly and cheaply as possible. And before the AIA, the best way to do that was summary judgment of non infringement. And so that's how cases were teed up. And clever defense counsel would come up with clever arguments for why a patent should be construed narrowly. And so we have this evolution of claim construction case law that would sometimes, not always, but sometimes construe claims [00:19:00] narrowly for various reasons like statements in the specification, um, things that were said during the prosecution.
And patent attorneys are by and large very smart people. They, they're watching what's happening and they react. And the reaction was understandably, okay, we need to stop doing whatever behavior the court just said led to a narrow claim construction. So we're going to say as little in on the record as possible to distinguish the invention over the prior art.
We are going to say as little as possible in the specification that could limit the claim construction. So we're not going to refer to example the invention. Um, we're only going to speak of embodiments that may or may have features. Um, you know, and some people took this to, Uh, further extreme than others.
Um, some people would stop writing background sections in their patents, stop writing summary sections. Um, [00:20:00] I think it was widely recognized under this old paradigm that you, you never use language that became known as patent profanity, um, you know, language that would imply that features are essential or necessary, uh, or even desirable.
I mean, really, the, the, um, The prototype, um, patent application was plain vanilla that said nothing, even remotely interesting. Just, it just, just gave the bare facts of this is what it, this is what the, um, this is what somebody has done. Okay, so that's the old paradigm, and it made sense. But today, if you look at how patent litigation proceeds, Play one in every defendant's playbook, page one in every defendant's playbook is, is not usually a summary judgment of non infringement based upon a narrow claim construction.
Instead, it is to file an IPR petition to invalidate the [00:21:00] claims and simultaneously ask the court to put the litigation on hold with a stay. Um, that's even cheaper than going through to litigate to summary judgment. Um, and if, if it succeeds, it's, it's lower risk. So, My whole premise is that we are in a new paradigm, not the old paradigm, and our best practices should reflect that.
And, as a result, our best practices should be geared towards preserving validity. Not just preserving claim scope, but validity.
[00:21:35] Ashley: Pat, how does that, not to jump the gun, but how does that So because validity is part of the issue, but then the other issue is, um, wanting to catch infringers, right? So if you kind of, you know, do potentially too much of the new paradigm and you survive through the new paradigm, are you setting yourself up for failure from a litig like from a, You know, infringement [00:22:00] perceiving, um, where maybe you want a little bit more of the old paradigm.
[00:22:05] Matt Phillips: Yeah, yeah, absolutely. Um, it, I guess I'm simplifying it to say that, um, you know, we're replacing, uh, uh, scope preservation practices with validity preservation practices entirely. The reality is, as I think you just recognized and articulated well, is it's both. Okay, you you have to have a patent that will first survive the validity challenges at the PTAB and then have the scope left to to be able to to show and prove infringement.
So it's a tightrope that we have to walk down.
[00:22:43] Kristen: Right.
[00:22:43] Matt Phillips: Absolutely.
[00:22:45] Kristen: But, um, honestly, I like any new paradigm that takes the old paradigm and picks and chooses some pieces and says, we're going to replace this with this new rule because it makes more sense. You know, I think that's great. I think [00:23:00] 101 practice is, is something similar where we said, well, maybe we want to talk about The conventional arts in a patent application description.
And we want to say how this might be an improvement over that. Um, you know, the old paradigm says, yeah, you maybe don't want to do that, but the new paradigm might say something like, well, you do in software, if you want to overcome, you know, one on one rejections. Right. So I'm all in favor of questioning the rules, right.
And I ain't even breaking the rules if it, if it makes sense. And we have good reason.
[00:23:35] David: Yeah, I agree. I totally agree with what Kristen said to add my two cents. I mean, yeah, it, it, it, everything you're saying makes sense to me. And with some of the recent cases about one on one, but also enablement, um, with unpredictable art and, or, or, um, uh, some of the areas that I tend to work in.
Um, but also, uh, we're writing patents more and more taking into account [00:24:00] Europe and European, uh, Prosecution very much. It's important to tell the story and put more, more motivation and a lot of these other things that also I think resonated with what you're saying. So yeah,
[00:24:14] Matt Phillips: glad to hear all of that.
Thank you. So I have. Top 10 pointers, um, to survive an IPR and they're on two slides and I'll just go through them all quickly here and then I'll go back and discuss each one in some more detail. Um, number one, conduct thorough prefiling prior art searches. And note the plural there, searches, not just a search, but I'll come back to that.
Number two, include claims, claims, claims, and more claims. Number three, draft a crystal clear, super detailed specification that unquestionably satisfies 30. 5 U. S. C. 112a. That's the enablement and written description requirement. 4. Draft the application as if the claims are as granted, are set in [00:25:00] stone, and will be interpreted under BRI.
Broadest reasonable interpretation, not just Phillips. 5. Consider defining some claim terms. Six, consider using some patent profanity. Seven, consider telling the story of the invention. Eight, build an evidence laden prosecution history. And I'll explain more of what I mean by that. Nine, keep a continuation or divisional pending.
Um, that, that's Common sense that that's not controversial. Number 10. If no continuation is possible, consider reissue and then I have an 11th tip on my top 10 list because like that amplifier in spinal tap. My list goes to 11. It's just one better and number 11 is file for an obtained foreign patents.
Okay, so let, let me run back through these in some detail. Number [00:26:00] one, prior art searching. The fact is that every piece of prior art that you have carefully considered when you're drafting the application, um, is one less piece of prior art that an IPR petitioner can cite in an IPR petition. If you think about it, there's a finite universe of relevant prior art for your invention.
If you find it all and consider it all, um, you know, I'm not saying you have to discuss it all in, and it's certainly not in, in your specification, but if you draft your application in full awareness of it and have a strategy for why, uh, why your claims are patentable over all the close relevant prior art, theoretically, there's nothing there for an IPR.
Petitioner to site. The fact is that the P tab does not like to reconsider what has already been considered by a patent examiner. So if you have prior art that you put before the patent examiner and the examiner has [00:27:00] actually considered it, it's very, very difficult for petitioner to use that prior art.
[00:27:05] Ashley: Are you, would that suggest that information disclosure statements should be even more extensive assuming that it's not within scope, right? It's reasonable. It's not filling them out to fill them out, right?
[00:27:20] Matt Phillips: Um, I'm not necessarily saying you should go back, you know, 40 years to the old way of doing IDSs where you did have to put in.
Explain why the invention was, um, uh, you had to explain the relevance of every art piece of art that you cited. No, but if there is close prior art that you really want to take off the table for a later IPR petitioner, um, you either need to have something on the record about it, or you need to have your claims so clearly, you know, drafted around it that it's no longer an issue.
That's that's what I think [00:28:00]
[00:28:00] Ashley: for the ideas is not enough. So if you just from a from a P tabs perspective, if there's something really slow and you just submit it in the examiner considers it. But never actually uses it in a rejection.
[00:28:13] Matt Phillips: It's still fair game for a petitioner at that point. Yeah, it really hasn't been discussed on the record.
But if it's been discussed substantively on the record, Um, then it's very hard for a petitioner to use it.
[00:28:29] Kristen: Thank you.
[00:28:30] Matt Phillips: Yeah. Um, so searching is an art. It's not a science. Um, you can give the exact same, um, A patent to different searchers and they'll come back with different results. So I like to double search at least almost everything.
Um, I think it is money well spent. I think the more budget constrained a client is, the more important it is to spend the money upfront doing patentability searching because it will pay off in the long [00:29:00] run. And, and the last thing you want are budget constrained clients making huge investments, you know.
their retirement accounts, their life savings in something that they haven't thoroughly vetted against the prior art. That just leads to sad stories. And you know, the fact is that patents are not like property rights like land. You know, a patent is only as strong as and as firm as the prior art that it's been vetted against.
You know, so before you build a skyscraper on your patent. Figuratively, you want to make sure that that ground is firm. Um, number two claims. There are several reasons why having lots and lots of claims will make it more likely that you can, your patent can survive an IPR. Uh, one reason is that, um, It simply makes it more expensive for a petitioner [00:30:00] to file an IPR petition.
They're actually per claim fees after a certain number for the petitioner. And then the government filing fees for an IPR petition are not insignificant. There are several tens of thousands of dollars per petition, um, and, and if you have a lot of claims, sometimes a petitioner needs to file multiple petitions to reach them all.
So, so claims can make a petitioners. Life more expensive at a minimum. Secondly, the more claims that a petition has to address, the more word count pressure, um, is put on the petition. Petitions have a word count there. There are 14, 000 words, which can be challenging. Um, and the fact is that the. The way you win IPRs as a patent owner is to find and exploit the holes in the [00:31:00] petition.
At least that's my strategy, and it works well. There's no perfect petition out there. Um, if you find the places where the petitioner has taken shortcuts and not made their case, that's where you are most likely to win. to find your, your winning arguments. And so, if you put word count pressure on the, the petitioner because they have to deal with lots of claims, you're more likely for them to make shortcuts and to give you those openings.
[00:31:28] David: Matt, is this also, uh, is that like, is it also common that maybe an independent claim would get, would not survive the IPR, but some dependent claims do? Is that another reason to have, like, have all these planned retreats, so to speak? Okay.
[00:31:42] Matt Phillips: Yeah, I'm David. I'm glad you mentioned dependent claims. They are critically important.
Um, it's because of intervening rights. If you have, you can amend your claims during an IPR, but if you have to amend into your claim, some feature from the [00:32:00] specification, it's going to create intervening rights, which means you lose past damages for all infringement before the conclusion of the IPR. If you have a dependent claim that already recites that feature, you're golden.
You're golden. And you have to be careful because you'll say your independent claim says a widget comprising A, B, and C. That's claim one claim to says, uh, the apparatus of claim one further comprising X, Y and Z. That's not ideal. You need to get over the prior art, but yet still have an infringement case.
Claim two doesn't do that for you. Um, and it's so you would have to. Amend Claim 1 to add just X and you'd have intervening rights, so the way to do it is to take each and every optional feature, put it by itself in its own dependent claim and. Do that [00:33:00] exhaustively and have those dependent claims under every independent claim.
It may be in there a lot of claims, but that's where the value is in a patent. Paying claims fees to me is something that makes a lot of sense.
[00:33:15] Ashley: Real quick on the, on the kind of dissuading petitioners. Do you find that, you know, extensive claim sections really do dissuade petitioners? You know, some of the, you know, just challenging that a little bit because The top petitioners are multi million, maybe even billion dollar companies and for a lot of them, right?
And so, and they've been shown to like refile petitions with minor modifications, you know, and. I would argue some of the some of the game that they're playing is just to bleed a small company dry, you know, with serial petitioning and, you know, for them, it's not about winning. It's about bleeding somebody dry where, you know, money is.
That's [00:34:00] really no object.
[00:34:01] Matt Phillips: Yeah, maybe not in every case. Um, but, you know, even, even the Samsungs and Apples, etc., of the world do have budgets on particular cases. Um, so, you know, I, I do think it helps. Um, but yeah, if, if you've got a case that's, that's Where there's a billion dollars at stake, um, it probably having lots of claims isn't going to dissuade your infringer from filing lots of IPR petitions.
Yeah, I also want to mention means plus function claims. Um, they're disfavored because they tend to be narrow. You have to draft them very carefully and you have to draft the supporting specification very carefully, but they are more difficult to challenge at the IP at the P tab. Um, it takes a lot of words in your petition to go through the analysis.
of a means plus function claim. So, um, I'm a big advocate of those. [00:35:00] Of course, don't rely on those exclusively, but as an adjunct to all of your other claims, um, I, I think they can be valuable.
[00:35:08] David: Just a quick clarifying question on that. If you have some, some limitation in the claim and it's configured to do something, does that automatically put it in that means plus function category?
It, it shouldn't.
[00:35:21] Matt Phillips: Um, you know, that's my experience. Okay. Yeah, there's a risk, obviously, that it might, um, but I think, you know, sometimes you need to express something in functional language, and I think the safest way to do it, to avoid means plus function, is language like configured to.
[00:35:41] Ashley: Do you have any recommendations from that means plus function, then, when you, when you draft, when you, like, What's a good means plus function claim or spec?
Is there like a few attributes that
[00:35:55] Matt Phillips: Yeah, I think going through the exercise of thinking about [00:36:00] how to claim this in means plus function format is valuable because a good means plus function claim has those limitations truly expressed in functional limitations. Functional language that's not Dependent on structure, whereas your other claims should be more structurally based.
Um, so, so, so that's I think the important part. And of course, the specification needs to clearly um, have support for all the corresponding structure for those means. And you want to draft that broadly as if. That's really claim language because that's essentially what you're doing, um, when you identify the corresponding structure so that a lot of people fault fail there.
They don't have the clear association of what the, um, a corresponding structure is. Thank you. You bet. Number four, I'm just going to do this quickly because this is less relevant today than it used to be. In prosecution, [00:37:00] we have the broadest reasonable interpretation. Um, but the claims can be freely amended.
So if the examiner takes a broad interpretation of your claim language that you don't like, you can amend around that. That's typically what we do. In litigation, your claims are frozen. But the claim construction standard is different. It's the Phillips standard, which is sometimes narrower and there are doctrines that try to preserve validity during claim construction.
There was a time at the PTAB when you had the worst of both worlds. You had the broadest reasonable interpretation and it was next to impossible to amend your claims. That's not the case anymore. Um, Now in IPRs, you do have the Phillips claim construction and there's a pilot program, which has been around for several years now.
It's it's almost permanent that allows you to amend the claims much more easily. [00:38:00] So this is less of a concern now, but you the next director could come along and change the regulation and eliminate the pilot program. And in fact, we do see this, um, unfortunately, from director to director administration to administration, the rules get changed.
Number five, consider defining some claim terms. This, um, this is something that, you know, some people are big advocates of using definitions of claim language and they think it's a panacea for all of the problems with patents. That's not my thinking. I'm not a big advocate of definitions. Um, the risk of a definition is that Once you make a definition, you are stuck with it, right?
And, and you're, you're writing it in advance. It may not be the definition that you want down the road. Um, and the other problem with definitions is it doesn't always resolve the, the dispute. You, you shift from having [00:39:00] a claim construction dispute to having a dispute about what does the definition mean sometimes.
But I think in the new paradigm, it is worth considering whether. Uh, definitions would be useful if you do that. I mean, be careful not to, uh, well, just be careful. And what I would recommend is Don't do it in the specification. You, you can put a definition in the prosecution history, um, so I would wait until you absolutely have to do that during prosecution, and that's where I would put it, and I would be very careful about the definition, and consider having nested definitions, so that you have something to fall back on if, if, if If you need to, um, number six, here's where you're probably thinking, um, Matt, you're crazy.
Hey, did I skip one? [00:40:00] I think I skipped number three. Can we go back and do three? I'm sorry, um, this one's actually more important, I think. Number three, you want to write a really good specification, and you may be thinking, Matt, you're crazy, the challenges in IP are based on prior art. Um, why do you need a good spec if, if the issue is about the prior art?
Well, um, maybe I am crazy, but the fact is that if you have a really thorough specification that describes all of the features of, of the, The claimed features, um, then it's easier to point out the shortcomings in the prior art. That they don't, the prior art doesn't describe those features. I hate it. I absolutely hate it when opposing counsel stands up and says, you know that, um, claim limitation and, and, and how Phillips was saying it's not clearly disclosed in, in the [00:41:00] prior art document.
Well, the prior art document describes it just as well as the patent under review. That, that's a real zinger when that happens. So you don't want to be in that situation, you don't want to be the person throwing stones from your glass house. Um, secondly, if you write a specification that is unquestionably well enabled, then it makes it easier for you to argue that the prior art, being asserted against your claims, is not enabling.
Remember that prior art, to be clear, To count as prior art has to be enabling at least anticipatory references, and the combination needs to be enabling for for obviousness, um, rejections. So, um, this this comes up. This is an argument I have successfully made. You know, I work in the computer and software arts and sometimes the prior art document is like a user's manual, a user's guide that you're it describes [00:42:00] Describes a feature, but it describes how the user would use it, not how the software or device was designed to have this feature.
And so documents like that are susceptible to be knocked out as not being enabling prior art. But to make that argument, you have to have, you know, enablement in your patent of that feature. Um, and the third reason, um, Oh,
[00:42:25] David: is that different from prosecution, uh, um, in terms of what, how enabling, how enabled or enabling a reference prior art reference has to be?
Is there a higher standard during the IPR?
[00:42:38] Matt Phillips: I don't think so. There may be a subtlety in there about the burden of proof that I haven't thought through, but I don't think so.
[00:42:46] David: So this is, you would say this similar things during prosecution that if a reference is brought up by an examiner that's not enabled, that's a, that's a good argument to knock out that prior art.
Okay.
[00:42:58] Matt Phillips: Yeah, it can be, [00:43:00] I
[00:43:00] Kristen: usually argue those with the examiner's not met their burden, you know, they use this prior art, but it's not deep enough. It doesn't have this.
[00:43:08] Matt Phillips: Yeah, exactly. Yeah, I've literally had cases where the reference is something like, you know, the idiot's guide to using such and such. Right.
And, you know, hopefully the patent is, um, you know, at least as good a teaching document as the idiot's guide.
[00:43:28] Kristen: Sometimes those are thorough, shockingly so.
[00:43:33] Matt Phillips: Yeah, sometimes. Um, I, you know, I'm not, um, you know, criticizing those as, as, as literature. Um, but they, they're usually written from the perspective of how to use, not how to make the feature.
Um, and the last point here, oh, I'm sorry, go ahead.
[00:43:50] Kristen: That's okay. I will say, I find it one of the most difficult pieces of my job to get an inventor to start thinking about their invention behind the scenes, [00:44:00] instead of explaining it to me, how it's going to work. Be viewed by a user or used by a user. I don't know how many times I have had to say, yes, that feature is great.
How does it work in the backend? How do you envision this might work if you haven't coded it? Or, and, and those questions just, you get blink, blink, blank stares, right? And sometimes it's because they haven't done it. And sometimes because they, they. Don't understand why I want that information, right?
They're like, what, what could you possibly need that information for? Nobody cares how it works. They just want to see it. Like that's the product world, not the patent world.
[00:44:39] Matt Phillips: Exactly. It's
[00:44:40] Kristen: difficult.
[00:44:41] Matt Phillips: Okay. One last point on, um, Pointer number three and that is that if you have a well written specification, it's easier to take the position that the level of ordinary skill in the art is low because you've met the enablement requirement at a low level and that a low level makes [00:45:00] it easier to show that that things are less likely to be obvious.
So that that can be helpful.
[00:45:06] Ashley: Thank you for your opinion on background sections. How does that relate with the. What's your opinion on that? What should a background section have in it? Yeah,
[00:45:16] Matt Phillips: um, I, I do still include background sections in, in patents, uh, that I write. The, the, I don't write a lot anymore, but I, I do.
Um, you know, obviously they need to be carefully written, um, and they tend to be short. Um, but, You the other pointers I'll bring up is maybe it's time to rethink that and maybe it's time to go back to the really, really old way of drafting patents, where you had a more robust background section or the way they do it in Europe, where you have to identify the closest prior art, whether you want to or not, um, uh, you know, things like that, I think will help you at the P tab, [00:46:00] but, um, You know, it's counterintuitive because we've been trained in the old paradigm not to do that.
[00:46:08] Kristen: Well, and one of the reasons we've been trained in that old paradigm not to do that is because typically that background content can only be used against you. So I would argue that if you want to do that, the old school way of explaining, you know, what the process per art is, why this is such an improvement, what the needs are, there's no reason you can't take that piece of that content and just shove it into your summary.
before you iterate the claims. Um, I think, I don't know how that looks in post grant proceedings. I don't know if that's considered differently than if it were to come from the background section, but whenever I'm tempted to do that, I end up saying, nope, that's a background section, pull that out, put it somewhere else.
[00:46:56] Matt Phillips: Yeah, I mean, I mean, what you're suggesting [00:47:00] is almost like get rid of the header that says background. Yeah, because that's just a big neon sign that flashes that says, okay, here's here's the stuff you can use against me, um, admitted prior art, which you can use at the P tab. You can rely on applicant admitted prior art as part of your challenge ground, not exclusively, but as part of your challenge ground, you have to rely on some printed publications.
In addition,
[00:47:28] Kristen: that's good to know.
[00:47:30] Matt Phillips: Yeah. Um, actually what we're talking about is, is something I meant to bring up on point seven since we're out of order. Why don't we just skip to that? Um, you know, I, I'm old enough. I've been doing this long enough that I remember when patents were written in the really old style where there was a background that would You describe problems, and it would conclude by saying there is a need for such and such.
And then there'd be a summary section that says an [00:48:00] objective of this invention is to provide such and such, and it would match up with the need it. And it's like, you know, the patent told a story of the invention, and the invention was this hero that solved this problem. Of course, that's disfavored in the old paradigm, and rightfully so, but maybe it is time for a comeback, because there will be cases where an approach like that will be the story you want to tell to the PTAB, you know, to help you distinguish some prior art.
[00:48:35] Kristen: Well, I mean, I can say, Marie and I were both trained, Marie Smyth on the call, we were both trained by what I would call combination litigators prosecutors, as in they litigated first and then they fell into prosecution and they still consulted. So they kept in both fields, a little bit like you do. And The biggest piece of advice for a specification for us that we learned was to have a [00:49:00] jury figure and it's usually one of the first few figures and that would suffice for presenting the invention, you know, basically to somebody at the level of skill of your grandmother, so that you could clearly elucidate the inventive concepts and get them to understand it.
But I, I mean, I think the PTAB is a little higher level than that, but I do think Don't see any problem with continuing to do something like that if you can.
[00:49:26] Matt Phillips: Yeah, that's good advice. I mean, that's useful. The, the advice I I got from litigators early in my career was, um, Matt, wait to write the specification until the eve of trial.
Then we will tell you what we want the story to be. you can.
[00:49:41] Kristen: Yes, of
[00:49:42] Matt Phillips: course. Yeah. Always. It's funny but you didn't
[00:49:45] Kristen: do it right.
[00:49:49] Matt Phillips: Um, okay. I do wanna say a little bit about profanity. Um. You know, you know what I'm talking about, um, you know, statements of necessity in the specification or [00:50:00] prosecution history, statements about the invention, you know, the things that would limit potentially what would otherwise be facially broader claim language.
Um, Maybe it's time to for some limited use of profanity. Um, but I would be very careful. Of course, um, you don't want to F up your infringement case. Sorry for the profanity. Um, and if you do this, I would recommend that you do it in a very targeted way, maybe about a specific embodiment. Um, or maybe it's done in a continuation where, you know, from the related litigation or PTAB proceeding, what the issues are, and you can say, you know, with precision, what you think is essential, what you want, you know, the, the record to reflect as, as, as essential.
Um, so I, I think there are cases where, you know, profanity will, will have its place. [00:51:00] I think the next point is number eight, prosecution. You know, here, it's funny. If, if you go into court, attorney argument doesn't cut it. You have to have evidence to support your positions. And the same thing is true with the PTAB.
But in prosecution, it's almost the norm that we just rely on attorney arguments with few exceptions. We don't really question why. You know, why just argue your point when you can prove it? Um, examiners have very little recourse. I mean, they can pick nits at your evidence, but they, they don't have access to, um, evidence of their own, unless it's in a document somewhere that they can find.
Um, and the, so what I'm talking about is putting in declarations. Um, from inventors or experts, someone at the client who can, you know, talk about the state of the art or criticize the reference that's [00:52:00] being applied, um, talk about the predictability or lack of predictability in, in the art, you know, things like that, things that would really benefit from actual evidence rather than just attorney argument, you know, so much of what we do is we've just been trained to kind of push back on and point out that the examiner hasn't made a prima facie case.
What I'm suggesting is maybe take a step further and, you know, put into actual rebuttal evidence, because once you do that, um, I think it's harder for an IPR petitioner to, um, uh, to make their case. You know, every IPR petition is Accompanied by an expert declaration and at the preliminary response stage, the patent owner has an opportunity to put in an expert declaration as well.
But at that stage, there's a real disadvantage in doing so. So you have to be super careful, and it makes sense in certain circumstances, but usually not. So there's an evidentiary advantage for the [00:53:00] petitioner at the institution stage. Because usually the prosecution history is completely devoid of evidence, and the only real evidence that the board sees at that point is what the petitioner included with their petition.
And so maybe you could equalize that a little bit by putting in some evidence to support your positions during the prosecution.
[00:53:22] David: Um. Have you found, or do you know from from other, your experience, that Do they get attacked during litigation more often? And are those are those weak points, if you will, for someone to attack in litigation?
[00:53:39] Matt Phillips: You know, going back in time, um, Before Theracents, I think the biggest risk of putting in declarations was, uh, the risk of inequitable conduct, that something said in there would turn out to be untrue or questionable, um, and that would open up the whole [00:54:00] can of worms about inequitable conduct. I think that's a much, much lower risk today, um, because of Theracents and the particularity of pleading requirement for inequitable conduct and such.
Um, But you if you put in a declaration, you do have to be super careful about things like that as as well as you know, not being overly limiting, um, but I do this all the time. Um, I put in declarations when when I can, if I, if I have a good inventor, that's a good teacher that has credentials, um, I like to take them with me to an examiner interview and then put in, um, maybe just a small targeted declaration on one point.
You know, to support our criticism of the prior art or something, um, and I, I, I find that examiners most always accept what's [00:55:00] presented that way. And why should they? That's interesting
[00:55:02] David: you said that, a declaration from the inventor, not even a third party that might be, you know, seen as less biased or what have you.
[00:55:12] Matt Phillips: And, you know, as someone who has been accused of inequitable conduct and survived that, you know, I'm very careful. Um, that is not a pleasant experience to go through. Um, so you, you have to be super careful with any declaration. Um, number nine, um, continuations or divisionals. You know, Not filing a continuation has been described to me as the number one cardinal sin that a patent attorney can commit, and I think that's right.
I have on many occasions kept a continuation pending through the family until the whole family expires. I've actually done that many times, believe it or not. Continuations create a whack a mole problem for petitioners. You know, they can petition your first patent, [00:56:00] but then you get another, they have to petition that and then you get another and so on.
Um, and if, and if you're reacting to the prior art and drafting your claims around it, um, you know, it can, it can. Become quite challenging and this is the best way to amend your claims much better than doing a motion to amend during an IPR. Um, you do have to be aware of a provision in the rules that is called patent owner estoppel, which basically means if you get to a final judgment at the P tab and you've lost a claim, you cannot.
Obtain a claim at the patent office that is patentably indistinct from the claim that you lost. Um, so usually you get around that by adding some limitation that, that goes around the, gets around the prior art. Um, and if you get a restriction requirement, that can be helpful to show patentable distinction.
[00:56:55] Ashley: Beth, does your view of continuations at all change given the recent Sonos [00:57:00] decision? I mean, I know a little interesting thing in the continuation they had There was some question of like new matter that was entered into the, the family at some point, but you know, like they, I can't remember what it was, Google or whoever, but where they basically said that the, the continuation, um, you know, was basically invalid or, you know, wasn't, I can't remember the exact language, but because they waited so long to file it, and it was clear that they were trying to capture new market, um, Entrance with that continuation, what's your, what's your view of that and how does that change the perspective of continuations?
[00:57:42] Matt Phillips: Yeah, I, I, I'm not familiar with the details of that case. It sounds like prosecution latches, um, which, you know, has a doctrine that hasn't had much traction. I mean, people have talked about it, but there have been very few cases, um, where it, it's [00:58:00] really been problematic. Um, but I think on balance. It's better to have continuations and deal with those issues if they come up than not, right?
So I'm not deterred, not deterred. Perfect. Okay, so next point, if it's too late for a continuation, don't forget about broadening reissue, um, you, you have to file that broadening reissue application within two years after the patent grants, um, and you will be limited usually by the rule against recapture.
Which can be quite complicated, but I find it intellectually fascinating. It's one of my favorite doctrines in patent law. Um, and, and reissue applications do not go back to the regular examiner. They used to in the past, but now they go to the central reexamination unit. And those examiners are. Without exception, very good.
And some of them are tough. Um, so, you know, it [00:59:00] may not be easy prosecution, um, but, but it's better than nothing if that's your only option. Um, and it's still better than usually a motion to amend in an IPR. And then my last point, the bonus pointer is get foreign patents. Um, you know, there are IPR proof because there are no IPRs in foreign countries.
Um, now, other countries have other proceedings like oppositions or revocations. They tend to be more like RPGRs than are IPRs because, uh, usually they have to occur in a short time window after the patent grants. That's certainly true in Europe. Um, but I'm not aware of any proceeding anywhere in the country where the tribunal has been called a death squad, a patent death squad, like the PTAB.
And, and, and so, you know, I, I [01:00:00] think foreign patents, um, can add a lot of value and it's not just because of the PTAB. Really, it's because you can get injunctive relief in other countries. I think that is more significant, especially in Europe and Germany, um, since the eBay decision here in the United States.
So that's, that's my last tip. That's, I think I covered all 11.
[01:00:22] Ashley: I think the other thing, other interesting thing about foreign filings too is that you get more searches, right? I mean, you, in theory, if they're going in parallel, roughly other countries sometimes can be better or different at searching.
Sometimes you find other stuff that. Um, you know, it's good that they found it, right? So it's kind of like, you know, kind of paying for more searches in some ways.
[01:00:43] Matt Phillips: Yes. Yes.
[01:00:45] Ashley: One other question I had, too, Matt. I think in one of your, some of the documents you had shared with me, you talked about, um, making sure you don't include business related assets in your invention.
Can you go deeper on that, or like, what, what do you think? Yeah,
[01:00:59] Matt Phillips: [01:01:00] sure. So, so I, I used to put that in my top 10 pointers. Um, but that was at a time when we had, uh, CBMs, covered business method reviews at the PTAB, which we don't have anymore. Um, And the idea was that if you include just a single claim that can be considered a covered business method, then the whole patent and all of its claims become eligible for a CBM proceeding.
And those were Especially brutal proceedings for patent owners. The win rate was really, really low. Usually because there were 101 grounds that could be used to attack the patent.
[01:01:44] Ashley: 101 is not eligible for typical IPRs though, right? Right.
[01:01:49] Matt Phillips: It is in PGR. The PGR has a broad window in terms of the types of challenges.
Could be 112, In IPR, it's just [01:02:00] 102 and 103, based on printed publication prior art.
[01:02:05] Ashley: Marie, did you want to jump in?
[01:02:06] Marie Smyth: Yeah, I had a, just kind of a general prosecution question in light of everything that we kind of have to face. One of the things you discussed about is claims, lots and lots of claims. Um, so if you draft your parent case with a large claim set, and then you get restriction requirements, right?
It appears from your, from the discussion that it makes sense to file the dibs. Because then you can use that, um, the fact that you got a restriction or requirement to say that it's another invention and each of them would be distinct, right? Each, each
[01:02:54] Matt Phillips: would be
[01:02:56] Marie Smyth: so.
[01:02:57] Matt Phillips: Yes, that's ideal in that sense. [01:03:00] So, you know, having 200 claims spread across 10 different patents is, you know, In my opinion, better for our purposes here than having 200 claims in a single patent.
[01:03:11] Marie Smyth: It's just making me think, as I have been dealing with recently, just a bunch of applications that contain kind of multiple sort of different inventions, if that makes any sense. Um, you know, like a common, foundation, but various branches that can go off of that, to try to get all of those in claims to get a restriction requirement, and then to decide at that point if you want to go off in different directions, it can be beneficial down the line, um, in this particular case.
[01:03:51] Matt Phillips: Yes, and I, I have done that, um, I've done that quite recently, in fact, um, You know, filed sort of like an [01:04:00] omnibus, uh, application with purposefully diverse claims, um, and, and getting the restriction requirement, I believe, is beneficial, you know, I, I wouldn't necessarily recommend that you file all the divisionals in parallel.
I think it might be better to do it in series. Um, you know, sequentially, um, so that you can keep that chain alive.
[01:04:27] Marie Smyth: Okay. The other question I have is, if you do PCT first and you, um, let's say select EP as a search authority and you get a lack of unity of invention, can that also be beneficial in, uh, prosecution in the U.
S. going down the
[01:04:45] Matt Phillips: line? Yeah, yeah, I think so. You know, even better in the PCT, if you want searches of the other inventions, you can just pay for them and you'll get them. You know, you can't do that in the U. S. under restriction practice.
[01:04:59] Marie Smyth: Right, [01:05:00] but you can't, you can benefit from the fact somewhere down the line that you did get this unity of invention in the EP, kind of similar to what a restriction requirement would be in the U.
S. Someone said on the record that these were considered different inventions.
[01:05:16] Matt Phillips: Yeah, I think so. So if you lose one set of claims in an IPR, um, that doesn't cast so much of a cloud over all of the others because they're patently distinct.
[01:05:29] Ashley: Thanks.
[01:05:31] Matt Phillips: You bet.
[01:05:32] Ashley: Awesome. Any other questions or comments for Matt?
This has been fantastic. Oh, actually I had Dave. Nobody else had a question. I did have, I was curious about this. And just because, um, some of the companies related to this were actually competitors with one of our clients that. Um, so they recently had that Penumbra v Rapid Pulse Ptab case where it's interesting they're, you know, apparently, you know, the federal circuit has said that in order for a [01:06:00] prior art document to receive the priority date of the provisional, the claims of the priority document need find basis in the provisional to get that early priority date right.
Yes. Penumbra v. Rapid Pulse case, the PTAB actually kind of went against that and said it doesn't apply to AIA patents. It basically said that, you know, that's in contrary to the Dynamic Drinkware case, which was. Other case and so you know what this one of the articles that I saw what they were recommending so they're basically saying you can get an earlier priority date potentially because if you just claim priority to whatever provisional is assuming there's some common inventorship, even if there's not support for those claims in that provisional that provisional once it publishes could be opened up as a priority or as a prior art document.
And so they were saying you should claim priority to a whole bunch of provisionals that are you're going to abandon or expire because. That opens up more fodder for petitioners because, you know, there's more prior art [01:07:00] documents being opened up, but I thought it was interesting, though, too, because it does go against the courts and the PTAB is not a judicial body.
Yeah, I know. So just if you had any thoughts on that, I know it's a little bit of a jumble there, but
[01:07:12] Matt Phillips: Yeah, no, I know what you're talking about. Um, yeah, I, you know, the dynamic drinkware line of cases that goes back to, like, In re Wertheim, um, were interesting, very clear. Very odd, um, kind of doctrine that's counterintuitive.
Um, it's curious that someone would suggest what you were saying just for the purpose of creating more prior art that goes back to earlier, um, dates. I, I'm not sure I would, you know, go crazy claiming priority just for that reason, that, that seems a little out
[01:07:47] Ashley: there to me,
[01:07:48] Matt Phillips: but I think
[01:07:49] Ashley: their rationale was that for competitors, you're creating.
more of a boundary, like almost like it's like if you were to publish a technical paper for your company so you could prevent others from [01:08:00] patenting that concept because you didn't patent it but you created a prior art for them, right? I think that, yeah,
[01:08:06] Matt Phillips: um,
[01:08:07] Ashley: yeah,
[01:08:09] Matt Phillips: there are probably easier ways to create defensive publications if that's your goal, but yeah, I, I'm curious what the federal circuit will do with, with that ruling.
[01:08:22] Kristen: Yeah.
[01:08:23] Matt Phillips: Um, that'll be interesting to see.
[01:08:25] Kristen: Yeah, and I don't have further questions. I just want to say thank you. It was fantastic. Yeah, it was my
[01:08:30] Matt Phillips: pleasure.
[01:08:31] Kristen: Fun.
[01:08:32] Matt Phillips: Yeah, thanks so much for inviting me. I really enjoyed this.
[01:08:36] Ashley: Yeah,
[01:08:37] Matt Phillips: thank you.
[01:08:38] Ashley: You make patent law sound interesting. Well, sometimes
[01:08:42] Matt Phillips: it is, yeah. Come back
[01:08:45] Ashley: anytime.
[01:08:47] Matt Phillips: You know what's really interesting, which might merit another discussion, is reissue practice, if there's interest out there.
[01:08:55] Ashley: I'd be curious, because I always Definitely. It's super, I mean, at least in my [01:09:00] experience, it's very, very rare, so I would be curious about your And how do you, how do you leverage Reissue, um, because you know, it's the broadening reissue deadline.
So if you are trying to, if you had a PTA encounter and you're doing the reissue to get another continuation, but you're limited to broadening reissue, you know, how do you, how do you leverage that, I guess? Um,
[01:09:28] Matt Phillips: yeah. And, and there have been cases like that. Um,
[01:09:31] Ashley: yeah.
[01:09:31] Matt Phillips: Yeah. It's quite interesting.
[01:09:35] Ashley: Yeah. That'd be, I, I'm up for it.
[01:09:38] Matt Phillips: Okay.
[01:09:40] Ashley: Cool. Thank you so much, Matt. We really, really, really appreciate it.
[01:09:43] Matt Phillips: Cool. Thank you again. All right. Bye everyone. Bye.
[01:09:48] Josh: All right. That's all for today, folks. Thanks for listening and remember to check us out at aurorapatents. com for more great podcasts, blogs, and videos covering all things patent strategy.
And if you're an agent or attorney and would like to be part of [01:10:00] the discussion or an inventor with a topic you'd like to hear discussed. Email us aurorapatents. com. Do remember that this podcast does not constitute legal advice, and until next time, keep calm and patent on.
