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Navigating the Changing PTAB

and Evolving Prosecution Practice

for

Kevin LaurenceLaurence & Phillips IP Law

February 23, 2018

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Prosecution Paradigm Shift?OLD PARADIGM

• Assumed accused infringer would seek “quick out” by summary judgment of non-infringement based on narrow claim construction.

• Assumed that it was very difficult for accused infringer to prove invalidity by clear and convincing evidence.

• Result: Breadth-preserving patent drafting and prosecution– Write specification with no

potentially narrowing “profanity” (e.g., the invention, essential, critical, must, required, etc.)

– Keep prosecution history clean of any limiting statements.

– Keep claims broad; avoid narrowing amendments whenever possible.

NEW PARADIGM• Assume accused infringer will seek

“quick out” by IPR, PGR, or CBM.

• Unpatentability can be easily shown under BRI with mere preponderance of the evidence to technical judges who love obviousness and hate secondary considerations.

• Result: Validity-preserving patent drafting and prosecution– Write specification with targeted

“profanity.”

– Make an evidence-laden prosecution history.

– Make of record and distinguish as much prior art as possible.

– Don’t just claim broadly.

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Top 11 Prosecution Practice Pointers1. Conduct thorough pre-filing prior-art search(es).2. Include claims, claims, claims, and more claims.3. Draft a crystal-clear, super-detailed specification4. Avoid disclosing any business-related aspects of the invention.5. Draft the application as if the claims as granted are set in stone

and will be interpreted under the BRI, not just Phillips. 6. Consider defining key claim terms and using layered definitions.7. Consider using some “patent profanity.”8. Consider telling the story of the invention.9. Build an evidence-laden prosecution history.10. Keep a continuation or divisional pending.11. Consider shifting emphasis from patent quantity to quality

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• Know the prior-art landscape as thoroughly as budget allows

• Identify and understand the distinctions over the closest prior art

• Understand competitor’s prior art and products and technological trends in the industry

• Take troublesome prior art off the table for challengers– Cite all material prior art, of course– But mere citation is not enough

• See 35 U.S.C. § 325(d) for review challenges• Reexam request must raise new patentability question

– Recycling old prior art and arguments does not work well for challengers

#1 – Prior-Art Searching

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• More claims make a patent more difficult to challenge in a review proceeding– More challenged claims→ Higher petition filing fee– More claims → More word-count pressure

• MPF claims are especially troublesome for challengers to challenge (and for the PTO to invalidate)

• Dependent claims are critically important to avoid intervening rights

• The opportunity to amend claims in a review trial is essentially nil; all desired claims should be in the original patent

• Emphasize claim diversity, layering, and numerosity

#2 – Claims, Claims, Claims

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• Benefits of Super Specification in Later Validity Fight

#3 – The Super Specification

– Easier to criticize omissions or deficiencies in the disclosure of the prior-art reference(s)

– Easier to argue that a prior-art reference is not enabled

– Can take the position that the level of ordinary skill in the art was low, thereby making it harder to show obviousness

– Some beneficial psychological effect on the decision maker

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• CBM is usually the best review option for challengers• One CBM-eligible claim makes the entire patent and all

claims therein CBM eligible• If possible, avoid mention of anything business-related in

the specification, so as to avoid the first part of the statute.• Emphasize the technological aspects of the invention (a

technical solution to a technical problem)

#4 – Don’t Write a Covered Business Method (CBM) Patent

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• We are used to BRI in regular prosecution where claims are freely amended

• Even reexam permits extensive amendments• But there are essentially no amendment rights in

review trials• We are used to the granted claims being interpreted

under Phillips v. AWH, 415 F.3d 1303 (Fed. Cri. 2005) (en banc)

• Now, we must adjust to granted claims being set in stone yet interpreted under BRI

#5 – Draft for BRI

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• Intrinsic evidence is most important guide for the PTAB’s interpretation of the claims, especially in predictable arts

• Omit definitions in application and you invite petitioner or PTAB to define terms for you

• Strategies– Define key terms to exclude prior art and resolve ambiguities– Nest definitions to cover broad range and then narrower

cases• But . . .

– What do the definitions mean?– You are stuck with the definition, even if it is not what you

later want it to be

#6 – Definitions?

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• Examples of “patent profanity”– “the invention,” summary section, objective, need,

advantage, benefit, distinction/improvement over prior art, must, necessary, essential, etc.

• “Best practices” to avoid profanity have developed from cases in which the profanity has led to judgments of noninfringement

• In the New Paradigm, there will sometimes be cases in which profanity avoids invalidity in review and adds value to the patent (provided the profanity doesn’t also ruin the infringement case)

#7 – Profanity?

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• In re Man Machine Interface, 822 F.3d 1282(Fed. Cir. 2016)• PTAB interpreted “body adapted to be held by the human

hand” to encompass a desk-bound mouse and “thumb switch” to be merely capable of being enabled by a thumb and not excluding activation by another digit.

• Court found those interpretations unreasonable in light of the specification, whose “Summary of the Invention” expressly disclaimed desk-bound mice and because the interpretation of “thumb switch” reads out the term “thumb” and activation by another finger is not contemplated by the patent’s written description

In re Man Machine Interface

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• Pre-Markman patent drafting style:– Background describes prior art extensively– Background concludes that “what is needed is . . .”– Invention is introduced by saying, “An objective of the

invention is . . .”– Invention is then described as the perfect solution to this

set-up problem in the prior art• Disfavored style in the post-Markman Old Paradigm• But maybe it’s time for a comeback in the New

Paradigm?

#8 – Tell the Story of the Invention?

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• Declarations, dictionaries, other documents• Why just argue your point when you can prove it?• Bald attorney argument is disfavored in review and litigation.

Why is it the norm in prosecution?• Examiners have limited ability to counter your evidence.• An evidence-free prosecution history creates an evidentiary

advantage for a review petitioner – Almost all petitions are supported by expert declarations– The new ability to provide testimonial evidence with a preliminary

response is of limited helpfulness– The result is an evidentiary bias in favor of institution of trial

#9 – Provide Evidence During Prosecution

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• Declarations during prosecution have historically been disfavored due to inequitable conduct concerns, but that is no longer such a large concern.

• Most close patentability issues would benefit from true evidence.– E.g., state of the art, understanding of references, lack of motivation to

combine, lack of predictability in the art, etc.• Well supported patentability positions are harder to attack later.• Declarations in the prosecution history have greater impact than

declarations filed with a patent owner’s preliminary response.

Prosecution Declarations

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• Having a continuing application pending is – Far better than filing motion to amend in a review trial– Better than reissue– Better than owner-requested reexam– Better than supplemental examination

• However, beware of “patent owner estoppel”– Disclaimer before institution may avoid this– Restriction requirement immunizes against this

#10 – Keep a Continuing Application Pending

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Summary: What Makes a Bad Patent• Bad Claims

– Few in number and type– Few meaningful dependent claims– Unnecessary limitations or words– Infringement difficult to detect or prove– Infringement requires combination of multiple things/actors

together• Bad Specification

– Describes few embodiments (maybe only one)– Recklessly uses patent profanity (e.g., describes embodiments as

“the invention”; “must”; “essential”; “critical”; “key”; “necessarily”)– Implies limiting meanings to claim terms– Makes unnecessary admissions about the prior art

• Bad Prosecution– Fails to clarify examiner’s inaccurate characterizations

17Summary: What Makes a Good Patent• Good Claims

– Variety of different types– Rich sets of robust dependent claims– Avoids unnecessary limitations or words– Covers the inventive concept as broadly and generically as the

prior art allows– Infringement can be detected and proven– Infringed by desired target infringer by itself

• Good Specification– Use of definitions– Supports full breadth of claims– Does not imply limiting meanings to claim terms– No gaps in explanation

• Good Prosecution– Does not distort or unduly limit meaning of the claims– Consider use of declarations

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For more information contact:Kevin B. LaurencePartner at Laurence & Philips IP Law

1940 Duke Street, Suite 200Alexandria, Virginia 22314(703) 448-8787 Desk(703) 463-0640 Mobileklaurence@lpiplaw.com

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PRG’s Post-Grant Patent Practice CourseInstructors: Kevin Laurence, Matt Phillips and Jonathan StroudDate: April 15–17, 2018 Location: New Orleans, LouisianaMore information:http://www.patentresources.com

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