Few IP practitioners were surprised by the Oil States decision on whether inter partes review (IPR) violates Article III or the Seventh Amendment.
According to some, had the Supreme Court ruled that the current IPR procedure violates the Seventh Amendment, dead patents invalidated in previous IPRs would be resurrected, causing a great deal of uncertainty and plenty of re-litigation. The practical effect is that the IPR system remains in place with possible tweaks to come, and that the so-called zombie patent apocalypse will not occur.
While the result was predictable, the majority's reliance on the public right doctrine and its reasoning is troubling. For example, the majority downplays the distinction between the initial grant of a patent and post-grant review--the Gorsuch dissent is an interesting read. Regardless, there are several strategies that patentees can use when prosecuting their applications to improve the chance that their patents will survive an IPR proceeding. While we do not necessarily endorse any of these techniques, we have seen them used with varying degrees of success and they warrant some consideration.
1. File Several Applications. The biggest takeaway from Oil States is that patents will continue to be subject to IPRs for the foreseeable future. Filing multiple patents within a family will increases the chances that at least some claims will survive and will strain your competitors' resources in analyzing the family. Equally as important is to keep significant patent families alive so that vehicles are available should key patents be held invalid. If litigation is imminent, Track One and PPH may be useful tools to consider to expedite the process.
2. Many Claims. A patent with 100 claims, each with some nuance, will be harder to invalidate than a patent with only 3 claims. First, it is extremely difficult to properly address a large number of claims within the IPR's word limit. Nuance in the claim language, variance in the claim scope, and including features in various combinations will also make it more difficult to properly address all of the claims. Additionally, it may lead to unorganized or inaccurate claim charts by your competitor.
3. Verbose Claims. Patent attorneys instinctively like to keep claims short to obtain the broadest scope, and to make it easier to prove infringement of a competing device. Verbose claims are not necessarily narrowing, however, and they could provide a key advantage in IPRs. By way of example, there is arguably little difference between a claim that recites "a circle," and another claim that recites "a circle having a diameter, a radius and a circumference and including a curvature along the circumference." This is not a strategy that immediately appeals to patent prosecutors, but it does not hurt to include a set of claims that are intentionally lengthy without being narrowing.
4. Prior Art Searching. Petitioners looking to invalidate a patent will spare no expense in searching for the best prior art. Patentees should be aware of this, and perform their own prior art searching as early as possible instead of relying on the USPTO Examiner to unearth the most relevant prior art. The Oil States decision indirectly signals a certain suspicion of Examiner searching. By knowing and taking into account the results of patentee's own prior art search, claims may be drafted that have a greater chance of survival.