Tag Archives: estoppel

Petitioners Should Prefer to Lose Early

Rather than resist preliminary-stage discovery, Petitioners instead should say “Bring it on!”
As I suggested in an earlier post, Patent Owners’ ability to introduce new declaration evidence with a preliminary response is unlikely to help them avoid trial. I doubt the Board will deny a Petitioner the relief requested on the untested evidence of a Patent Owner witness, however persuasive that evidence may appear.… More

The Patent Owner Calls the Shots in Trial

The Patent Owner calls the shotsPetitioners often view the Petition as an opening salvo in what they expect will be a back-and-forth process.  In reality, the Petitioner loses control of the proceeding after the Petition is filed.  Once trial is instituted, the Patent Owner calls the shots.  For example:

  • The Patent Owner decides what new witness testimony to introduce and thereby limits the scope of the Petitioner’s discovery.
  • The Patent Owner decides what issues to raise in the Response and thereby limits the scope of the Petitioner’s Reply.…
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The Death Valley for Petitioners in IPR

view from death valley at dante's point

A Petitioner faces great peril if it gets an IPR instituted but then doesn’t prevail in the final written decision. That is, the Petitioner puts in enough to get a trial but not enough to win it. A Petitioner thus caught finds itself bound even more inextricably to the patent it sought to free itself from.

How can this happen? After all, if there was enough in the Petition to persuade the PTAB that a trial is justified,… More

Petitioner’s Biggest Problem: Challenge Depth Mismatch

Taking out the competition, business concept.

With only sixty pages (Editor’s update: 14,000 words) in which to present a thorough treatment of every issue, the Petitioner must balance depth of analysis against the number of challenges.  The fear of estoppel often drives Petitioners to present many challenges with a shallow analysis that is supported by a perfunctory expert declaration rehashing the Petition.  The Board often institutes on only a handful of such challenges,… More