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Patent Examiners are not the Adversary


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Reading the May 9, 2017 Federal Circuit decision in Nestle USA v. Steuben Foods (Fed. Cir. 2017) got me thinking about how we now approach patents.  

Every newly litigated patent should expect to undergo two examinations.   The first examination is the patent prosecution that takes places between the patent attorney and the patent examiner.   In this phase, the patent attorney traditionally sought out the broadest patent claims possible.   The counter-balance to this was the patent examiner who would generally seek to narrow the claims in view of prior art.   This was frequently a good-natured, but somewhat adversarial process.   Once the patent was allowed and issued, validity could be challenged but that seemed a distant issue to the patent attorney. Getting the allowance was the victory.

However, the second examination takes the form of the inter parte review (IPR) proceeding, a creature of the America Invents Act enacted September 16, 2012.   When a patent owner files an infringement suit in district court, the alleged infringer has one year to file an IPR seeking to invalidate the asserted patent.   Is the IPR optional?   Not for patent defendants.   The Patent Trial and Appeal Board (PTAB) that hears the IPR proceedings has a high “kill rate” for patents.   At least two factors work to the defendant’s advantage in an IPR. First, once the IPR is instituted, the standard for patent validity drops from clear and convincing to a mere “preponderance” of the evidence. Second, the PTAB gives patent claims their “broadest reasonable interpretation” which tends to make available more invalidating prior art. 

The end effect is double-talk.   You argue for broad claims before the patent examiner (to have more opportunities for infringement) and later argue for narrow claims before the PTAB (to save the patent from invalidity).   If the object of the patent profession is to obtain a well-deserved, limited monopoly and effective barrier to competition we must set a self-governing standard for drafting valid claims.   A litigation-grade patent can usually be obtained for well-under $20,000. A PTAB proceeding through Federal Circuit Appeal is easily over $300,000.   Looking at this another way, a GS-13 level patent examiner might have a 14.9 hour expectancy for reviewing, searching and drafting an office action on a new application.   By contrast, an IPR typically has at least two or three attorneys per side working hundreds of hours in addition to one or more expert witnesses.   The initial patent prosecution and the IPR proceeding are highly asymmetric.  

If you intend to draft patents at the highest level, and that means in anticipation of litigation, the patent examiner is hardly an adversary.    The claims must be drafted with precision for both breath (to capture infringers) and validity (to withstand the inevitable IPR forthcoming).   Do not presume the patent examiner, with limited resources and count quotas, is an effective backstop for validity.   Luckily, there are some techniques that are easy to implement from the start.  

I am a big proponent of including a glossary of claim terms.   Do not let your (or the inventor’s) technological ramblings in the specification lead to an unnecessary IPR and/or expensive Markman hearings in district court.   You have the opportunity now to precisely define these claim terms.   Statistically, there will be a case where your glossary definition fails to meet what otherwise might have been an infringement opportunity.   However, is it better to define this now or have millions of dollars expended by both parties in uncertainty because you were vague?  

Another pitfall that is hurting patent owners is certain boiler-plate language in the specification.  Say you have a claim limitation called “X-band.” In the specification, you can be your own lexicographer and you define “X-band” as wavelengths between 560 nm and 740 nm.   That is a proper limitation.   But then you go on to further say “[h]owever, X-band may be interpreted to be any suitable wavelength to activate the polymer photocell.”     The patent examiner may not find prior art at 800 nm but in the IPR, opposing counsel will.   Now, if your claim isn’t found indefinite, the 800 nm prior art is going to kill you anyway.    

The bottom-line is that attorneys prosecuting litigation-grade applications must draft for both infringement and validity with equal vigor. Litigated patents face two examinations. Be prepared for Round II with the PTAB. This takes more effort, research, experience and reflection.   The end-game is not to get an allowance.  That is merely expensive wallpaper.   The objective is to have your patent claims battle-tested, win an infringement judgment and survive through Federal Circuit appeal.   That is the true measure of success for a patent attorney. 

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