In case you missed Jennifer Bailey and Jason Mudd’s inter partes reviews presentation at the Lawyers Association of Kansas City’s sixth annual Intellectual Property CLE, here is a short recap. In their presentation, Bailey and Mudd discussed reasons to seek inter partes reviews, how to prepare a petition, and IPR rules and strategies.
They provided a list of items to consider when deciding whether to seek an IPR, such as the risk of retaliatory IPR or litigation, the possibility of past damages exposure, the complexity of the patented technology and the availability of other defenses.
When preparing the petition, Bailey and Mudd noted there are strict page limits. Within those page limits, petitioners must be sure to describe the technology, discuss the prosecution history, decide on the grounds of unpatentability and provide claims charts.
Bailey and Mudd also identified some rules and strategies for IPRs, including limited, routine and additional discovery; motions to amend; joinder; privity; and estoppel.
For more information on IPRs contact Bailey at jennifer.bailey@eriseIP.com or Mudd at jason.mudd@eriseIP.com.