The first challenge in designing either an inter partes review (IPR) petition or a covered business method (CBM) patent petition is to decide which claims to address before the Patent Trial and Appeal Board (PTAB).
An IPR or CBM petition is much different than a petition filed in district court. For example, in district court litigation, a plaintiff will typically assert a patent with all of the claims, making no attempt to narrow their focus, even though the litigant will only focus on a handful of claims during trial.
Generally in the beginning of district court litigation – and sometimes pretty far into the case – a litigant may not be clear as to which claims are actually going to be used throughout that litigation. In the PTAB, however, because of the pleading requirements and what's required of the complaint, a litigant will need to know from the outset which claims are going to be used. The type of challenge that a litigant decides to make will influence decisions about which claims to assert before the PTAB.
It's important to understand what kind of petition is going to be brought, either an IPR, or a CBM. A litigant must also understand how many claims there are in the patent, what your expert or experts needs to discuss and how many claim limitations are in dispute. These elements are important to consider, because once a filing is made, a litigant cannot easily add additional claims to challenge in the proceedings.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
