Inter Partes Review ( IPR ) Support Attorney — Austin, Texas
Inter partes review has become one of the most powerful tools in patent strategy — with patent cancellation rates at the PTAB that significantly exceed district court invalidity success rates, at a fraction of the cost of full patent litigation. Whether you are challenging a competitor's patent or defending your own, technically rigorous prior art analysis and claim construction strategy determine the outcome.
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IPR as a Strategic Tool — What Law Firms Need to Know
Inter partes review fundamentally changed the landscape of patent validity challenges when the America Invents Act created it in 2012. The Patent Trial and Appeal Board now provides a forum for challenging issued US patents based on prior art patents and printed publications — with significantly higher patent cancellation rates than district court invalidity defenses and at a fraction of the cost of full patent litigation. Since its inception IPR has become one of the most consequential strategic tools in patent litigation and licensing — affecting how defendants respond to infringement assertions, how patent holders assess their portfolios' litigation risk, and how licensing negotiations are structured when challenged patents are involved.
For litigation firms, licensing counsel, and corporate IP teams navigating patent disputes, understanding IPR strategy and having access to technically sophisticated patent practitioners who can support IPR proceedings is increasingly essential. The technical demands of IPR proceedings — prior art searching and analysis, claim construction arguments, expert declaration preparation, and PTAB briefing — require a combination of legal skill and genuine technical understanding of the relevant technology that not every patent practitioner can provide effectively.
I provide IPR support services to law firms and corporate clients as a technically qualified patent practitioner with deep engineering background in the technology areas most frequently involved in IPR proceedings — semiconductor and electronics, software and AI systems, optical and photonic technologies, and medical devices. My role in IPR matters typically involves prior art searching and invalidity analysis, claim mapping and element-by-element prior art charts, technical analysis supporting expert declarations, and strategic consultation on claim construction and petition grounds. I work alongside and in support of the litigation counsel handling the PTAB proceeding — providing the technical analysis and patent prosecution expertise that the litigation team's clients need for effective IPR practice.
Prior Art Searching for IPR Petitions — Technical Depth Matters
The foundation of every IPR petition is the prior art — and the quality of the prior art search determines whether the petition has a realistic chance of institution and ultimately success at the PTAB. The Board institutes IPR only when the petition demonstrates a reasonable likelihood that at least one challenged claim is unpatentable. Weak prior art with strained mapping to claim elements consistently fails to achieve institution. Strong prior art that clearly anticipates or renders obvious specific claim elements — found through technically sophisticated searching that goes beyond keyword-based patent database queries — produces compelling petitions that the Board takes seriously.
My engineering background in laser lithography, semiconductor manufacturing, optics, and physics from UT Austin makes my prior art searching in these technology areas significantly more thorough and technically accurate than searching conducted without genuine engineering expertise in the relevant field. The most powerful prior art for semiconductor, optics, and medical device IPR petitions is frequently found in technical literature — IEEE publications, conference proceedings from semiconductor industry technical conferences, optics and photonics journals, and physics publications that disclose the same technical concepts claimed in the challenged patent but that patent examiners may not have found during prosecution because they searched primarily patent databases.
My ability to evaluate technical literature in these fields at an engineering level — reading the actual technical content of journal articles and conference papers rather than just their titles and abstracts — produces more complete and more accurate prior art maps than purely legal analysis of the same material. When I identify a technical publication as anticipating or rendering obvious a specific claim element, I can explain the technical basis for that conclusion at the level of detail that PTAB judges, who are technically trained former patent examiners, expect and respect. This technical precision in prior art analysis is what separates compelling IPR petitions from marginal ones.
Claim Construction in IPR — The Critical Strategic Battleground
Claim construction is the central strategic battleground in every IPR proceeding. How the Board construes the challenged claims determines which prior art references are relevant, whether specific prior art elements map to specific claim elements, and ultimately whether the challenged claims survive. The Phillips claim construction standard applied in IPR proceedings — the same standard applied in district court litigation — requires careful analysis of the claim language in light of the specification, prosecution history, and relevant extrinsic evidence including technical dictionaries and expert testimony.
For technically complex patents in semiconductor, software, optics, and medical device fields, claim construction arguments require genuine understanding of what the claim terms mean in the relevant technical field. Patent claim terms frequently have specific technical meanings that differ from their ordinary English meanings, and correctly identifying those technical meanings — and building claim construction arguments that support your strategic position on whether the prior art maps to the construed claims — requires the kind of technical background that I bring from my engineering experience.
I support litigation counsel in developing claim construction positions for IPR proceedings by providing technical analysis of claim term meanings in the relevant field, identifying prosecution history arguments that support favorable claim construction positions, analyzing competitor claim construction arguments for technical inaccuracy, and preparing technical analysis to support expert declarations on claim construction. The interaction between claim construction and prior art mapping is particularly important — claim construction positions must be developed with full awareness of how different constructions affect the prior art mapping, and prior art analysis must be conducted with awareness of the claim construction positions being advanced. This integrated analysis requires someone who can work simultaneously at the legal claim construction level and the technical prior art level — which is precisely the combination that my engineering background and patent prosecution experience provides.
Patent Owner Responses — Defending Your Client's Patents
IPR support is as important for patent owners defending their patents as it is for petitioners challenging competitors' patents. When a petition is filed against your client's patent, the patent owner has the opportunity to file a preliminary response before the Board decides institution, and if the proceeding is instituted, to file a full response on the merits. Both the preliminary response and the merits response require technical analysis of the cited prior art, claim construction arguments, and if appropriate, contingent claim amendments through a motion to amend.
I provide technical analysis support for patent owner responses — assessing the petitioner's prior art mapping for technical inaccuracies, identifying claim construction arguments that support non-obviousness of the challenged claims, analyzing whether the petitioner's asserted combinations of references are technically motivated or represent impermissible hindsight combination, and preparing technical analysis to support expert declarations rebutting the petitioner's invalidity arguments. For patents in semiconductor, optics, software, and medical device technology areas, the technical accuracy of these rebuttal arguments often determines whether the Board is persuaded to cancel the claims or find them patentable.
Motion to amend practice — in which the patent owner proposes substitute claims to replace challenged claims if necessary — has become increasingly important in IPR proceedings following the Hunting Titan line of cases and subsequent PTAB precedential decisions on amendment practice. Substitute claims must be narrower than the original challenged claims, must not introduce new matter from outside the original disclosure, and must be patentable over the prior art of record in the proceeding as well as prior art not of record that the patent owner is aware of. Drafting substitute claims that satisfy these requirements while preserving commercially meaningful protection requires precisely the combination of prosecution experience and technical understanding that I bring to IPR support engagements.
IPR in the Context of Parallel District Court Litigation
IPR proceedings most commonly arise in the context of parallel district court patent litigation — either as a defendant's strategic response to an infringement assertion or as a preemptive challenge to a patent that is expected to be asserted. The interaction between IPR proceedings and parallel district court litigation creates complex strategic considerations that require coordination between the litigation team and the IPR practitioner.
The IPR estoppel provisions — which prevent a petitioner who reasonably could have raised a ground in IPR from raising that same ground in subsequent district court litigation — make the selection of IPR petition grounds a critical strategic decision. Grounds included in the IPR petition create estoppel; grounds not included remain available for district court invalidity arguments. Developing the right petition strategy requires assessing all available prior art grounds, selecting those that are both strongest for the IPR proceeding and least damaging to retain for district court litigation, and making those ground selection decisions with full awareness of their litigation implications.
I work with litigation firms to support this integrated IPR and litigation strategy development — providing technical prior art analysis across all potential grounds, assessing the relative strength of different grounds for PTAB institution and success on the merits, and advising on the estoppel implications of ground selection from a prosecution practice perspective. The timing coordination between IPR and district court proceedings — including management of the IPR deadline relative to the district court schedule, stay of litigation pending IPR, and the implications of PTAB decisions on district court invalidity arguments — requires close coordination between IPR support counsel and the litigation team that I maintain throughout the proceeding.
Working with Litigation Firms on IPR Matters
The most effective IPR support relationships are those where the division of labor between litigation counsel and technical patent support is clearly defined from the outset. Litigation firms bring the PTAB procedural expertise, the advocacy skills, and the client management capabilities that IPR proceedings require. I bring the technical patent prosecution expertise — prior art searching and analysis, claim construction grounded in prosecution experience, and the engineering background to engage with technically complex prior art at the level that PTAB judges expect.
I am available to assist litigation firms with IPR matters on a matter-specific basis without requiring an ongoing of counsel arrangement. For a specific IPR petition, I can provide prior art searching, claim mapping, and technical analysis of the cited references. For patent owner responses, I can provide technical rebuttal analysis and substitute claim drafting support. For both petitioner and patent owner matters, I can prepare technical analysis supporting expert declarations by the firm's retained technical experts.
I work under the supervision and direction of the litigation firm's lead counsel on all IPR matters — providing technical patent support as a consultant to the litigation team rather than as independent PTAB counsel unless the engagement specifically calls for that role. Fee structures for IPR support are matter-specific and can be arranged on hourly, flat-fee-per-deliverable, or engagement-level billing depending on the firm's preference and the scope of work involved. To discuss a specific IPR matter or a standing arrangement for IPR technical support, contact me at (512) 293-0710 or sconnolly@austin-patent-attorney.com. Initial consultations to assess whether I can assist with a specific matter are always at no charge.
[ Inter Partes Review ( IPR ) Support FAQs — Austin, Texas ]
Question: What is inter partes review and when should I consider filing a petition?
Answer: Inter partes review is a USPTO trial proceeding conducted by the Patent Trial and Appeal Board in which a petitioner challenges the validity of an issued patent based on prior art patents or printed publications. IPR has become one of the most powerful tools for invaliding competitor patents — with significantly higher patent cancellation rates than district court litigation and at substantially lower cost. You should consider filing an IPR petition when a competitor is asserting a patent against you that may be vulnerable to invalidity challenge, when you want to clear a blocking patent before entering a market, or when a competitor's patent is threatening your freedom to operate.
Question: What prior art can be used in an inter partes review?
Answer: IPR proceedings are limited to challenges based on patents and printed publications — you cannot raise prior public use, prior sale, or other statutory bars that are available in district court litigation. The prior art must predate the challenged patent's effective filing date. Finding the most powerful prior art for an IPR petition requires both comprehensive searching capability and genuine technical understanding of the claimed invention — which is where my engineering background in laser lithography, semiconductor manufacturing, optics, and physics provides measurable advantage for technically complex patents.
Question: Can I defend my own patent in an inter partes review?
Answer: Yes — I provide IPR support for patent owners defending their patents before the PTAB as well as for petitioners challenging patents. For patent owners facing an IPR petition, I assess the challenged claims for vulnerability, advise on claim amendment strategy through the IPR process, and help prepare the patent owner's response. For patent owners concerned about potential IPR exposure I can conduct a proactive vulnerability assessment of your issued patents and advise on strategies to strengthen their defensibility before a petition is filed.
Question: What is the PTAB's current approach to IPR institution decisions and how has the Fintiv framework evolved?
Answer: The PTAB's approach to IPR institution decisions has evolved significantly since the 2020 Apple v. Fintiv precedential decision established six factors for discretionary denial when parallel district court litigation is advanced. Subsequent USPTO Director review decisions and PTAB precedential opinions have refined how the Fintiv factors are applied — with the most significant development being the recognition that a petitioner's Sotera stipulation — committing not to raise IPR grounds in district court — is a significant factor weighing toward institution under Fintiv analysis. The USPTO has also issued guidance under successive directors that has shifted the balance between the Fintiv factors in ways that affect institution rate predictions for petitions filed at different stages of parallel litigation. I follow PTAB precedential developments and USPTO Director guidance specifically because institution prediction — assessing whether a petition will be instituted before committing to the significant cost of petition preparation — is one of the most important inputs to IPR strategy decisions for Austin companies facing patent assertions.
Question: What is a PTAB claim construction in IPR and how does it affect the petition strategy?
Answer: PTAB IPR proceedings apply the Phillips claim construction standard — the same standard as federal district courts — giving claim terms their ordinary meaning to a person of ordinary skill in the art as informed by the specification and prosecution history. The specific claim construction arguments made in the IPR petition are critically important because they define the scope of the claims being challenged and directly affect which prior art references are relevant to the specific claim elements. Claim construction in IPR is not merely a legal argument about the meaning of words — it requires genuine technical understanding of how a person of ordinary skill in the art would understand technical claim terms in the context of the specification. My engineering background directly informs claim construction analysis for semiconductor, software, optics, and medical device patents — understanding the ordinary meaning of technical terms to practitioners in these fields from direct technical experience rather than from legal research about the fields.
Question: What is a PTAB petition word count limit and how does it affect IPR petition strategy?
Answer: IPR petitions are subject to a 14,000-word limit for the petition itself — a constraint that significantly affects the strategy for petitions challenging multiple claims across multiple prior art grounds. The 14,000-word budget must cover claim construction, argument for each challenged claim against each asserted prior art ground, and the evidence citations that support each argument — leaving less space for any single argument than the full legal analysis might require. Effective IPR petition word count management involves: prioritizing the strongest prior art grounds and focusing word count on them rather than presenting every available prior art combination at superficial length; structuring the claim mapping tables in a way that presents the prior art analysis efficiently without sacrificing specificity; and using the expert declaration to carry technical detail that would otherwise consume petition word count. I advise clients on ground selection specifically in the context of the 14,000-word budget — sometimes recommending fewer grounds argued more thoroughly rather than more grounds argued superficially.
Question: What is a patent owner's preliminary response in IPR and can new evidence be submitted?
Answer: The patent owner preliminary response — filed before the PTAB decides whether to institute trial — provides the patent owner with an opportunity to argue against institution. Since the Supreme Court's SAS Institute v. Iancu decision (2018) established that the PTAB must either institute on all challenged claims or none, the patent owner preliminary response plays an important role in trying to defeat institution entirely. New evidence — including expert declarations — can be submitted with the patent owner preliminary response to refute the petition's technical arguments before the PTAB makes its institution decision. This procedural option is strategically significant: submitting expert testimony establishing that the prior art does not disclose specific claim elements, or that the claimed combination would not have been obvious to a person of ordinary skill, before the PTAB's institution decision can prevent institution entirely. I advise patent owner clients on whether to file a POPR with new evidence versus a focused legal argument, and what evidence — if any — is worth submitting at the POPR stage given the strategic considerations.
Question: What is the role of the real party in interest doctrine in IPR petitions filed by Austin technology companies?
Answer: The real party in interest (RPI) doctrine in IPR requires that all parties on whose behalf the petition is filed be identified — which affects time bar analysis, estoppel scope, and the petition's standing. For Austin technology companies that are defendants in patent litigation coordinated with competitors or industry groups jointly funding an IPR challenge — a common situation in Austin's semiconductor and software sectors, where patent assertion entities often sue multiple operating companies over the same patent simultaneously — the RPI identification requirement creates specific strategic considerations. If an Austin company and several industry peers jointly fund an IPR petition, each participating defendant may be considered a real party in interest — meaning: the one-year time bar applies from the earliest date any RPI party was served with the complaint; the institution decision must consider whether any RPI party is time-barred; and the IPR estoppel from a final written decision applies to all RPI parties in subsequent district court litigation, not just the named petitioner. I advise Austin companies on RPI issues before finalizing IPR petition strategy — the coordination that reduces per-defendant costs also extends the resulting estoppel to all coordinating parties.
Question: What is a PTAB oral argument preparation strategy and what questions should Austin companies anticipate?
Answer: Effective PTAB oral argument preparation focuses on the specific technical and legal issues the three-judge panel is most likely to probe — which can often be predicted from the institution decision, any orders issued during trial, and the legal issues that have divided PTAB panels in similar prior cases. For semiconductor and software patent IPRs, panels frequently probe: the specific disclosure in the prior art reference that supports the claim element mapping — asking for precise citation to specific paragraphs or figures in the prior art; the motivation to combine argument — specifically questioning why a person of ordinary skill would have combined the cited references in the particular way the petition requires; and claim construction disputes — asking the parties to argue specific technical terms in the context of the specification and prosecution history. Preparation specifically involves: identifying the three to five technical questions most likely to be asked based on the specific prior art and claim elements at issue; preparing precise, citation-supported answers to those anticipated questions; and practicing live argument before an audience of technically trained critics who challenge the arguments as a panel would.
Question: What is the difference between IPR support for Austin companies defending their own patents versus challenging competitor patents?
Answer: IPR support for patent defense — where an Austin company's patent is being challenged by a competitor or PAE — and IPR support for patent offense — where an Austin company is challenging a competitor's or PAE's patent — involve the same PTAB proceeding but from opposite strategic positions with different objectives and different analytical emphases. Defensive IPR support focuses on the patent owner's response strategy: developing the strongest prior art arguments the petitioner might raise to assess institutional risk, preparing the patent owner preliminary response to defeat institution where possible, organizing the trial phase response to demonstrate the challenged claims' patentability, and preparing motion to amend substitute claims for claims that may not survive the prior art challenge. Offensive IPR support focuses on petition development: identifying the most powerful prior art combinations, developing technically precise claim mapping arguments, selecting and preparing the technical expert, and structuring the petition to maximize institution likelihood within the 14,000-word budget. The technical analysis underlying both positions — understanding the prior art and the claimed technology — draws on the same engineering expertise, applied to opposite strategic goals.
Question: What is the institution decision in IPR and how important is it?
Answer: The institution decision is the PTAB's determination — made approximately six months after the IPR petition is filed — of whether to institute trial on the challenged claims. Institution requires the PTAB to find a reasonable likelihood that the petitioner would prevail on at least one challenged claim. Since the PTAB's 2020 NHK-Fintiv decisions, the board has exercised discretion to deny institution even when the merits threshold is met — based on factors including parallel district court litigation and the stage of that litigation at the time of institution decision. The institution decision is critically important because petitions that are not instituted provide no protection against the challenged patents. Developing the strongest possible petition — with compelling prior art mapping and clear claim construction arguments — is the most effective strategy for achieving institution.
Question: What is the NHK-Fintiv framework and how does it affect IPR strategy?
Answer: The NHK-Fintiv framework — named for two PTAB precedential decisions — establishes factors the board considers when exercising discretion to deny institution of IPR petitions when parallel district court litigation is pending. The six Fintiv factors consider the proximity of the district court trial date to the PTAB's projected final written decision, whether the district court has granted a stay of the parallel litigation, the investment of resources in the parallel proceeding, overlap between the IPR grounds and the district court invalidity contentions, the relationship between the parties in IPR and district court, and other considerations including the merits of the petition. The NHK-Fintiv framework has been controversial and subject to ongoing development through PTAB precedential decisions and USPTO director review. Strategic IPR timing — filing petitions before substantial district court investment occurs — can reduce Fintiv discretionary denial risk.
Question: What is a patent owner preliminary response and what strategic considerations apply?
Answer: The patent owner preliminary response (POPR) — filed within three months of the IPR petition — is an optional filing giving the patent owner an opportunity to argue against institution before the PTAB decides whether to institute trial. Arguments available in a POPR include: procedural arguments that the petition is time-barred, lacks standing, or fails to meet the petition requirements; claim construction arguments establishing interpretations under which the cited prior art does not anticipate or render obvious the challenged claims; substantive arguments that the petition fails to demonstrate a reasonable likelihood of prevailing on at least one challenged claim; and Fintiv arguments asking the board to exercise discretion to deny institution based on advanced parallel litigation. Whether to file a POPR at all, and what arguments to include, is itself a strategic decision: a strong POPR that avoids making substantive concessions can prevent institution of weak petitions, but an ill-advised POPR can inadvertently hand the petitioner useful information about the patent owner's claim construction positions and vulnerabilities. What a POPR should not include: concessions about claim scope, admissions about prior art usable against the patent in parallel litigation, and arguments that reveal defense strategy in ways that help the petitioner refine their case.
Question: What is the one-year bar and how does it affect IPR timing?
Answer: The one-year bar under 35 U.S.C. § 315(b) provides that an IPR petition may not be filed more than one year after the date on which the petitioner, the petitioner's privy, or the petitioner's real party in interest was served with a complaint alleging infringement of the patent. Missing the one-year window bars that petitioner — and all parties in privity with it — from filing an IPR petition on the same patent. The one-year clock starts when the complaint is served — not when it is filed — and applies to the specific petitioner and its privies even if a new complaint is filed. The one-year bar makes early assessment of IPR potential essential for defendants in patent litigation — determining immediately upon service of the complaint whether an IPR challenge is worth pursuing and beginning the prior art search and petition preparation without delay.
Question: What is an IPR claim chart and how is it used in the petition?
Answer: An IPR claim chart is a table that maps each element of each challenged patent claim to the disclosures in the asserted prior art references — element by element and reference by reference. The claim chart demonstrates specifically how the combination of cited prior art teaches or renders obvious every element of the challenged claims. Well-constructed claim charts are the core of an effective IPR petition — the PTAB judges look to the claim charts to assess whether the petition's prior art mapping is specific, accurate, and technically credible. Claim charts that make broad assertions without specific citation to prior art disclosures — or that rely on strained mappings that require ignoring what the prior art actually teaches — consistently fail to achieve institution. My engineering background ensures that the technical mappings in my IPR claim charts accurately reflect what the cited prior art actually discloses at an engineering level.
Question: What is a motion to amend in IPR and when should a patent owner consider filing one?
Answer: A motion to amend in IPR allows a patent owner to propose substitute claims — either replacing challenged claims with narrower versions or canceling challenged claims outright. Substitute claims must be narrower than the original challenged claims, must not introduce new matter from outside the original disclosure, and must be patentable over the prior art of record in the proceeding as well as prior art the patent owner is reasonably aware of. Motion to amend practice has evolved significantly through precedential PTAB decisions including the Hunting Titan line of cases, and the strategic calculus around filing a motion to amend depends on the specific invalidity arguments in the petition and the availability of narrowing amendments that would preserve commercially meaningful protection. I advise patent owners on motion to amend strategy with specific attention to whether the proposed substitute claims are likely to be found patentable.
Question: What is an expert declaration in IPR and why is it important?
Answer: Expert declarations are sworn statements by technical experts — typically PhD-level scientists or engineers with specific expertise in the relevant technology area — providing opinion testimony about claim construction, prior art mapping, the level of ordinary skill in the art, and whether the prior art renders the challenged claims obvious. Expert declarations are important in IPR proceedings because the technical complexity of the prior art analysis benefits from expert opinion that helps PTAB judges — themselves technically trained patent attorneys rather than technical experts — understand the technical substance of the prior art mapping arguments. A well-qualified, credible expert declaration strengthens both petitioner's invalidity arguments and patent owner's validity rebuttal arguments. I provide technical analysis support for expert declarations — working with the expert to ensure the technical content of their testimony accurately reflects the prior art and the level of ordinary skill in the technology area.
Question: What is the PTAB's claim construction standard and how did it change in 2018?
Answer: For IPR petitions filed on or after November 13, 2018, the PTAB applies the Phillips claim construction standard — the same standard used by federal district courts, giving claim terms their ordinary meaning to a person of ordinary skill in the art in light of the specification and prosecution history. Before this change, the PTAB applied the broadest reasonable interpretation standard — a more expansive interpretation that often resulted in broader claim scope in IPR than the same claims received in district court infringement proceedings. The 2018 standardization eliminated a significant tactical consideration in coordinating IPR and district court litigation — previously, a narrower district court claim construction could result in non-infringement while the broader BRI in IPR still produced cancellation. Under the unified Phillips standard, claim construction should be consistent between the IPR proceeding and the parallel district court litigation — strengthening the strategic coherence of coordinated IPR and litigation defense strategies.
Question: What is an IPR estoppel provision and how does it affect subsequent district court invalidity defenses?
Answer: IPR estoppel under 35 U.S.C. § 315(e) prevents a petitioner who has received a final written decision from the PTAB from asserting in subsequent district court proceedings any ground of invalidity that was raised or reasonably could have been raised during the IPR. The estoppel applies to prior art patents and printed publications — the only grounds available in IPR — and binds not just the named petitioner but all real parties in interest and privies. The strategic implication is significant: filing an IPR petition on a patent and receiving a final written decision that upholds the challenged claims creates estoppel that prevents the petitioner from raising those same prior art arguments in district court. This means IPR petition ground selection must be made with full awareness of the estoppel consequences — choosing not to raise a prior art ground in IPR preserves that ground for district court while choosing to raise it in IPR and losing forecloses it. I advise on IPR ground selection with this estoppel calculus specifically in mind.
Question: What is a post-grant review and how does it differ from IPR in ways that matter for patent challenge strategy?
Answer: Post-grant review is available for any AIA patent — patents with effective filing dates after March 16, 2013 — within nine months of grant and allows invalidity challenges on any ground including § 101 subject matter eligibility, § 112 written description and enablement, and all prior art grounds. IPR is available after the PGR window closes — or at any time for pre-AIA patents — and is limited to prior art patents and printed publications. PGR's broader invalidity grounds make it more powerful than IPR for challenging patents with § 101 software eligibility issues, § 112 enablement problems for broad claims with limited examples, or indefiniteness issues in vague claim language. However, the nine-month deadline for PGR is strict — missing it means IPR or district court invalidity are the only remaining USPTO challenge options. For Austin software and AI companies challenging newly issued patents with potential § 101 issues, PGR filed within the nine-month window can be more powerful than IPR because it allows the Alice/Mayo arguments that IPR does not permit.
Question: What is a PTAB oral argument and what does effective preparation require?
Answer: PTAB oral argument is a one-hour proceeding before a panel of three Administrative Patent Judges conducted approximately one month before the issuance of the final written decision. Each side typically receives 20-30 minutes to present argument — with the petitioner going first, the patent owner responding, and the petitioner reserving a portion of time for rebuttal. Unlike district court oral arguments before generalist judges, PTAB oral arguments are conducted before technically trained patent attorneys who have already reviewed the full briefing record in detail — they do not need the kind of foundational explanation that district court arguments often require and will ask highly specific technical and legal questions based on their independent understanding of the record. Effective PTAB oral argument preparation involves: anticipating the specific technical questions the panel is most likely to ask based on the issues flagged in institution decisions and orders; preparing concise, technically accurate answers to those anticipated questions without reading from a script; being prepared to engage with hypothetical claim constructions proposed by the panel; and knowing the technical record well enough to cite specific evidence in the record in response to panel questions without fumbling through exhibits.
Question: What is a motion to exclude evidence in IPR and when is it used?
Answer: A motion to exclude evidence in IPR is a filing by either party seeking to have specific evidence — typically an expert declaration, a prior art exhibit, or other submitted documents — excluded from the proceeding on evidentiary grounds. Common grounds for motions to exclude include: challenging the qualifications of the other party's expert to opine on the relevant technology; challenging the foundation or methodology underlying an expert's opinions; asserting that specific exhibits are not properly authenticated or are hearsay; and challenging whether specific evidence was timely submitted under the applicable IPR procedural rules. Motions to exclude in IPR are disfavored by the PTAB — the board generally prefers to weigh challenged evidence and give it appropriate weight rather than excluding it, and grants motions to exclude only when the evidentiary deficiency is clear and material. I advise clients to consider carefully whether a motion to exclude is the most effective use of limited word-count budget in IPR proceedings — in most cases, effectively cross-examining the other party's expert or providing competing expert testimony is more persuasive than attempting exclusion.
Question: What is a declaration of no obligation to license in IPR and how does it affect royalty discussions?
Answer: A declaration of no obligation to license — while not a formal IPR procedure — is relevant to the interaction between IPR proceedings and parallel licensing negotiations. Patent holders facing an IPR petition on a patent they are asserting in licensing negotiations sometimes use the IPR challenge as leverage to pressure the patent holder into more favorable licensing terms — the threat of IPR cancellation affects the licensing negotiation's balance of power. Conversely, patent holders who have initiated licensing negotiations before an IPR petition is filed sometimes argue that the IPR is a bad-faith tactic designed to extract lower licensing rates rather than a legitimate validity challenge. The interaction between IPR strategy and licensing negotiation strategy requires careful coordination — statements made in licensing negotiations can affect IPR proceedings and vice versa, and the timing of IPR filing relative to licensing negotiation stages can affect both the IPR's procedural posture and the licensing negotiation's dynamics.
Question: What is a secondary consideration and how does it help defend a patent in IPR?
Answer: Secondary considerations — also called objective indicia of non-obviousness — are evidence of real-world facts that suggest a claimed invention was not obvious despite apparent prior art teachings. In IPR proceedings, secondary considerations can be powerful rebuttal evidence for patent owners defending challenged claims against obviousness petitions. Relevant secondary considerations include: commercial success of products practicing the claimed invention — suggesting the market recognized the invention's value; long-felt but unsolved need — evidence that the problem the invention solved was known and unsolved for years before the patent; failure of others — evidence that skilled practitioners tried and failed to solve the same problem before the inventor succeeded; copying by the petitioner or others — evidence that competitors copied the claimed invention rather than independently developing their own approach; and unexpected results — evidence that the invention achieved results that were not predicted by the prior art. To be persuasive in IPR, secondary consideration evidence must be specifically connected to the claimed features that distinguish the invention from the prior art — not just evidence of commercial success in general, but evidence that the commercial success was specifically attributable to the novel claimed elements.
Question: What is a broadening amendment in IPR and why is it not permitted?
Answer: A broadening amendment in IPR — one that would expand the scope of a patent claim beyond the scope of the original challenged claim — is expressly prohibited by the IPR statute. This prohibition distinguishes IPR from reissue proceedings, where broadening amendments are permitted within the first two years of patent grant. In IPR, any proposed substitute claims must be narrower than the original challenged claims — they must add limitations, not remove them. The prohibition on broadening amendments in IPR means that patent owners defending challenged claims through motion to amend cannot use the amendment process to cure claim defects that require broadening the claim scope. If the challenged claims are both invalid as issued and too narrow to cover the relevant commercial embodiments, the IPR amendment process cannot solve both problems simultaneously — the patent owner must choose between defending the existing claim scope or narrowing to claims that might more clearly survive invalidity challenge.
Question: What is the difference between a patent that survives IPR and a patent that has been confirmed valid?
Answer: A patent that survives IPR — where the PTAB either declined to institute or issued a final written decision that the challenged claims were not shown to be unpatentable — has not been affirmatively confirmed as valid. The PTAB's decision that the petitioner did not demonstrate unpatentability by a preponderance of the evidence is a conclusion about the petitioner's specific prior art arguments, not a finding that the patent is valid against all possible challenges. A patent that survives IPR may still be found invalid in district court litigation on grounds that were not or could not have been raised in IPR — prior public use, on-sale bar, fraud, and § 101 subject matter eligibility are examples of invalidity grounds unavailable in IPR but available in district court. A patent that survives IPR is stronger than one that has not been challenged — the challenge and survival demonstrates resilience against prior art attacks specifically — but "survived IPR" should not be confused with "confirmed valid" in a comprehensive sense.
Question: What is a technical expert's role in IPR and what qualifications should they have?
Answer: A technical expert in IPR serves as the voice of the person of ordinary skill in the art — providing declarations explaining what the prior art teaches, how a skilled practitioner in the relevant field would have understood and combined the cited references, and whether the claimed invention would have been obvious. The expert's qualifications directly affect their credibility and the weight the PTAB gives their opinions — PTAB judges carefully assess whether the expert's background makes them a genuine representative of the relevant POSITA (Person of Ordinary Skill In The Art) or an overqualified academic whose perspective may not reflect ordinary skill in the art. For semiconductor, software, optics, and medical device IPR proceedings, an effective technical expert typically holds a doctoral degree in the relevant field, has hands-on research or industry experience in the specific technology area at issue, and can speak to what practitioners in the field actually knew and understood at the time of the invention. I provide technical analysis support for expert declarations — working with qualified experts to ensure that the technical content of their testimony accurately reflects the prior art and the POSITA's perspective.
Question: What is a second petition strategy in IPR when the first petition is denied institution?
Answer: When a PTAB panel denies institution of a first IPR petition — either on the merits or based on discretionary factors like Fintiv — the petitioner must decide whether to file a second petition challenging the same patent. Second petition practice is constrained by several considerations: the PTAB's General Plastic precedential decision establishes factors the board considers when deciding whether to exercise discretion to deny institution of a follow-on petition, including the relationship between the two petitions' prior art grounds, the petitioner's explanation for why the new grounds were not raised in the first petition, and the time elapsed between the first and second petitions. Filing a second petition with prior art that was reasonably available when the first petition was filed — but not included — faces a higher hurdle than a petition with genuinely new prior art not previously available. For Austin technology companies mounting IPR challenges to competitor patents, I advise on petition strategy from the beginning with potential follow-on petition needs in mind — preserving certain prior art arguments for a second petition if necessary rather than exhausting all available grounds in an initial petition that might be denied.
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Clients managing IPR proceedings often also work with me on:
[Patent Validity & Invalidity Opinions] · [Freedom to Operate Opinions] · [Responding to Office Actions] · [Patent Licensing Agreements] · [Of Counsel Services for Law Firms]
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Inter Partes Review Support
Inter partes review proceedings are won or lost on the quality of the technical prior art analysis — and that analysis requires both comprehensive searching capability and genuine engineering understanding of the claimed invention at a level that recognizes relevant prior art when it is found.
I offer a free 30-minute consultation to discuss your specific IPR situation — whether you are assessing a petition opportunity against a competitor's patent, responding to a petition filed against your own patent, or evaluating IPR strategy as part of parallel district court litigation.
My engineering background in laser lithography, semiconductor manufacturing, optics, and physics from the University of Texas at Austin gives me the technical depth to conduct prior art searches in these technology areas that surface the most powerful invalidating references — including in the technical literature of IEEE publications, conference proceedings, and physics and optics journals that patent examiners may not have searched during prosecution.
I work with litigation firms and corporate IP teams as technical patent support — providing prior art searching, claim mapping, claim construction analysis, and technical analysis supporting expert declarations — under the direction of lead litigation counsel. I also advise patent owners on pre-IPR portfolio vulnerability assessment and contingent motion to amend strategy for patents in technically complex fields where the engineering dimensions of the validity analysis require specific domain expertise.
Call or text (512) 293-0710, email sconnolly@austin-patent-attorney.com, or fill out the form to schedule your free consultation.
All discussions are confidential under attorney-client privilege.
Phone: 512-293-0710
Email: sconnolly@austin-patent-attorney.com
Location: Austin, Texas
Serving Austin, Round Rock, Cedar Park, Georgetown, and all of Central Texas.
USPTO matters are federal — I work with clients throughout Texas and nationwide.