Tuesday, August 25, 2026
Overview
For more than a decade, inter partes review gave patent defendants a faster, cheaper way to knock out weak patents at the Patent Office instead of in court — but that door is closing fast, as filings crater and the PTAB denies most of the petitions still being filed. In this Berkeley Center for Law & Technology conversation, Haynes Boone trial lawyers Debbie McComas and Stephanie Sivinski break down what defendants do now that validity fights are heading back to the courtroom — and how to take a §§ 102 and 103 invalidity case to a jury without undercutting their own non-infringement defense.
Instructor(s)
Debbie McComas, Partner; Chair, Federal Circuit Practice Group; Co-Chair, Community Engagement Committee, Haynes Boone
Stephanie Sivinski, Partner, Haynes Boone
5 Key Questions Answered
1. How does the decline in IPRs impact invalidity and non-infringement strategies in district court litigation?
With IPRs off the table, invalidity and non-infringement now have to be built in parallel and taken to the same jury, so the disclosure clock forces both cases to be developed early. Because Sections 102 and 103 turn on facts, invalidity is unlikely to be resolved on dispositive motions or pretrial — it gets tried, not solved beforehand.
“So, the first thing is that you’re going to need to be developing your invalidity case early, just because of your disclosure obligations, probably in tandem with your development of your non-infringement case, which may make it hard to see tension points… Because 102 and 103 have factual underpinnings, this is less likely to be something that a court could rule on dispositive motions or that you’re going to get relief on pretrial. So, we’re looking at taking this to the jury. So, you have to develop your positions early.” — Stephanie Sivinski
“One of the key points that Stephanie made that we maybe hang onto in all of this is that validity is something that gets tried. It’s not something that gets solved before you get to trial.” — Debbie McComas
2. Are there continuing benefits to EPRs (ex parte reexam) in the wake of the decline of inter partes review?
Yes. Sivinski does not see a universal rule making EPRs dangerous the way they once were, and in many matters she and her colleagues are still recommending filing them — subject to local rules and the judge’s preferences. EPRs can even support a stay in some courts, though not as the ordinary course in the busiest patent districts.
“…In many cases today we’re still recommending filing EPRs. Check your local rules, check your judge’s preferences for whatever litigation you’re doing. But no, I don’t think there’s a universal rule that says that you should be automatically wary of filing EPRs.” — Stephanie Sivinski
“There are marginal cases where stays are found to be appropriate, but it’s certainly not the ordinary course of business that the court issues stay pending EPR. There are instances where it’s appropriate, and courts in other districts are potentially more likely to want to grant stays pending EPR- especially after you get a first office action or some other indication from the PTO that they are going to err towards invalidating, or at least maybe allowing for amendment of certain claims that would make trial inefficient.” — Stephanie Sivinski
3. What is the impact on claim construction strategies when both invalidity and non-infringement are being tried before the district court, rather than split adjudications?
When both defenses are tried in one forum, the party can no longer take a narrow construction at the PTO to dodge invalidity and a broad one in court to prove infringement — that split is reconciled by putting everything back in one jurisdiction, and each side has to pick a claim-construction “horse” and ride it. Without a co-pending IPR, though, defendants gain room to press indefiniteness positions at Markman that were hard to maintain alongside a PTAB petition.
“From the Federal Circuit perspective, I see this all the time, we get a set of appeals from a series of IPRs, and you have trial court strategies where, obviously, from the patent owner side, you want very narrow constructions in the Patent Office, so you avoid invalidity, and then you get to the district court, and you want the broadest construction you can find, so you get infringement. So, I think everybody has to pick a horse and ride it as to what the claim construction should be. So, maybe we’re reconciling those by putting it all back in one jurisdiction, but there has been that tension, and people have been able to manipulate that, for lack of a better word, for a while, and I think that’s over, at least in the short term.” — Debbie McComas
“Another option for defendants that know that IPRs are probably not getting filed is indefiniteness. It had become increasingly hard in the PTAB because you were statutorily required to articulate your claim construction positions in your petition. It was hard to spell out grounds of invalidity in the PTAB while also maintaining indefiniteness positions at the district court, which are almost always raised in Markman, so decided by the court, not something you’re going to raise to the jury. If there’s no IPR, you are freer to really lean into those indefiniteness positions.” — Stephanie Sivinski
4. How does the pool of available prior art change without a co-pending IPR?
Without IPR estoppel, the trial record is no longer pushed toward system art to avoid being barred from patents and printed publications, so those references come back into play. And because there are no real-party-in-interest constraints, co-defendants can collaborate and cast a wider net — even using different search vendors — to find the most useful, least conflicting art.
“In a world in which we’re filing IPRs, if you win the IPR, there’s no trial, and if you don’t win the IPR, you’re estopped from raising printed publication or patent prior art. So, two to three years ago, really the focus of invalidity contentions, you would throw some patents and printed publications in there too. But if you knew you were going to file an early enough IPR that you’d get a final written decision before trial, the real focus of your invalidity story was going to be system art.” — Stephanie Sivinski
“One potential benefit outside the context of IPR world is that you can maybe collaborate with your co-defendants. If you have a litigation where multiple defendants have been sued, you don’t have real party in interest issues anymore when you don’t have to worry about IPRs, and so you can possibly be freer to collaborate and cast your nets widely in terms of searches. So, you can make sure your co-defendants are using different search vendors than you are, so you can find the art that’s most useful and has the least amount of tension points.” — Stephanie Sivinski
5. How can litigators develop a jury-friendly invalidity case?
Make the invalidity story something a jury can absorb: choose references whose figures can be put on a screen and walked through, and lean on an expert who teaches and connects rather than one built for surviving a deposition. Sivinski’s example — an expert who invalidated a patent in a 15-minute presentation — shows that at trial invalidity ultimately turns on credibility.
“Because you’re going to try this defense in front of a jury, I think you need to be really thoughtful about making sure that your theories are jury friendly. I think one aspect of that is, for example, if you’re going to use patents or printed publications… one thing to think about is, how are the figures in these printed publications and patents? Is this something that I can flash on a screen and help the jury walk through and understand?” — Stephanie Sivinski
“At the end of the day, if the jury isn’t going to fully absorb the technical material, it’s a credibility game, and having an expert who can really connect with the jury and seem credible, because they are credible, is a really useful data point. Debbie and I were involved in a trial. It’s been some time now, but invalidity was not the core focus of our trial strategy. The core focus of our trial strategy was not infringement, but we had an expert for invalidity who said, ‘Give me 15 minutes, and I will convince them.’ And he did. We invalidated one of the patents in suit in a 15-minute invalidity defense presentation. He just knew how to connect.” — Stephanie Sivinski
Keywords
inter partes review (IPR) • ex parte reexamination (EPR) • PTAB • USPTO • §§ 102 and 103 • § 112 indefiniteness • Phillips vs. broadest reasonable interpretation claim construction • IPR estoppel • system art • Markman hearing • “patent invalidity strategy after IPR decline” • “litigating obviousness to a jury”
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Transcript
In this transcript, Debbie McComas, Partner; Chair, Federal Circuit Practice Group; Co-Chair, Community Engagement Committee, Haynes Boone, and Stephanie Sivinski, Partner Haynes Boone discuss “Patent Trial Strategy When IPRs Aren’t an Option.”
Wayne Stacy 00:25
So welcome everyone to the Berkeley Center for Law and Technology’s [BCLT] Expert Series webcast. As you know, we always try to find speakers that are on the cutting edge of issues, and we try to address the issues that are impacting practitioners on a daily basis. And one of those issues that, I don’t know, you might have heard about is the change and shifts in how IPRs [inter partes reviews] and post-grant processes are being handled at the USPTO [United States Patent and Trademark Office]. Probably not a bigger shift in my career doing patent litigation, or a faster shift in any issue that we’ve ever seen. And so, to try to help keep up with these issues, I reached out to somebody that we’ve worked with at BCLT a lot, Debbie McComas. She’s a partner in Haynes Boone, or, for those of you that are old like me, Haynes and Boone. I’ve learned to take the and out. It’s Haynes Boone. Still hurts me to say that, but I can do it. Debbie is, of course, partner in the litigation department. She’s also chaired the Federal Circuit Practice Group, so kind of has this broad view across the industry, from the trial lawyer to the appellate piece of it. And like everybody else, her career has been deeply impacted by IPRs over the last, you know, last 15 years, and probably a whole lot in the last year that we’ll hear some thoughtful lamentations about. And then with our, new to BCLT, Stephanie Sivinski, also a partner at Haynes Boone, also in the Dallas office. She’s in the patent trial group there also. So, I’m looking forward to hearing the two of you make sense of this.
Debbie McComas 02:16
Well, I don’t know about sense, Wayne, but we’re going to try to at least give you some hints about how strategies should go forward, what we’re going to do next. And you know, Wayne, I was working on the Berkeley-Stanford Patent Law Institute last year, and the main discussion was, are IPRs dead? And I think our conclusion there was not dead yet. And I had the privilege of being at the forefront of some of the mandamus petitions, where we’ve continued to challenge what’s happening in the Patent Office. I want to start by telling folks that that’s not over yet. We’re still hanging on by a thread, but we are hanging on. There are cert petitions, a series of them, most notably one for Google and one by Tesla now, that are with a whole slew of amicus briefs being filed, that are continuing to challenge what we believe is a statutory overreach by the Patent Office on its unwillingness to look to IPRs. So, just a few statistics to get us started there, two years ago, the PTAB [Patent Trial and Appeal Board] denied about 32% of the IPR petitions that were filed. Now they deny about 63%, but that number is deceiving, because what’s happened is people aren’t filing them anymore. So we’ve gone from Q1 of 2025, there were approximately 185 petitions being filed. In the month of April, there were 15, and of those 15, only 63% are being granted. So, what do we do next? So Stephanie is here with me as a litigator. She litigates a lot in the Eastern District of Texas. To be honest, we litigate a lot together. But the question that we’re going to talk about today is: let’s assume IPRs are not viable. What do we do next, and where do we go from here? So Stephanie, as the more senior advocate in the room, I can tell you a big part of my practice existed before IPRs existed, and back then, when there was inter partes reexam and those options, the answer was always don’t do it, because now the plaintiff’s lawyer is going to come in. The patent owner is going to come in and say, “Look, Patent Office checked this twice and said yes. Is that still the case?
Stephanie Sivinski 04:48
I don’t think there’s a universal rule across all districts that makes EPRs [ex parte reexaminations] dangerous, like perhaps they once were. And maybe this is that courts have gotten more sophisticated about what to do with co-pending proceedings, given the rise of IPRs. I will say I graduated from law school in 2010, so technically, my practice started before IPRs. But for all practical purposes, I’ve lived in the IPR era my whole career. So I don’t think there’s an overall or universal rule that says no, don’t file an EPR. Because I think, from an evidentiary standpoint, some courts have gotten savvy now to this issue. So, for example, the Eastern District has a list of standing motions in limine, one of which is that there shall be no evidence about PTAB proceedings or other alternative structures for evaluating things outside of the Article III context. And I think, given that more people are filing EPRs, how that standing motion in limine applies to EPRs may be fleshed out a bit more. But I think courts are savvy to this and understand that it’s improper or potentially prejudicial to allow a patent owner to wax poetic about what’s happened at the Patent Office. There’s probably exceptions to that circumstance. It may be proper evidence in some instances, but I don’t think it’s as dangerous as maybe it once was. So I think, just like everything else, and I’m not personally an EPR expert, though I work with, and so do you, lots of colleagues who are, and certainly I think in many cases today we’re still recommending filing EPRs. And check your local rules, check your judge’s preferences for whatever litigation you’re doing. But no, I don’t think there’s a universal rule that says that you should be automatically wary of filing EPRs.
Debbie McComas 06:42
And of course, one of the benefits of IPR is often in lots of jurisdictions that can justify a stay of the litigation, so you don’t have the dual litigation. It allows you to bifurcate your trial strategies, where you really don’t have to focus on invalidity. You really spend all of your time on non-infringement, and you let the invalidity, at least under 102 and 103, play out in the Patent Office. With EPRs, in your recent experience, are we seeing any stays as a result of EPRs?
Stephanie Sivinski 07:18
Not in the districts that are the busiest patent districts. So, you know, asterisk that: the Western District, the landscape there is going to change significantly with Judge Albright’s departure this month. But certainly in the Eastern District, there are marginal cases where stays are found to be appropriate, but it’s certainly not the ordinary course of business that the court issues stays pending EPR. But, you know, we certainly there are instances where it’s appropriate, and courts in other districts, I think, are potentially more likely to want to grant stays pending EPR, especially after you get a first office action or some other indication from the PTO that they are going to err towards invalidating, or at least maybe allowing for amendment of certain claims that would make trial inefficient.
Debbie McComas 08:11
Yeah, and, you know, that being said, we have a case right now. Names shall not be named, but we have a case right now where a first office action is issued, and we are set for trial later this year, and everybody’s like, “What do we do? You know, and it’s been raised with the court. This is a court that isn’t as accustomed to patent cases. So I would say, I would put an addendum on what Stephanie said, that it’s a real crapshoot at the moment as to the consequence of that and how much it’s going to help both.
Stephanie Sivinski 08:41
I think one other thing to think about when it comes to stays is that, you know, there was a statutory timeline for IPRs that gave courts some certainty as to when they would be over, and that’s certainly not the case with EPRs. And given how many more EPRs that have been filed recently, I’m not clear that the statistics we have on EPR timelines are going to hold true, and I’m not sure what courts are going to do with that. It also means that you may not be well positioned to ask for a stay for a significant period of time in the case, because if you want to wait, for example, until you get a first office action before you ask the court for a stay, you might be waiting a little while. And for better or for worse, there’s no statutory constraints for how long the office is going to take to rule on these or to look at these issues, and even tell you whether you have an EPR that they’re a substantially new question that they’re willing to take up. So timing is a bit of a wild card with respect to EPRs that maybe it was not in the IPR context.
Debbie McComas 09:41
And Stephanie and I have a bit of a difference of strategy opinion in regard to the strength or weakness of trying to argue an invalidity and a non-infringement case in the same case, because a lot of times, in my opinion, it feels like you’re arguing out of both sides of your mouth. Right? It’s like, wait, we didn’t do that. We don’t do what they do. But even if we did, you know, it it’s existed for a long time. And particularly — and I’m throwing a lot of questions at Steph at the same time at this point — but the problem, of course, is with system art. Wait a minute, I’ve been doing this for a long time, and I have personally experienced the jury’s reaction to that being that you don’t have a patent. How can you have the rights if you don’t have a patent? So, I just threw a bunch of issues out there all at once. So, talk me through kind of how we start the process and analyze how we’re going to approach, assuming EPR is out, IPR is out. How do we now, Brave New World, approach this concept of invalidity and non-infringement without feeling like we’re taking inconsistent positions?
Stephanie Sivinski 10:53
Yeah. So I think the first thing to think about is timing, and this sort of dovetails with our discussion on the stays in the district court. Obviously, you have an obligation to tee up your invalidity case in your invalidity contentions, which are often very early in the case. Even in a court that, you know, may traditionally have a slower scheduling process, like the Northern District of California, it’s still 45 days after you receive infringement contentions. You have to make out your whole invalidity case, and, you know, this depends district by district too. But in many districts, you’re going to be locked into those invalidity positions. You can choose from the things that you’ve included in your contentions, but you cannot really go outside of that box in a court like the Eastern District of Texas, for example, absent claim construction issues. So, the first thing is that you’re going to need to be developing your invalidity case early, just because of your disclosure obligations, probably in tandem with your development of your non-infringement case, which may make it hard to see tension points. I think the tension point you articulated was a thematic one, but sometimes there are technical tension points where, you know, I want the claim scope to be narrow when it comes to my non-infringement positions, but maybe broader when it comes to my invalidity positions, and you’ve just got to figure those things out early, given the timing of the district court If a stay is off the table, and if you think there’s no opportunity to resolve invalidity outside of the district court going to a jury. Because 102 and 103 have factual underpinnings, this is less likely to be something that a court could rule on dispositive motions, or that you’re going to get relief on pretrial. So, we’re looking at taking this to the jury. So, you got to develop your positions early. One potential benefit outside the context of IPR world is that you can maybe collaborate with your co-defendants. If you got a litigation where multiple defendants have been sued, you don’t have real party in interest issues anymore when you don’t have to worry about IPRs, and so you can maybe be more free to collaborate and cast your nets widely in terms of searches. So, you can make sure your co-defendants are using different search vendors for you than you are, so you can find the art that’s most useful and has the least amount of tension points. But because you’re going to try this defense in front of a jury, I think you need to be really thoughtful about making sure that your theories are jury friendly, and I think one aspect of that is, for example, if you’re going to use patents or printed publications, which you’re free to do if you’re not going to face IPR estoppel. One thing to think about is, how are the figures in these printed publications and patents? Is this something that I can flash on a screen and help the jury walk through and understand? You know, making sure that it’s something they can get their arms around to the extent, obviously it goes without saying that a lot of these cases are going to be super complicated from a technical perspective, but can you give the jurors some sort of markers in the dean to help them through that analysis, like figures, for example?
Debbie McComas 14:19
Yeah, I think that goes too. It’s interesting. We had the conversation before we came on today about this as well, is how we communicate — obviously, how something is communicated within the Patent Office, where there are experts on these issues, and how we talk to the jury is very different. And it’s super interesting to think about those experts that we have been using in the Patent Office may not be your best witness or your best expert once you get to trial. So I’m curious, what other factors or how else should we be thinking about how we package that evidence, where you’ve got a very technical case in the Patent Office that we need to make that, simplify that, let’s call it that, simplify that in a way that a jury can understand it. What else do we need to consider besides the expert?
Stephanie Sivinski 15:15
You’re right about experts. First, with respect to experts, I think, again, I’m not an IPR practitioner primarily, but in an IPR where there’s not going to be an evidentiary presentation to the board, the most important thing your expert can do is be a really good deponent and withstand cross-examination really well, which doesn’t always translate well to someone who’s going to be able to explain and teach. Surviving a deposition is a lot of not answering questions, or providing short answers to questions, and that’s certainly a skill that’s important. But in the district court context, where that could be played in front of a jury, to the extent you’re changing your testimony a bit between your deposition and your direct testimony, or even your answers on cross, that’s problematic. Your demeanor during deposition needs to be less combative, I think, in the district court, and the focus needs to be on teaching rather than just sort of stonewalling, because that doesn’t come across very well to a group of, you know, average citizens who are going to see this played out.
Debbie McComas 16:29
I think stamina too, right? I mean, the deposition that you take in an IPR, or that is taken in IPR, because again that’s not really where we practice on a day-to-day basis, but I do help develop the evidence sometimes in those instances, that deposition is just not the same as the deposition with a video that we’re doing for testimony that you’re going to be impeached on when you get to, and the expert report too. That it’s a much different game once we get to the trial court.
Stephanie Sivinski 17:03
Yeah. Yes, I agree. And the other thing that I find useful in experts is an expert who’s been to trial enough to understand their own testifying strategy, or you know what their, where their skills lie. So an expert who, you know, is a professor in their non-expert life might want to get up and sort of write things on a whiteboard, or otherwise be dynamic in their presentation, where they can get up from the witness stand and move around the courtroom a little bit, which is helpful when you’re in front of a jury to capture their attention. We talk a lot with experts about doing something other than just a rote slide deck. Certainly, slides are helpful in terms of guiding and pacing the direct examination. But can you make a 3D model that the expert can handle in front of the jury and maybe even pass around to the jury? I think, again, we’re talking about really technical things that jurors may not understand, including because question and answer format is a really tough way to learn new material. Listening to others ask questions and answer is a tough way to learn new material. So, to the extent the expert can get up and move around the courtroom, or have a more dynamic presentation, or write something on a whiteboard, or use a 3D model, those are all helpful things. And again, I think an expert who’s testified in district court a lot may have a level of comfort with that, and even be able to contribute to the, you know, strategy decisions about how to present the evidence. And at the end of the day, if the jury isn’t going to fully absorb the technical material, it’s a credibility game, and having an expert who can really connect with the jury and seem credible because they are credible is a really useful data point. And Debbie and I were involved in a trial. It’s been some time ago now, but invalidity was not the core focus of our trial strategy. The core focus of our trial strategy was not infringement, but we had an expert for invalidity who said, “Give me 15 minutes, and I will convince them. And he did, and we invalidated one of the patents in suit in a 15-minute invalidity defense presentation, and he just knew how to connect.
Debbie McComas 19:20
And adding to that war story, that in the now a client happened to be the clerk in that courtroom at that time, and that was, what, 10 years ago? He still remembers it. So yeah, you know, so another war story — and we’re going to remain anonymous, not mention any clients — but another war story: opposing expert in a three-day trial. Our opponent put on a day and a half of this expert reading 250 slides, and about 60% of the jury fell asleep. So anyway, I mean, those are all things that you would do in any trial, right? You want witnesses that can testify. It’s just interesting because we have gotten somewhat comfortable with having more technical experts, and that’s kind of who’s on our list. And I do wonder, and maybe suggest, that we start thinking outside the box in developing a different group of experts. You know, because if you work in the same tech frequently, then you should have kind of your go-to folks, and it’s probably not the person that has testified in the IPRs, right? A lot of the time, don’t you think?
Stephanie Sivinski 20:30
Yeah, I agree. One other thread I wanted to pick up that you had sort of laid out, Debbie, is what to do with system art. Obviously, in a world in which we’re filing IPRs, if you win the IPR, there’s no trial, and if you don’t win the IPR, you’re estopped from raising printed publication or patent prior art. And so, you know, three years ago, two years ago, really the focus of invalidity contentions, you would throw some patents and printed publications in there too. But if you knew you were going to file an early enough IPR that you’d get a final written decision before trial, the real focus of your invalidity story was going to be system art. And I think system art can be really engaging if you are lucky and you find a witness who can tell the story of the development with some passion behind it, and it’s engaging, or it’s a device that you can actually find and you can hold and let the jury hold. You know, in a software case, for example, it’s a little bit tougher. We thought we had found the holy grail in a software case, and it was like a CD, which the jury’s not going to see what’s on the CD. So the best we could do is have the witness be like, “That’s what’s on the CD. I did it, and here it is. And actually, we found the CD because it was hanging on the witness’s wall because he had developed it and was really proud of it, and we got him to ship it to us. But that’s what you’re working with in a software case. It doesn’t lend itself quite as well always to something that you can show the jury that’s a physical product. System art can work particularly well if it’s your own client’s prior work, and there are tension points thematically with the non-infringement case. But, you know, obviously, being able to access personnel and potential sources of evidence about a prior art system, because it’s your client’s own, is very helpful. A lot easier than having to go on eBay and try to hunt down other CDs, which we’ve had to do before for prior art software. So we think system art can be useful in front of a jury. And one of our colleagues tried a case where he built out a whole virtual system and essentially hosted the old source code and allowed the experts to play with the system, sort of in a sandbox environment, so that they could say that they’d actually tried it. So, system art is useful sometimes in the jury context, because you can make it a little bit more dynamic than slides with patent figures, but it is tough from an evidentiary standpoint. Just hunting down the evidence, and also figuring out how to authenticate evidence about when it was first offered for sale or publicized. So system art can be tough. The other thread that you laid out is how to deal with tension between the non-infringement defenses and the invalidity defenses.
Debbie McComas 23:33
To me, this is the biggest issue, right? It’s always, to me, the biggest strategy issue that you have to be concerned about, and we’ve had this nice little moment or decade where in IPR you didn’t have to deal with that, because it was really — you know, those two things were really being tried separately, and to me that’s the biggest change that we’re seeing now. So finish my sentence.
Stephanie Sivinski 23:57
Yeah, well, I think there’s two components to that. A, what does it do to your case strategy building up to trial, and then B, what does it look like at trial? Right, exactly. So leading up to trial, claim construction is the biggest place that I think this comes up. And that was my next question. Okay, go there. So, in the early days of IPR, the Patent Office was applying the broadest reasonable interpretation claim construction standard, which is, of course, what the Patent Office will apply in the EPR context as well, which is different from the Phillips claim construction standard that applies in the district court. In 2018, late 2018, the PTAB started applying the Phillips standard and really was cracking down on inconsistencies between the district court and the IPR petition, and so early on in the case, you sort of had to choose a horse to ride. Right? Are you going to lean into a claim construction that’s going to favor your non-infringement story at the district court, or an invalidity position that you want to raise at the PTAB? Arguably, there’s maybe some more freedom now in an EPR world, because the Patent Office is going to apply the broadest reasonable interpretation in an EPR. I still think courts are gonna maybe be sensitive to parties who are too contradictory in their positions between two different venues, but I do think EPR context gives you a bit more wiggle room to take a non-infringement friendly position in the district court, and then an invalidity friendly position in the EPRs. But if you’re trying your invalidity case to the district court too, or to the jury in the district court too, you’re going to have to resolve those tension points.
Debbie McComas 25:45
Yeah, from the Federal Circuit perspective, I see this all the time, right? That we get a set of appeals from a series of IPRs, and you have trial court strategies where, obviously, from the patent owner side, you want very narrow constructions in the Patent Office, so you avoid invalidity, and then you get to the district court, and you want the broadest construction you can find, so you get infringement. So, it, you know, I think, fairly, everybody’s got to pick a horse and ride it as to what the claim construction should be. So, you know, fairly, maybe we’re reconciling those by putting it all back in one jurisdiction, right? But there has been that tension, and people have been able to manipulate that, for lack of a better word, for a while, and I think that’s over, at least in the short term.
Stephanie Sivinski 26:38
And I think the other change with respect to claim construction is — and, of course, you can probably tell that I’m mostly on the defense side, so I’m glad that you brought up the patent owner perspective. That is, it is not universally true that I’m on the defense side. So that’s helpful, though. Given we’re talking about invalidity, usually it’s defendants. So, another option for defendants that know that EPRs are probably not, or sorry, IPRs are probably not getting filed, is indefiniteness. So, it had become increasingly hard in the PTAB because you were statutorily required to articulate your claim construction positions in your petition. It was hard to spell out grounds of invalidity in the PTAB while also maintaining indefiniteness positions at the district court, which are almost always raised in Markman, so decided by the court, not something you’re going to raise to the jury. And if there’s no IPR, you are freer to really lean into those indefiniteness positions. Of course, it’s clear and convincing evidence standard, and you’ve got to prove to the court that you have reached that standard in a Markman hearing, which is typically not evidentiary. It’s tough. It’s a tough, you know, hill to climb. But you are more open to raising those kinds of positions in the district court than you may have been if you were filing an IPR. So maybe some more wiggle room in claim construction than historically you would have had on some of those issues.
Debbie McComas 28:13
Yeah, I agree with that. You know, and kind of one on one, one and one, not as much as 112, as far as, you know, taking different positions. But it’s really hard to argue a straight up 102 or 103 in the Patent Office when you think you’re talking about a patent that’s basically automating, you know, what the human did yesterday, right? You know, how do you crack the egg? Right. You know, so, I think those things are kind of a nice harmony for those of us that are going to be in the trenches in the trial courts, since we don’t have the IPR side of it to kind of balance the battle.
Stephanie Sivinski 28:49
Yeah, yeah, and just going back to something else you said, which is now that it’s all going to be in one proceeding, you just got to pick your strongest arguments. It is also hard to have the same expert articulate a 102, 103 position and also a written description or enablement position in front of a jury. You know they’re not necessarily logically inconsistent positions, and in an ideal world, you could raise maybe the 112 positions in front of a court and get a ruling, and then save the 102, 103 for a jury. But it’s tough, and we’ve done it. It’s tough to have an expert be on the stand and say, this was all done before, but also I don’t know what this means, and I wouldn’t have been able to make this invention given the disclosure and the specification. So when it’s all presented to a jury, and all of this comes down to credibility, tension between those kinds of arguments, I think, takes center stage and should take center stage, or the forefront, in your strategy thinking about how to craft your trial strategy. And you know, a good lawyer knows when to let go of bad arguments, I think, or arguments that are going to step on the toes of other arguments. So we made it work in our case, but I think it’s a tough — that’s another tough tension point.
Debbie McComas 30:04
And for someone who does a lot of appellate work, the tension is even higher, because some of those 112 arguments are going to be the best arguments on appeal, and they’re the hardest ones to try. Right. So, you know, there’s a lot of tension between me and Stephanie on a given day as to what evidence is going to come in in the trial court and what should or shouldn’t get submitted to the jury. I think those were kind of my main points that I thought were worth talking about. Is there anything I miss?
Stephanie Sivinski 30:31
Yeah, I do think one other thought that you raised that is worth providing a couple more thoughts on, which is how invalidity can dovetail with the other themes in the case. We talked about how invalidity is just tough in front of a jury. So I would encourage litigators to think about how they can use invalidity as a vehicle to tell some of their, or reiterate some of their, other case themes, even if you don’t think that invalidity is going to be the thing that saves the day or that wins over the jury. Though, again, maybe don’t count invalidity out too soon.15 minutes, right? 15 minutes. But I think, and this is a case by case analysis, and I think we disagree on some of these points about what’s the best strategy. But for example, you could use your invalidity case, if you have system art that’s your client’s. You could use your invalidity case to reinforce your case theme about your client participating and contributing to the innovation eco sphere. What has your client done to contribute to the technology in this space, which hopefully makes a jury less likely to want to pop your client with a big infringement verdict, so you-
Debbie McComas 31:44
and I’ve had that backfire.
Stephanie Sivinski 31:46
Yeah, right. Yeah. So, you can try. And, you know, particularly I think maybe in the standard space, or where the technology relates to a standard, and your client participated in the standard setting organization, you can say this is a Bluetooth or a USB. Insert your favorite standard. This is this kind of technology. My client has been involved in this standard setting organization for years and years and years. Worked on this technology early and also contributed our own patents so that everyone can use this for free. You know, those kinds of themes that you can use your invalidity case to reinforce. Same on the non-infringement side, and I think this is the one that’s trickiest, and the one that you are not a big fan of, which is: I don’t think that my client’s product does X. I don’t think it meets the claim limitations. It doesn’t do X. But, jury, if you disagree with me, somebody else did X first. So, like the rock in a hard place for the plaintiff, which I think is the one you feel less great about. And then I also think invalidity can reinforce damages themes in certain cases. So, potentially, a jury might be less likely to find that an invention is really valuable if they’ve got all the pieces of places where other people did this first. They may be left thinking, “Where’s the new thing that’s worth millions and millions of dollars here? You can sort of maybe whittle down the value of the invention, or reiterate themes you’ve raised in your damages case. Sort of whittle down the value of the invention through an invalidity case.
Debbie McComas 33:25
That’s helpful, actually. That’s a very helpful thought. So we are brave new old world is how I’m going to summarize what we’re talking about today. And these are very much hopefully some strategies that are going to help you going forward. For those of you that didn’t live in the pre-IPR world, I hope that this is helpful to kind of get a glimpse on the brave new world. I always hope this brave new old world is going to be short-lived, but that’s my personal perspective, since I maybe am involved in the U.S. Supreme Court petitions that are currently pending. Wayne, did we miss anything?
Wayne Stacy 34:03
You didn’t, but I have a couple questions. If we’re going to talk about the old world, I qualify. The gray beard gives me the ability to talk about the old world. So, the first question for you: EPR. When is the first time you heard the acronym? Because in the old world, it was still ex parte reexam.
Stephanie Sivinski 34:24
Recently, yeah, recently.
Wayne Stacy 34:27
I’ve got to put that as the new generation has wanted to make it IPR, EPR, and PGR [post-grant review] or
Stephanie Sivinski 34:35
And RPI. Which, in the same conversation with a client recently, we talked about IPRs, EPRs, and RPI, real party in interest concerns, all in one conversation. It was real alphabet soup.
Wayne Stacy 34:48
And so now, my confession. It’s probably made me, actually, very, very sad. As you were saying this, I pulled up in 1997. I published my first article, and it was Reexamination Reality: How Courts Should Approach Stays and Reexamination. That is old. It’s 30 years old now. So,
Stephanie Sivinski 35:12
what did you say?
Wayne Stacy 35:16
I have no clue at this point in time, and I was still in law school, so I doubt it was very important. So
Stephanie Sivinski 35:23
go back and read it and see if you projected right. Yeah.
Wayne Stacy 35:26
But it’s interesting that it is circled that far back. We’re 30 years in the past. You know, when people talk about pendulum swinging, it goes much further than most of us have a memory to figure out.
Debbie McComas 35:43
Yeah, I mean, I do think the last little elephant in the room, of course, is that IPRs are also a much more expeditious, but also a less expensive, way to handle these issues. And I think one of the key points that Stephanie made that we maybe hang on to in all of this is that validity is something that gets tried. It’s not something that gets solved before you get to trial. So, you know, the strategies we’re talking about now, as far as this being the brave new old world, is we’re all going to already, our trial settings have just escalated like crazy, so maybe that’s the positive or negative note to end on, depending on which side of the beat you’re on.
Wayne Stacy 36:31
Well, and I’ll put one other thing out there. I’ve had discussions with, and see what your reaction is. My experience trying cases and dealing with this is that obviousness is very difficult to pitch to a jury, and you wanted to go with novelty because it’s simple. You put up the check boxes. You know, you don’t have to say everything except this one, and it would have been obvious to put this in. But for IPRs, obviousness actually came alive in a way that it was never available to defendants before. Do you think, if IPRs really drift off into never never land, that ex parte reexam will keep obviousness as a real defense going forward?
Debbie McComas 37:22
Not by EPRs. I think what’s happening in the Patent Office right now, that we’re going to learn that EPRs are not immune from that very narrow window of what’s actually getting review or getting relief. And I think it’s a little too soon to have really good statistics. Maybe by the patent law conference this year, we’ll have real statistics on that. But that being said, we have been successful recently in some EPR challenges, but I still think you just can’t count on it. And, you know, what happens is something gets amended in the EPR process, and, you know, then you start over on your discovery. So, it really just elongates trial, or the litigation process, rather than solving the problem.
Wayne Stacy 38:22
Well, wonderful. This is obviously really important, not just for the time being, but it’s a marker of how far the Patent Office can continue to shift back and forth over the coming decades, or coming decade. If we’re going to have any stability to a document, a patent, it’s supposed to have a 20-year lifespan. You can’t shift enforceability every two or three years.
Debbie McComas 38:48
We agree.
Wayne Stacy 38:49
So people may vary on which side they come down on, but I’m not sure anybody likes to see the the pendulum swing.
Stephanie Sivinski 38:57
Yeah, so yeah.
Wayne Stacy 38:59
Well, with that, thank you so much. It’s it’s a pleasure to to listen to you, and it’s we’ll be following up soon, Debbie, at the the Berkeley-Stanford conference. So, I look forward to seeing the next iteration of this.
Debbie McComas 39:13
Thanks, Wayne.
This transcript was created with an automated transcription service and reviewed by a human