Combining technically savvy judges, a fast-paced docket and comparatively low costs, the U.S. Patent and Trademark Office’s Inter Partes Review (IPR) system has become a go-to option for counsel seeking to neutralize asserted or potentially threatening patents. Of course, to enjoy the advantages of an IPR, one must first convince the Patent Trial and Appeal Board (PTAB) to institute the review. Given the complex technologies typically involved and the strictly formatted petition on which the PTAB’s initial decision is based, overcoming this first hurdle is not necessarily an easy one. Now, however, there is a new strategy for enhancing the potency of an IPR petition and increasing the chances of a review being instituted: the use of recorded live technical tutorials and expert testimony.
In a recent petition for IPR, the PTAB accepted as an exhibit a video presentation of a recorded live technical tutorial and testimony by the petitioner’s expert. With the petition for IPR limited to written explanations and static figures, the recorded live testimony gives life to the technology at issue in a way a purely paper petition simply cannot.
