Strategic Considerations before Filing an IPR
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2 Strategic Considerations before Filing an IPR By John M. Bird and Margaret M. Welsh John M. Bird M. Welsh Requirements to Consider in Initial Planning Is the Patent Eligible for IPR? M
3 51<;??5.8E-/4;5/1;22;>A %& v. Network-1 Security Solutions, 95:59-8 Should You File an IPR? 5:3-:%& 2
4 (4A? Some Formality Requirements
5 ;>813-8-:-8E?5? Preliminary Strategies 4
6 / @5;:1> Claim Construction Broadest Reasonable Interpretation 5
7 5:Versata Development Group, Inc. v. SAP America, Inc. 0->0 :-:%&;2-:expired Systems, Inc. v. AIP Acquisition, Inc. v. Intellectual Ventures I LLC@41%(/;991:@10@4-@@41?<1/5M/-@5;:050:;@K?4109A/48534@;:@4191-:5:3;2I8534@?4A@@1>9-@>5D?E?@19JL-:0@41>12;>1 8;;710@;@4101M:5@5;:?;2K?4A@@1>L-:0K9-@>5DL %(M:-801/5?5;:?A?5:3@41&?@-:0->04-B1<>;B5010/;:?@>A/@5;:?@4-@->1.>;-0.A@K>1-?;: -.815:8534@;2@41?<1/5M/-@5;:L?A/4@4-@@41E->1:;@;B1>8E.>;-0%;@1:@5-8<1@5@5;:1>??4;A80 /->12A88E/;:?501>@41?<1/5M/-@5;:-:01B1:@41M8145?@;>EC41:01/505:3C4-@/8-59/;:?@>A/@5;:@; <>;<;?1>13->081??;2C45/4?@-:0->05?A?10:Berk-Tek, LLC v. Belden Inc.@41%(/;:?@>A10K- <8A>-85@E;2@>-:?95??5;:9105-LC45/4->1<-??10C5@4-/;>1@4>;A34-M>?@051.A:/410C5@4@41 /;>1A?5:3-?1/;:0051-:0@C5?@10C5@4@41/;>1@;>1=A5>1@4-@all ;2@41@>-:?95??5;:9105-/8;?10 C5@45:@41/-.81->1>1=A5>10@;.1<-??10.A:/410-:0@C5?@10 (41<1@5@5;:1>->3A10@4-@@41.>;-01?@>1-?;:-.815:@1><>1@-@5;:C;A80>1=A5>1@4-@;:8E@C;@>-:?95??5;:9105-C5@45:-3>;A<.1 <-??10.A:/410-:0@C5?@10-:0@4-@@;/;:?@>A1@41/8-59;@41>C5?1C;A80.1@;> @-@5;:? 6
8 :Scotts Co. v. Encap Claim Construction Strategies The patentõs specification discloses only one embodiment, melon, and mozzarella. The accused product is tomato and mozzarella. The prior art is tomato and dairy cream sauce
9 Means-Plus-Function Issues Corp. v. MobileMedia Ideas, Grounds Presented
10 International, Inc. v. Cuozzo Speed Technologies Expert Declarations Conclusion Endnotes See )'G- Id.G- Id. G- See %-<1>#; )'G/ Id. G. 9
11 See @>;8:/B):5B1>?-881/?:/#;%&%(A3%-<1>#; See )'G./&G. See Id. SeePatent Review Processing System (PRPS) Frequently Asked Questions (FAQ))'%((& "& 5<.;->0?.<-5 )'G1 Id. G- Id. G1 See PRPS FAQsupra )'G- See PRPS FAQsupra Id &G. See PRPS FAQsupra See %-<1>#; Id. (1/4?!!#;%&%(-:%-<1>#; See )'G1&G. )'G. 10&13A3 See, &G.19<4-?5?
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