Addressing the timing and availability of motions or presentation of substantive arguments in the context of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) dismissed the petitioner’s belated request for additional briefing, finding that it could hamper the Board’s ability to decide on the IPR within statutory requirements and that the proposed arguments should have been presented in the IPR petition. Hewlett-Packard Co. v. U.S. Philips Corporation, IPR2015-01505 (PTAB, Dec. 16, 2015) (Chagnon, APJ).

Hewlett-Packard (HP) filed three separate IPR petitions challenging patents owned by Philips. HP requested the IPRs based on three non-patent references, which it alleged render the claims of the patent invalid as obvious. In its Preliminary Response, the patent owner argued that HP failed to provide evidence the non-patent references were publicly available. Prior art that may be used as a ground of invalidation in an IPR is limited to patents or printed publications. For non-patent prior art, a “printed publication” requires public availability.

In order to address the patent owner’s public availability argument, HP sought a telephone conference to request authorization to file a reply to the Preliminary Response. The patent owner opposed, submitting substantive arguments to the PTAB by email. The rule regarding filing of motions or other substantive correspondence in IPR proceedings, 37 C.F.R. § 42.20(b), expressly prohibits the filing of a motion without prior authorization from the Board.

The Board denied HP’s request for additional briefing, noting that HP waited for six weeks after the patent owner’s response before contacting the Board. By statute, the Board is required to make a determination on whether to institute the IPR within three months from the filing of the patent owner’s Preliminary Response. The Board reasoned that allowing additional briefing at such a late date could hinder the Board’s ability to reach a decision within the allowed time.

The Board further reasoned that an IPR may not be instituted unless the information presented in the petition shows a reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim. Here, HP had the burden of establishing a reasonable likelihood of success in its petition, including making a threshold showing that the cited references are “printed publications” within the meaning of the rules. IPR petitions are limited to a strict 60-page limit. The Board further stated that allowing HP to file a reply “would be tantamount to providing additional pages for the Petition.”

Finally, the Board ordered the parties to limit email communications to the Board to requests for a conference call and avoid substantive discussions. Allowing substantive communications in email would circumvent the requirements in the IPR Rules that motions or other substantive correspondence may only be filed after authorization from the Board.

Practice Note: Parties wishing to file a paper prior to institution of an IPR that is not authorized by statute or PTAB rule should make the request promptly and without substantive argument by either party to the Board.