The Petitioner faces a formidable task in preparing a concise and persuasive petition seeking inter partes review of a patent.  The petition is the only opportunity the Petitioner has to persuade the Patent Trial and Appeal Board (Board) to institute a trial to review the patentability of the challenged claims.  Unlike patent litigation, the Petitioner has little opportunity to supplement the record in support of the petition and is not entitled to respond to the Patent Owner’s preliminary response to the petition before the Board renders a decision on the petition.  In addition, the Board has strictly enforced the rules regarding page limits even in cases where numerous claims are challenged and numerous prior art references are necessary.  In this issue of At The Board, we address strategies to improve the likelihood of success that your petition will be granted.

The Petition

The petition should focus on presenting the case for unpatentability in succinct, well-organized, and easy-to-follow arguments that are supported by readily identifiable evidence in the record.  To present its case, a petitioner needs to provide and address the broadest reasonable interpretation of the challenged claims and apply the prior art to the claims.  Expert testimony is often desirable to assist the Board in understanding the prior art and provide a basis to combine prior art references. In addition, a Petitioner needs to anticipate any arguments the Patent Owner might raise in its preliminary response.

In an Inter Partes Review (IPR), the standard for claim construction is the broadest reasonable interpretation.  This differs from the standard used in patent litigation where the court can rely on the specification and prosecution history to narrow the scope of a claim beyond its broadest possible constructions.  This means that in an IPR, it is generally easier to challenge the patentability of a claim, because the claim is interpreted more broadly.  Under a broader interpretation, more prior art references are available to the Petitioner.

The petition should also develop a complete evidentiary record that the Petitioner can later rely on during the IPR proceeding.  The evidence should be readily identifiable in the record.  For example, the petition typically includes a brief explanation of the challenged patent and the prosecution history of the challenged claims.  Likewise, it is often advisable to include a description of each of prior art reference to highlight its most relevant features and how the reference is applicable to invalidate the challenged patent.  In short, the petition should describe the challenged patent and asserted prior art in a way that focuses the Board on the issues central to the Petitioner’s invalidity positions. 

The petition should also include a detailed element-by-element analysis comparing the prior art to the challenged claims, typically in the form of claim charts for each ground of unpatentability asserted in the petition. 

If your case involves a patent with numerous claims that would require a large number of prior art references, a significant challenge to presenting your case is the page limit imposed by the rules.  The Board has shown little flexibility in granting requests for additional pages.  One way to overcome this challenge is to file more than one petition to challenge the claims of the patent in distinct groups.  The Board has also frequently exercised its discretion to deny review of the challenged claims on the basis that the challenge is redundant to other grounds on which the Board has agreed to grant the petition.  If that is a concern to the Petitioner, the petition should explain why the grounds are not redundant.

As discussed above, the Petitioner does not get a chance to respond to a Patent Owner’s preliminary response after the petition is filed.  Accordingly, it is important to include a complete set of evidentiary support in the petition when it is filed.  It is also important to anticipate and address, any issues that the Patent Owner might raise, such as a challenge to the standing of the Petitioner to file the petition.

In a few cases, the Board has had to address challenges to a Petitioner’s standing to file a Petition raised by Patent Owners under the doctrine of assignor estoppel; an equitable doctrine that precludes a party who has assigned its ownership interests in a patent from later challenging the patent’s validity in litigation.  As the Board has explained, the only party who cannot file an IPR petition is the Patent Owner.  As a result, even a named inventor on the challenged patent who has assigned all of his or her rights to the patent can file a petition because he or she is not a Patent Owner.  This gives the IPR an edge over litigation, where a named inventor who has assigned his/her rights to the Patent Owner may be subject to the doctrine of assignor estoppel, which would preclude that person and any parties in privity from challenging the validity of the patent in court. 

In short, the Petition should present well-reasoned unpatentability arguments in a clear and concise manner to be persuasive.  It should be sufficiently detailed and precise so the Board can easily understand the technology, challenged claims, and prior art without having to shuttle back and forth between the Petition and the record.

Trends at the Board After The First Year

Current trends show petitioners have been largely successful in obtaining a trial on at least some of the challenged claims.  The Board has issued a final written decision in one IPR trial resulting in the cancellation of the claims upon which the trial was instituted.