If you are a patent owner facing an inter partes review (“IPR”) or other post-grant review at the Patent Trial and Appeal Board (“PTAB”), your best chance of success is to convince the PTAB not to institute a trial.  But that does not mean that you should pack all of your substantive arguments about patentability into your preliminary response.  At the institution phase, less can be more.  Instead of making every possible argument, patent owners should focus on a few arguments that will affect all challenged claims.

Even if you can clearly show that some claims are patentable, there is little reason to point this out unless you can show that all claims are patentable. This is because the Supreme Court in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), ruled that the PTAB does not have the ability to partially institute an IPR.  If an IPR institutes against one challenged claim, it must institute against all challenged claims.  Unless you can show that an independent claim is patentable, arguments related to its dependent claims are mostly irrelevant to whether the PTAB will institute the IPR, and should be withheld.

Having withheld some of your patentability theories, should the PTAB decide to institute a trial, you will be in the enviable position of deposing the other side’s witnesses while they are ignorant of your theories. Your own witnesses, on the other hand, will sit for deposition with full knowledge of all Petitioner’s arguments.  Other tribunals are nearly unanimous in preventing such a lopsided advantage, and too often patent owners fail to exploit this quirk in PTAB proceedings.

Patent owners should also resist the temptation to support their preliminary response with a technical expert’s declaration to counter Petitioner’s expert.  When the PTAB first allowed patent owners to submit expert declarations with their preliminary responses, many practitioners thought this would lower institution rates.  But it is a trap. In deciding whether to institute a trial, the PTAB must view facts in a light most favorable to Petitioner.  37 C.F.R. § 42.108(c). A declaration challenging Petitioner’s expert will necessarily be resolved in Petitioner’s favor.  An expert declaration in a patent owner’s preliminary response can create disputed facts that require institution to be resolved, and therefore actually increase the likelihood of institution. 

Due to these realities, patent owners should not see the preliminary response as an opportunity to make out an affirmative case for patentability, but rather to identify failings in the petition favoring denial of institution. Common failings include:

1. Failing to address Fintiv factors.

2. Failing to prove the effective prior art date. In Globus Medical, Inc. v. Depuy Synthes Products, LLC, IPR2015-00099, the PTAB denied institution where Petitioner failed to establish its primary reference was prior art with respect to the challenged claims.

3. Failing to prove the prior art is printed publication. In In-Depth Geophysical, Inc. v. ConocoPhillips Company, IPR2019-00849, the PTAB denied institution based on an insufficient showing that a paper allegedly presented at a conference qualified as a printed publication.

4. Failing to meet the particularity requirement of 35 U.S.C. § 312(a)(3). In Adaptics Ltd. v. Perfect Co., IPR2018-01596, the PTAB denied institution where Petitioner included thousands of potential prior art combinations using the phrase “and/or” in its obviousness arguments.  The PTAB held that Petitioner failed to state precise grounds of unpatentability, and denied institution “in the interests of efficient administration of the Office and integrity of the patent system and as a matter of procedural fairness to Patent Owner.”

5. Failing to properly construe the claims.  In Facebook, Inc. v. Sound View Innovations, LLC, IPR2017-01006, the PTAB denied institution where Petitioner failed to recite the structure of an invention corresponding to means-plus-function claim limitation. Specifically, Petitioner did not identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function, as required by 37 C.F.R. § 42.104(b), to enable the PTAB to determine if the asserted prior art teaches such structure.

6. Failing to meet the time bar requirement of 35 U.S.C. § 315(b). In Vizio, Inc. v. ATI Techs. ULC, IPR2018-00560, the PTAB denied institution where the petition had been filed more than one year after a related district court complaint had been mailed, but within a year from its receipt.  Also, it is important to note that the Federal Circuit has held that a complaint can trigger the one-year time bar even if that complaint had been dismissed without prejudice. Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1328 (Fed. Cir. 2018).

7. Failing to identify the real party in interest.  In Clear-Vu Lighting LLC v. University of Strathclyde, Nos. IPR2019-00588, -00747.  The PTAB denied institution to a named petitioner who, according to the PTAB, was being used merely as a vehicle to challenge the validity of patents, a dispute that would otherwise be time-barred.  In doing so, the PTAB found that the real party in interest was time-barred and the IPR could not proceed.

8. Failing to distinguish the petition from previous petitions. In ZTE (USA) Inc. v. Fractus, S.A., IPR2018-0145 the PTAB denied institution where the Patent Office had previously considered the asserted prior art, despite Petitioner’s attempt to present that prior art in a different way.

9. Failing to provide sufficient evidence to meet the threshold for institution under 35 U.S.C. § 314(a). A patent owner can also point out a Petitioner’s substantive failures, such as the failure to provide evidence sufficient to support an assertion of obvious to modify, or to adequately explain why the prior art is properly combined, or to deal with the patent's prosecution history where very similar art was considered by the examiner and found lacking.

All of these issues focus on fatal shortcomings in the petition, and go directly to whether the PTAB should institute a trial in the first place. They all affect every challenged claim and can be presented in a concise, pointed, and persuasive preliminary response without divulging all patent owner’s substantive arguments concerning patentability.

Look for our next post, “Tip #3 for Avoiding IPR Institution: Use Disclaimers Strategically,” coming soon!