"Inter partes review (IPR) proceeding provides an opportunity to challenge the patentability of claims in an issued patent for anticipation or obviousness under 35 U.S.C. §§ 102 and 103, respectively, based on prior art patents or printed publications. An IPR proceeding is conducted before the Patent Trial and Appeal Board and is divided into two stages: (i) a preliminary stage; and (ii) a trial stage. The preliminary stage begins with the filing of a petition to institute a trial. To proceed to the trial stage, a petition must demonstrate that there is a reasonable likelihood that the petitioner would prevail as to at least one of the challenged claims. A patent owner has a waivable right to file a preliminary response to the petition setting forth reasons why trial should not be instituted. The preliminary stage ends with a decision from the Board on whether to institute a trial.
A preliminary response provides a patent owner with an opportunity to be heard before the Board decides whether to institute trial. If the petition does not meet the standard set for instituting a trial, the petition will be denied, regardless of a preliminary response. That said, a preliminary response may help the Board when deciding whether to institute a trial. To provide the most benefit, a preliminary response should identify clear procedural and substantive reasons why the petition should be denied. To follow is a discussion of potential arguments that a patent owner might raise in a preliminary response, if appropriate, to help the Board’s consideration.
Petitioner Is Statutorily Barred from Pursuing an IPR
A preliminary response may challenge the standing of a petitioner under 35 U.S.C. 315.
Under 35 U.S.C. 315(a)(1), a patent owner may provide evidence that the petitioner filed a civil action challenging the validity of a claim of the patent, e.g., in a declaratory judgment action in district court, prior to filing the petition. Such action by the petitioner bars the institution of an IPR under 35 U.S.C. § 315(a)(1). Board decisions providing guidance on the application of § 315(a)(1) include the following:
- Anova Food, LLC v. Sandau, IPR2013-00114, Paper No. 17 (PTAB) (a civil action for a declaratory judgment dismissed with prejudice filed by a predecessor-in-interest to the petitioner bars an IPR under § 315(a)(1)).
- Cyanotech Corporation v. The Board Of Trustees of the University of Illinois, IPR2013-00401, Paper No. 30 (PTAB) (a civil action involuntarily dismissed without prejudice does not bar an IPR under § 315(a)(1)).
- Clio v. The Procter and Gamble Co., IPR2013-00438, Paper No. 9 (PTAB) (a civil action voluntarily dismissed without prejudice does not bar an IPR under § 315(a)(1)).
- Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper No. 24 (PTAB) (a civil action for a declaratory judgment of non-infringement is not a civil action challenging the validity of a patent barring an IPR under § 315(a)(1)).
- Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper No. 18 (PTAB) (a dismissal without prejudice nullifies the effect of service for purposes of § 315(b)).
- St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., IPR2013-00258, Paper No. 29 (PTAB) (a counterclaim is a “complaint alleging infringement of the patent” within the meaning of § 315(b)).
- Accord Healthcare v. Eli Lilly and Co., IPR2013-00356, Paper No. 13 (PTAB) (service of a second complaint does not nullify the effect of a first served complaint for purposes of § 315(b)).
- BioDelivery Sciences Int’l, Inc. v. MonoSol RX, LLC, IPR2013-00315, Paper No. 31 (PTAB) (challenged claims amended by a reexamination certificate issued after service of the complaint does not affect the “date on which the petitioner . . . is served with a complaint alleging infringement of the patent” under § 315(b)).
The Board may not authorize a trial where the information presented in the petition fails to meet the requisite standard for instituting a trial—that is, fails to establish a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claim. 35 U.S.C. § 314(a). Thus, it is helpful to the Board if a preliminary response explains carefully the weakest parts of petitioner’s unpatentability positions. For example, the preliminary response may include a detailed discussion or technical analysis relating to:
- How any asserted references are not, in fact, prior art;
- How asserted references lack at least one material limitation in one or more challenged claims; or
- How an asserted reference teaches away from a combination of elements, as advocated by petitioner. See, e.g., Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00132, Paper No. 9 (PTAB).
In an IPR proceeding, the Board construes claim terms according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Using this standard, a preliminary response may help the Board by carefully explaining claim construction positions. The patent owner may wish to point to the specification, dictionary definitions, as well as logic in relation to the claims as a whole, to support a conclusion that petitioner’s claim construction is, for example, unreasonably broad. In interpreting claims, however, one must take care to note the fine line between interpreting claims in light of the specification and improperly reading limitations into the claims from the specification. Absent claim language carrying a clear narrow meaning, the Board will not limit a claim based on the specification unless it expressly disclaims the broader definition. See, e.g., Ariosa Diagnostics, Inc. v. Verinata Health, Inc., IPR2013-00277, Paper No. 10 (PTAB).
Petition Contains Prior Art or Arguments Were Previously Presented to the Office.
Under 35 U.S.C. § 325(d), a preliminary response may wish to address whether the same or substantially the same prior art and arguments were previously presented to the Office. Board decisions providing guidance on the application of § 325(d) include the following:
- SAS Institute, Inc. v. Complementsoft, LLC, IPR2013-00581, Paper No. 15 (PTAB) (denying a petition as to grounds based upon substantially the same prior art and arguments as set forth in a prior IPR petition).
- Oracle Corporation v. Clouding IP, LLC, IPR2013-00100, Paper No. 8 (PTAB) (granting a petition where new arguments and supporting evidence were presented that shed a different light on references previously considered during prosecution).
Under 35 U.S.C. § 312(a)(2) and 37 CFR § 42.8, an IPR petition must identify all real parties-in-interest or privies. A preliminary response may help the Board by pointing out how the petition fails to identify all real parties-in-interest. The Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party-in-interest. Whether a non-party is a “real party-in-interest” or “privy” is a “highly fact-dependent question” that takes into account how courts have used the phrases generally to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.” Trial Practice Guide, 77 Fed. Reg. at 48759. One consideration is whether a non-party exercises, or could have exercised, control over a petitioner’s participation in an IPR proceeding. Id. at 48759-60, 48695. Other considerations may include whether a non-party, in conjunction with control, funds and directs the proceeding. Id. at 48760. Board decisions providing guidance on real party-in-interest or privy include the following:
- Butamax™ Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00214, Paper No. 11 (PTAB)(“‘common interest among litigation defendants seeking to invalidate or defend against enforcement of a patent . . . does not translate ipso facto into each defendant being a real party in interest where a request for reexamination is filed by only one of the defendants in the litigation’”) (citations omitted).
- Chimei Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00068, Paper No. 7 (PTAB) (patent owner failed to provide persuasive evidence that each co-defendant in a related litigation exercised control and provided funding of the IPR petition).
The preliminary response may cite evidence supporting the patent owner’s contentions. Such evidence may include previously existing declarations, trial testimony, deposition testimony, and expert reports. A preliminary response may not, however, present new testimonial evidence (i.e., testimonial evidence prepared specifically for the purpose of the IPR proceeding) without authorization from the Board. Additionally, flooding the Board with evidence in a preliminary response is not helpful. Rather, a preliminary response should aid the Board in navigating evidence of record cleanly and quickly."
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