Many PTAB watchers attach great significance to a decision to institute, but it's important to remember that a "DI" does not pre-ordain the ultimate decision. It's best to think of the DI as a notice of what issues it has decided remain open for trial. Issues typically will include claim construction and a list of prior art challenges selected for review. (Expect ever less claim construction in institution decisions as the Board streamlines operations to conserve judicial resources.) The Board always is careful to note that the claim construction is preliminary and based on the record as it exists at the time of institution, and that no unpatentability determinations have been made.
The point here is that a decision to institute trial should not be regarded as a preliminary version of the final decision. Examples abound of instituted reviews that concluded in a judgment of no unpatentability. Compare, e.g., Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc., IPR2013-00368, Paper 8 ( institution decision, Dec. 17, 2013) with id., Paper 94 ( final decision, Dec. 9, 2014). Thus these cases are still eminently winnable by Patent Owners, and there is lots of trial work left to be done on both sides. The DI serves to set the boundaries on the dispute. The Patent Owner should focus its Patent Owner Response on pointing out gaps in the Petitioner's case and on filling out the record with rebuttal evidence. The Petitioner, meanwhile, should focus on showing the stand-alone completeness of the Petition while resisting the temptation to introduce a new case-in-chief with the Reply.
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