Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) became available on September 16, 2012 as a post-grant review procedure to challenge the patentability of issued claims based on prior art patents and publications. To help navigate the uncharted waters of this procedure, each edition of IP Buzz- Post Grant Practice will include an installment of our new IPR Spotlight Series, where we will feature a specific event on the IPR timeline, from filing the petition for IPR through oral hearing and final written decision. We will present an overview of the featured filing or procedure, along with practice tips and strategy informed by recent PTAB decisions, statistics, and practical experience. In this first IPR Spotlight installment, we focus on preparing and filing a petition for IPR.
Part 1: Filing a Petition for IPR
To institute an IPR trial, there must be a reasonable likelihood
of finding at least one of the challenged claims unpatentable over
prior art patents or publications.1 Beyond putting
together a case for unpatentability, a potential petitioner must
also think strategically about several issues:
Where to Challenge the Patent: The vast majority
of petitioners are already defending a parallel infringement action
in district court when they choose to file a petition for IPR.
However, if the patent owner has not yet filed a district court
action for patent infringement, an alleged infringer must decide
whether to attack the validity of the patent in a declaratory
judgment action before a district court, or in an IPR trial before
the PTAB. Notably, once a declaratory judgment action is filed, IPR
is precluded. In general, statistics show the
PTAB to be the more pro-challenger forum, with almost every IPR
trial resulting in the cancellation of at least some of the
challenged claims. But there are many instances where
attacking the validity of the patent in district court may be
preferable, such as where there are multiple patents to
challenge, or where the strongest invalidity arguments are not
based on patent or printed publication prior art.
When to Challenge the Patent: At the earliest,
for patents filed on or after March 16, 2013 (patents examined
under the new AIA first-to-file rules), a petition for IPR can be
filed nine months after the patent issues or reissues, or after
post-grant review, if one has been instituted.2 For
patents filed before March 16, 2013 (under the old first-to-invent
rules), no such limitation exists. For all patents, at the latest,
if the petitioner is a defendant in district court litigation, a
petition for IPR cannot be filed more than one year after service
of the complaint.3 Within these outer boundaries, a
petitioner can decide strategically when to file a petition for
IPR.
How to Challenge the Patent: The petitioner must
identify "with particularity" each challenged patent
claim, the grounds for the challenge, and all evidence supporting
the grounds for challenge.4 At a recent roundtable, the
Patent and Trademark Office (PTO) recommended that petitioners
focus on just a few grounds for challenges, rather than attempting
a kitchen-sink approach. As part of a specific explanation of the
grounds for unpatentability, the petitioner should explain why each
cited reference qualifies as prior art. While claim charts may be a
useful tool for comparing the challenged claims to the prior art,
claim charts are ineffective on their own. Charts require
explanation and should contain pinpoint references to the
supporting evidence. For obviousness grounds, the petitioner must
explain the motivation to combine references and support the
explanations with evidence.
How to Avoid Redundancy Rejections: If the
petitioner includes multiple challenges to the same claim, the PTAB
may reject the challenges as duplicative or cumulative. In order to
"secure the just, speedy, and inexpensive resolution of every
proceeding,"5 the PTAB generally will not
consider multiple grounds for rejection of the same claim. If the
petitioner does choose to include multiple challenges to the same
claim, the petitioner should "provide a meaningful distinction
between the different, redundant rejections."6
Similarly, a possibility that the patent owner might amend the
claim to get around a reference, or swear behind one reference, is
also insufficient to meaningfully distinguish the
challenges.7 In addition, a petitioner cannot avoid
redundancy issues merely by filing multiple petitions in order to
present multiple challenges to the same claims. Under 35 U.S.C.
§ 325(d), the PTAB may "reject the petition or request
because the same or substantially the same prior art or arguments
previously were presented" in another post-grant
proceeding.8 Therefore, a petitioner should present only
the best grounds for rejection, not all possible grounds, and
provide an explanation for any possible redundancies.
How to Construe the Claims of the Patent: To
determine whether to institute an IPR review, the PTAB will
construe the claim terms that the petitioner relies upon to assert
the unpatentability of the challenged claims. The PTAB will give a
claim "its broadest reasonable construction."9
In order to propose a particular construction for a claim term, the
petitioner should provide support for the argument that the claim
limitation should deviate from the ordinary and customary meaning
of the claim terms.10 The petitioner should also address
any inconsistent claim construction or findings from prior
proceedings. When proposing a particular construction, a petitioner
should always consider the impact on any co-pending
litigation.
Very Important Minutiae – Formatting and
Fees: The petition must comply with a host of technical
requirements, such as the use of specific fonts and page limits,
along with payment of the required fee. Although it may be easy to
gloss over these technicalities, a petitioner should review the
petition carefully for compliance. A petition will not be accorded
a filing date until it satisfies all of the
requirements.11 If a petitioner is running up against
the one-year deadline to file after service of the complaint,
failure to include the required fee, or comply with formatting
requirements, could be fatal to the petition.
Footnotes
1 35 U.S.C. § 314(a).
2 35 U.S.C. § 311(c).
3 35 U.S.C. § 317(b).
4 35 U.S.C. § 312(a).
5 37 C.F.R. § 42.1.
6 Illumina, Inc. v. The Trustees of
Columbia University in the City of New York,
IPR2012-00006, Paper 43 (May 10, 2013).
7 Liberty Mutual Ins. v. Progressive
Casualty Ins., CBM2012-00003, Paper 7 (Oct. 25,
2012).
8 See also Oracle v. Clouding
IP, IPR2013-00088, Paper 13 (June 13, 2013)
(denying petitioner's request for rehearing after PTAB denied
institution of review on the ground of obviousness because
petitioner failed to articulate a meaningful distinction between
two prior art references cited to challenge the same patent
claim).
9 37 C.F.R. § 42.100(b); see
also Office Patent Trial Practice Guide, 77 Fed.
Reg. 48756, 48766 (Aug. 14, 2012) (Claim
Construction).
10 See Gracenote, Inc. v. Iceberg
Industries LLC, IPR2013-00552, Paper 6 (March 7,
2014).
11 37 C.F.R. § 42.106.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.