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Tactical Considerations for Patent Owner Responses in IPRs
The America Invents Act established a specialty tribunal known as the Patent Trial and Appeal Board (PTAB) to review the patentability of claims via an inter partes review (IPR) process. IPRs have given patent infringement defendants and would-be defendants a means to challenge the viability of patent claims after the patent grant. U.S. Patent Office statistics (as of May 2017) show that the Board has found at least one claim of a challenged patent to be unpatentable in over 80% of IPRs which become instituted for trial and which reach a Final Written Decision. Given these odds, and the fact that institution of an IPR is not appealable, a patent owner's best shot at preserving its patent rights intact is to defeat institution of the IPR trial in the first instance.
Preliminary Response
The IPR process begins when a party attempts to initiate an IPR trial with a petition that identifies prior art documents and explains in detail how one or more claims is unpatentable. The petition must comply with several formality requirements. Among these formalities is identification of the real party in interest (RPI) of the party filing the petition. Failure to properly identify the RPI can lead to dismissal of the petition, an omission that potentially bars that petitioner from challenging the patent via the IPR process. The IPR procedure allows for an optional patent owner preliminary response to be filed within three months of a petition being granted a filing date, but before the PTAB decides whether or not to institute the trial. See, 37 C.F.R. 42.107.
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