United States: IPR Spotlight Series: Evaluating Whether To File A Preliminary Patent Owner Response

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 our second IPR Spotlight installment, we focus on whether to file a patent owner preliminary response.

Part 2: Evaluating Whether to File a Preliminary Patent Owner Response

Once a petition for IPR has been filed, the patent owner has three options: (1) file a preliminary response to the petition within three months; (2) file no response and wait to see whether the PTAB will grant the petition and institute a trial; or (3) affirmatively waive filing the preliminary response. In the last year, 62% of patent owners filed preliminary responses, 17% did not file any response, and 21% affirmatively waived filing, showing a marked rise in preliminary responses since 2013. In spite of the 16% increase in patent owner preliminary responses, the percentage of PTAB trials instituted did not decrease commensurably, going down just 3%. These numbers suggest that filing a preliminary response does not necessarily improve your odds of success. Thus, determining whether to file a preliminary response should be a strategic decision, taking into consideration a number of competing factors discussed below.

Why a Patent Owner May Choose to File a Preliminary Response

There are a number of reasons a patent owner may consider filing a preliminary response:

  • To prevent institution: The primary goal of a preliminary response is preventing institution, so it probably goes without saying that this is a reason to file one. Indeed, considering the high rate of claim cancellation once IPR is instituted, the preliminary response may be the patent owner's best shot at protecting the patent. Further, the PTAB's decision to institute the IPR is not appealable until the final decision is reached, which makes the preliminary response a patent owner's first and only chance to prevent institution of the IPR.
  • To get the last word: The petitioner does not get to file a rebuttal to the preliminary response as a matter of right, meaning that the patent owner filing a preliminary response will get the last word before the PTAB decides whether to institute the IPR.
  • To pick the low-hanging fruit: Ideally, a patent owner can use a preliminary response to knock out statutorily-barred petitions. For instance, if the petitioner files a declaratory judgment action challenging the validity of the patent at issue before seeking review, the PTAB will not initiate IPR. Similarly, the PTAB may not institute IPR if the petition is filed more than one year after the petitioner was served with a complaint alleging infringement of the patent. The petitioner may also be estopped from presenting certain invalidity arguments because it already raised these arguments in a previous proceeding.
  • To get out early: Once a patent owner decides to file a preliminary response, the patent owner has up to 60 pages to present evidence that demonstrates that the PTAB should not institute IPR. There is no limit to the type of arguments that may be raised here, except that the patent owner cannot use new testimonial evidence, such as an expert declaration. However, the patent owner may point to evidence from other proceedings. Preliminary responses may argue that the petitioner's claim constructions were unreasonable, that cited references are not prior art, or that allegedly anticipatory prior art lacks material claim limitations. Despite the fact that this response is characterized as "preliminary," a patent owner may benefit from delving into its substantive arguments early. For instance, in Apple v. RPI and Dynamic Advances, the patent owner filed a preliminary response that included opposing the petitioner's construction of the claim limitation "case information," and asserting that each of the primary references failed to meet that limitation.1 The PTAB denied institution, adopting the patent owner's claim construction, and finding the cited references unlikely to render the challenged claims unpatentable.

Why a Patent Owner May Choose Not to File a Preliminary Response

Filing a preliminary response is optional, and there are a number of reasons a patent owner may choose not to avail itself of the option:

  • To allow institution and trigger estoppel: In order to get the benefit of estoppel, trial must be instituted and reach final decision. If the patent owner files a preliminary response and prevails, the PTAB will not institute IPR and the petitioner can still raise the same invalidity arguments again in related district court litigation or in another post-grant review proceeding. If the patent owner prevails after IPR has been instituted, then the petitioner will be estopped from raising invalidity arguments that it made or reasonably could have made during the IPR.
  • To buy time: The patent owner is at an inherent disadvantage with regard to time, as the petitioner may have spent many months putting together a carefully crafted petition. In contrast, the patent owner has only three months to assemble and file a 60-page preliminary response. However, if the patent owner chooses not to file a preliminary response, it has up to nine months total to file the patent owner response and any motion to amend claims as part of the IPR, assuming the PTAB institutes the IPR (up to six months for the PTAB's institution decision, and an additional three months after institution to file the response and motion to amend). Similarly, if settlement before institution seems possible, a patent owner may want to buy additional time and not file any response while the parties negotiate settlement.
  • To keep the element of surprise: The preliminary response is limited to "the reasons why no inter partes review should be instituted," and so a patent owner may choose to wait for the post-institution response to consolidate all of its responsive arguments rather than revealing only certain of its arguments. Similarly, the patent owner may need testimony, expert reports, or amendments to bolster its arguments, none of which are permitted in a preliminary response, and may wish to reserve them for when they can be presented most effectively. Further, the patent owner may not want to reveal its arguments to the petitioner yet, particularly if there has not yet been a claim construction ruling in the related district court litigation. Finally, a patent owner will not want the PTAB judges to be predisposed against its positions if trial is instituted.
  • To conserve resources: Presumably, the PTAB will filter out weak or redundant challenges on its own, even without a preliminary response.

Why a Patent Owner May Choose to Affirmatively Waive Filing

If timing is important and the patent owner wants to speed along the trial, affirmatively waiving the preliminary response will likely do that. In practice, the PTAB on average issues a decision on institution approximately 30 days earlier if the patent owner affirmatively waives filing the preliminary response than if a response is filed, and 50 days earlier than if the patent owner files no response at all.

Footnote

1. IPR2014-00077, Paper 11 (Jan. 30, 2014).

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions