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View ptab filed documents12/28/2023 ![]() 17 For institutions in IPR proceedings, the PTAB considers whether the petition (in view of the preliminary response) demonstrates a reasonable likelihood of unpatentability for at least one challenged claim. 16 In its institution decision, the PTAB must either institute review of all grounds presented in the petition or deny institution entirely. The PTAB has up to three months to issue a decision on whether to institute trial after the earlier of (1) the patent owner’s preliminary response filing, or (2) the preliminary response due date. 15 As a result, patent owners often reserve at least some substantive arguments concerning a disputed question of fact for presentation during the post-institution trial. ![]() 14 While the preliminary response may be supported by declarant testimony, such as testimony from an expert witness, at this early stage the PTAB views genuine factual disputes in the light most favorable to the petitioner. The patent owner has three months to file an optional patent owner preliminary response, which can address reasons why the Board should decline to institute review of the challenged patent. Once the petition is filed and accepted by the Office after a procedural review, a filing date is awarded. 12 Although the PTAB previously used a different claim construction standard than district courts, the PTAB now construes claims under the same “ Phillips” standard. 11 The petition must also set forth the petitioner’s positions on all necessary claim construction issues. 10 The PTAB requires a showing by a preponderance of the evidence, which is more favorable to petitioners than the clear and convincing evidence standard applied in district court. The petitioner bears the ultimate burden of proof for unpatentability in PTAB proceedings. 8 A notable restriction on the timing of IPR petitions is the “one-year bar,” which prohibits institution of an IPR petition filed more than one year after service of a district court complaint alleging infringement of the patent-at-issue. 7 Testimony supporting the petition must be submitted in the form of a written declaration, such as expert witness testimony regarding the knowledge of a skilled artisan. This petition must identify, with particularity, each claim challenged, the grounds on which each challenge to each claim is based, and the evidence supporting each ground. Pre-Institution FilingsĪ party initiates a post-grant proceeding at the PTAB by filing a petition for review. 5 CBM and PGR proceedings, in contrast, allow for a broader range of legal challenges, including grounds addressing subject matter eligibility, enablement, indefiniteness, and written description support. 4 Prior art asserted during an IPR is also limited to patents and printed publications. 3 IPR proceedings are limited to patent validity challenges under the legal theories of anticipation and obviousness. 1 The popularity of IPRs likely hinges, at least in part, on the proceeding’s relatively less restrictive provisions regarding which patents are eligible for review 2 and post-decision estoppel. To date, IPRs have been the most popular PTAB trial proceeding, comprising 93% of petitions filed at the PTAB through August 31, 2019. There are several types of adversarial post-grant proceedings at the PTAB, including inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR). This paper presents a brief summary of key case milestones and strategic considerations for PTAB trials. These trials are relatively fast, inexpensive, and narrow in scope compared to litigation in other forums, such as district courts or the International Trade Commission. Since the passage of the America Invents Act in 2011, a significant proportion of patent litigation in the United States has moved to trials held before the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office (USPTO).
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