Lessons From PTAB Full or Partial Denials to Avoid Institution of an IPR or Avoid a Denial

Description

The PTAB denies almost a third of all inter partes review (IPR) petitions. Importantly, even in those granted, some were on less than all of the challenged claims or less than all asserted grounds. The grant rate for post-grant review (PGR) petitions is lower, 56%.

These denials and partial denials provide a source of beneficial information for patent owners looking to avoid institution of an IPR or PGR and petitioners looking to avoid a denial. For example, in an overwhelming number of petitions denied, a Patent Owner Preliminary Response (POPR) was filed.

Early concerns by patent owners about “showing your hand” seem to have been overcome by results indicating the PTAB’s desire to have cases front-loaded applies to both parties. PTAB proceedings are supposed to be, by statute, “just, speedy, and inexpensive.”

PTAB can most efficiently use its resources to decide to institute based on the most information possible. Further, patent owners who fail to file a POPR do not have much recourse. Motions to reconsider IPR decisions so far have been routinely and resoundingly rejected.

As a patent owner, filing a proper POPR is the way the patent owner can help PTAB conclude that the petitioner has not met its burden of showing “a reasonable likelihood” of prevailing concerning at least one challenged claim. The POPR is also an opportunity to attack the petitioner’s standing and proposed claim construction before a decision on institution. As noted by PTAB APJs recently, the POPR is the patent owner’s chance to show the PTAB the flaws or inadequacies of the petition, rather than getting bogged down in the substantive arguments.

Listen as our authoritative panel of patent practitioners—with pioneering expertise in PTAB practice and differing backgrounds covering chemical, life science, computer, and business methods technologies—analyzes the substance of PTAB denials and partial denials for take-home lessons applicable in practitioners’ daily practice.