For our featured development this month, we provide some practice notes regarding Inter Partes Review (“IPR”). When the U.S. enacted the America Invents Act, one of its provision established IPRs, a new procedure at the U.S. Patent and Trademark Office where a party can challenge the validity of a patent post-issuance. Unlike a traditional ex parte reexamination, the challenging party has the opportunity to participate in the review. Beginning on September 16, 2012, the Patent Trial and Appeal Board (“PTAB” or the “Board”) began accepting petitions for IPRs. As of April 30, 2013, over 200 petitions had been filed. As of that same date, decisions on whether or not to institute trials had been issued in nearly 60 IPRs. Only a few petitions were denied entirely. See, e.g., IPR2013-00023 and IPR2013-00054. In the vast majority of IPRs in which the PTAB has ruled on whether there should be a trial, the decision was to institute trial; however, often trial was instituted on fewer claims or fewer reasons for unpatentability than those set forth in the petition.

The PTAB has issued a number of rulings on various procedural issues that are instructive when considering whether to file a petition seeking IPR and when defending a patent against an IPR petition. There have been a number of rulings on various significant procedural issues; the examples set forth below give a glimpse into the way the Board handles certain recurring issues in IPR proceedings.

Page Limits: Petitions seeking an IPR trial are limited to 60 pages. 37 CFR §42.24(a)(1). The rules provide that a petitioner may file a motion to waive the page limits (with the proposed over length petition appended) with an explanation of how waiving the page limit is in the interests of justice. 37 CFR §42.24(a)(2). At first, it was not unusual for a petitioner to file a motion to waive the page limits, but because the PTAB has been applying that standard very strictly, such motions are less common. Instead of moving to waive the page limit requirement, petitioners appear to be more likely to file multiple petitions against the same patent either dividing up the grounds of invalidity, the claims of the patent or both. See, e.g., IPR2013-00052 and - 00053 and IPR2013-00064 and -00065.

Trial Schedules: If the PTAB institutes a trial, a standard scheduling order is entered. It consists of seven due dates, namely:

  • DUE DATE 1: Patent owner’s response to the petition and motion to amend the patent
  • DUE DATE 2: Petitioner’s reply to patent owner’s response to petition and opposition to the motion to amend
  • DUE DATE 3: Patent owner’s reply to petitioner’s opposition to motion to amend
  • DUE DATE 4: Petitioner’s motion for observation regarding cross-examination of reply witnesses, any motions to exclude evidence and any requests for oral argument
  • DUE DATE 5: Patent owner’s response to the motion for observation and all oppositions to motion to exclude
  • DUE DATE 6: All replies to oppositions to motions to exclude
  • DUE DATE 7: Oral argument (if requested).

See, e.g., IPR2012-00026 (Paper 18, December 21,2012). While these seven common due dates are used generally in IPRs, the amount of time between the due dates does vary based upon the specific circumstances at issue. Normally the parties can agree to different dates for Due Dates 1-3 by filing a stipulation, so long as the new dates are all no later than Due Date 4. The purpose of this standardized schedule is to allow the PTAB to meet the one-year deadline to decision imposed by 35 USC §316(a)(11) and 37 CFR §42.100(c).

Related PTO Proceedings: Another area in which there is a clear trend in the Board’s rulings has been in relation to stays of concurrent PTO proceedings. The PTAB has consistently stayed concurrent reexamination proceedings in favor of the IPR. See, e.g., IPR2013 -00071, -00093 and -00110. The PTAB, however, has declined to stay ex parte prosecution of patent applications related to the patents that are the subject of IPRs. See, e.g., IPR2013-00028 and -00060. Recently, the PTAB granted an unopposed request and stayed examination of a reissue application for the patent at issue in the IPR in order to avoid duplicate efforts within the PTO and avoid the potential for inconsistencies between the reissue proceeding and the IPR. IPR2013-00217 (Paper 8, May 10, 2013).

In addition, the PTAB has also shown a distinct trend of joining together IPR proceedings that relate to the same patents or to related patents. Sometimes there is a formal decision to link the proceedings to one another; in other cases, while the proceedings are not formally linked together, the APJs handling the related IPRs are the same and the schedules adopted are the same or similar enough to ensure some level of consistency and take advantage of the related nature of the IPRs. This allows for greater efficiency and is a useful practice given that a significant percentage of IPR petitions are directed to patents that are related in some fashion to at least one other IPR.

Finally, it is worth noting that IPR trials have been granted even where the prior art forming a basis for the petition was already considered in ex parte prosecution, see, e.g., IPR2013-00038, and even where the art had previously been cited in an unsuccessful request for reexamination. See, e.g., IPR2013-00031.

Resolution of Procedural Issues: Another hallmark of the Board’s practice in IPRs is that most of the procedural issues are initiated by and/or resolved by a conference call with the Board. Such conference calls normally include three APJs that are assigned to the case rather than just the single APJ that was designated to manage the IPR. This use of multiple judges seems to ensure a more uniform application of the rules across IPRs.

Claim Amendments: While claims can be amended or new claims proposed during an IPR (after conferring with the Board), the PTAB has been strictly applying the rules that any motion to amend must contain a detailed explanation of how the proposed substitute claims obviate grounds of unpatentability authorized for the trial along with a showing of the written description support for the claim amendment. See, e.g., IPR2013-00029 (Paper 15, April 16, 2013). In addition, generally only onefor- one substitution is allowed and any amendment beyond that must be accompanied by a showing of why the additional claims are necessary. 37 CFR §42.121(a)(3).