INTER PARTES REVIEW (IPR) – LEARNING FROM THE DENIED

PETITIONSBY:

KIRBY DRAKE

IPR Overview

• Involves request to cancel one or more claims of an issued patent on grounds of anticipation and/or obviousness based on patents or printed publications

• Similar to validity challenges in federal district court

• Institution of IPR not as a matter of right

Petition Requirements

• Must set forth grounds for standing (identify real parties in interest)

• Must identify particularities of challenge• Identify each claim being challenged• Specify how each claim is to be construed• Specify where each element of claim found in

prior art

• Must file within one year after petitioner served with patent infringement complaint

Optional Patent Owner Response

• Must file within 3 months of petition filing• Possible challenges

• Statutory or time bars• Estoppel based on petitioner or real party in

interest activities• References not prior art, prior art does not

teach or teaches away from combination of references

• Claim construction is unreasonable

Denial Observations

• Over 50 petitions denied as to all grounds• Variety of patent subject matter (mechanical,

telecom, enzymes, energy drinks, medical, semiconductors)

• Variety of patent owners (Adobe, Boston Univ., Cisco, Eli Lilly, Symantec, Wi-Lan)

• At least 3 grounds included in each denied petition

• Denials authored by various PTAB judges (no more than 6 for a single judge – mostly related patents)

• 90+% of patent owners filed optional response

Synopsis v. Mentor (IPR2012-00041)

Petitioner Cannot Hide Weaknesses in Petition

• Failed to construe key claim element• PTAB construed key claim element and found

not disclosed in prior art reference

• Failed to state ground or rationale to support obviousness finding• PTAB found petitioner did not clearly explain

reasoning behind unsupported assertions (lack of detail)

BSP v. Motio (IPR2013-00307)

Patent Owner Response Can Be Key

• Denial of several anticipation grounds• PTAB referred to patent owner’s response and

agreed that prior art references did not teach all claim elements

• Denial of several obviousness grounds• PTAB agreed with patent owner that rationale

for combining teachings was conclusory and expert declaration did not substantiate positions

Fontaine v. Raildecks (IPR2013-00361)

Claim Construction Positions Can Be Fatal

• Petitioner argued that claim terms should retain plain and ordinary meaning• Patent owner provided a claim construction for

term “stacking block”• PTAB partially agreed with patent owner, and

using claim construction, concluded prior art references did not disclose a “stacking block”

Dell v. Acceleron (IPR2013-00361)

Priority Analysis Can Lead to Denial

• Petitioner argued that patent-at-issue not entitled to priority benefit but prior art should get priority benefit• Patent owner responded and identified

disclosure in provisional supporting claims and PTAB agreed

• Priority analysis was fatal to substantive grounds in petition – both patent-at-issue and support for prior art references

Monsanto v. Pioneer Hi-Bred (IPR2013-00002)

Expert Declaration Must Meet Standards

• Petitioner relied on expert declaration to establish prior art taught and/or provided a reason to defoliate plants within claimed timeframe• PTAB found that declaration failed to provide

sufficient underlying data to support opinions• PTAB also did not credit expert’s conclusions

that prior art allegedly taught enhanced seed vigor

Procedural Grounds for Denial

• Petition not filed within one year after complaint served (BioDelivery Sciences Int’l v. Monosol RX, IPR2013-00315)

• Time bar because of successor-in-interest actions (Anova Food v. Sandau, IPR2013-00114)

PTAB Discretion to Deny IPR Petitions

• Intelligent Bio-Systems v. Illumina Cambridge Limited (IPR2013-00324)• More than one IPR petition on same patent filed• PTAB found grounds in later petition similar to

those raised in petition already granted• PTAB exercised discretion under 35 U.S.C.

314(a) and 35 U.S.C. 325(d) and denied later filed petition

Best Practice Considerations

• Petitioner• Avoid time bars and/or privity issues• Make expert declarations meaningful• Consider claim construction impact on

substantive grounds• Avoid being duplicative or too hasty in analysis

• Patent Owner• Consider and carefully respond to petition