Various stakeholders had questioned whether parties would be willing to use the new proceedings available before the Patent Trial and Appeal Board to challenge patentability of issued patents. The answer seems to be “yes.” Since Sept. 16, 2012, more than 100 petitions for inter partes review (IPR) proceedings and covered business method review (CBM) proceedings have been filed, averaging approximately one filing per day. More than half of the petitions have been filed by petitioners who filed multiple petitions, and many patent owners involved in IPRs or CBMs face challenges to multiple patents. These filings present the board with a substantial and varied docket. While the U.S. Patent and Trademark Office (PTO) regulations address many scenarios that can arise in adjudicating IPRs and CBMs—as well as future post-grant review proceedings—there is no substitute for directly reviewing pleadings, decisions and orders in ongoing cases to understand in detail how the board handles the issues it faces. Below are some lessons that have emerged from the board’s decisions issued to date:
1. Don’t overreach. The board may deny a petition where the petitioner proposes an excessive number of grounds of unpatentability without explaining why so many grounds are needed. In one such instance, the Petitioner proposed 422 grounds of unpatentability, averaging 21 grounds per challenged claim.
2. Don’t be vague. In some instances, Petitioners sought IPR based on specifically identified proposed grounds as well as unspecified alternative combinations of references. Such unspecified grounds were denied.
3.Be concise. Efforts to increase the page limits for petitions have thus far been denied as not being “in the interests of justice.”
4. Follow the rules closely. Petitions have been deemed defective because of improperly labeled exhibits, improper designation of counsel, or improperly including arguments in claim charts. Generously, the board has often granted petitioners five days to correct such defects.
5. Don’t assume pro hac vice admission will be granted. The movant bears the burden to show that good cause exists for admission of the proposed counsel. A motion for admission has been denied in a case involving violations of a protective order in related litigation. And motions for admission have been dismissed without prejudice when a party did not show good cause for admission of five attorneys instead of for a smaller number.
6. Seek permission to file motions. The board has expunged papers when a party did not first obtain authorization to file the paper.
7. Beware of the impact on related proceedings. The board has stayed several re-examination proceedings pending the outcome of an IPR or CBM, transferring jurisdiction over the patent from the Central Reexamination Unit to the board.
8. Don’t expect to submit testimony with a Preliminary Patent Owner’s Response. Thus far, requests to submit such testimony (e.g., expert witness testimony) have been denied as not in the interests of justice. The board is more likely to permit testimony that addresses an issue of standing.
9. Beware of the possibility a shortened time period. In one instance, in which there was advanced related litigation, the board shortened the time period for filing a Preliminary Patent Owner’s Response from three months to two months.
10. Don’t assume that prior or ongoing validity challenges will preclude a trial before the board. For instance, the board has instituted CBM even after a district court found a patent was not invalid.
11. Expect a detailed claim construction. In the handful of decisions instituting trial thus far, the board has provided a detailed claim construction analysis. And the board has denied proposed unpatentability grounds based on a faulty claim construction proposed by the petitioner.
12.Explain yourself. If, for example, the parties enter into a protective order that differs from the default protective order, provide the board with a general explanation as to what those differences are. The board has requested such an explanation in at least one case.
13. Be silent at your own peril. Of the first three trials instituted by the board, two involved situations in which the patent owner waived its right to file a Preliminary Patent Owner’s Response. Although the board was not required to—and in fact did not—institute trial based on all grounds proposed by the petitioner, a patent owner that opts not to file such a response faces a substantial risk that the Office will quickly institute trial.
In this new era of expanded contested proceedings adjudicated by the board, many questions arise as to how the board will handle the various issues that may surface. While many practices (such as proper exhibit lists and seeking authorization prior to filing a motion) are “old hat” to experienced patent interference practitioners, other preferences and requirements of the board are being articulated for the first time as the situation arises in ongoing cases. A close study of the board’s decisions and orders is necessary to develop the best practices for handling such new proceedings.