IP: Lessons learned from contested proceedings at the USPTO

13 tips when dealing with the Patent Trial and Appeal Board

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.

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.

Contributing Author

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Eldora Ellison

Eldora L. Ellison, Ph.D. (eellison@skgf.com) is a director at Washington, DC-based intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C. who holds significant...

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Contributing Author

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Deborah Sterling

Deborah Sterling, Ph.D. (dsterlin@skgf.com) is also a director at Sterne Kessler with significant experience in inter partes proceedings at the USPTO, including patent interferences...

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