Short-But-Worthwhile Tip for Patentees in Inter Partes Review

Scott Daniels | January 22, 2013

Should a patentee file an optional Preliminary Response, trying to persuade the APJs to deny a Petition for inter partes review?

In reexamination practice, patentees almost never file such a paper.  They recognize the possibility that the Patent Office might not accept all (or even any) of the proposed grounds for rejection, and worry that a patent owner’s response to the reexamination request might create unnecessary prosecution history against the patent.  Perhaps it is the low threshold for granting reexamination – establishing a substantial new question of patentability – that deters patentees from filing a response.

For inter partes review petitions, the practice has been the opposite.  Most patentees have filed a detailed Preliminary Response, contesting each of the proposed grounds for rejection, often challenging the Petitioner’s right to pursue IPR.

And for good reason.  Perhaps because of the threshold for granting IPR – establishing a likelihood of invalidating at least one claim – the APJs have very thoroughly analyzed each of the issues presented in IPR Petitions, most notably the issue of claim construction.  To be sure, the APJs’ grant of IPR is merely the beginning of the proceeding, but one wonders whether the APJs’ initial impressions, once articulated in the grant, will be readily changed.  The patent owner who does not file a Preliminary Response might find that it has failed to participate in the most critical aspect of the case.

Speaking of granting IPR Petitions, we reported last week on what we thought was the first such grant, Garmin Int’l v. Cuozzo Speed Technologies, IPR2012-00001.  Our friend Brad Pedersen at the Patterson Thuente firm has kindly advised us that the first grant was actually in Microsoft v. Proxyconn, IPR2012-00026.  There, the patentee waived its option of filing a Preliminary Response.

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