What May a Patentee Argue in its Preliminary Response?

Scott Daniels | September 6, 2013

A patent owner’s first opportunity to challenge a request for inter partes review is by filing a “preliminary response.”  The relevant portion of the AIA states:

 [i]f an inter partes review petition is filed under section 311, the patent owner shall have the right to file a preliminary response to the petition, within a time period set by the Director that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter.

 (35 U.S.C. § 313: emphasis added).  Are there any limits on what the patent owner may include?  Is there anything that the patent owner must include?

Those questions were raised Tuesday in Athena Automation v. Husky Injection, IPR2013-00290.  Petitioner asked for authorization to strike patentee’s preliminary response, arguing that it did not comply with 35 U.S.C. § 313 because it was directed solely to the doctrine of assignor estoppel.  According to the petitioner, the patent owner’s preliminary response may include only arguments that the petition fails to meet one or more of the requirements recited in the inter partes review provisions in the AIA.  Arguments unrelated to those provisions – such as assignor estoppel –are not permitted, the patentee contended.

The APJs denied the petitioner’s request for authorization to strike the patentee’s preliminary response.  In doing so, they suggested that the patent has wide latitude in deciding on the content of its preliminary response.

The APJs began by noting that 37 C.F.R. § 42.107 allows the patent owner to include “the reasons why no inter partes review should be instituted under 35 U.S.C. 314.”  The Rule affords

the Patent Owner a chance to file a response prior to the institution of inter partes review. The language is not restrictive. It does not, as Petitioner suggests, require that the Patent Owner include any particular type of argument in its preliminary response, nor does it specifically limit the contents of the preliminary response.

This “wide latitude” in raising issues is obviously good news for patentees hoping to stop an inter partes petition at its inception – the bad news is that, so far, the APJs have not been very receptive to such arguments on the merits.

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