What goes into a Patent Owner’s “Preliminary Response?”

Scott Daniels | April 21, 2014

When a petition for inter partes review is filed, the owner of the challenged patent may file a preliminary response explaining why review should not be instituted.  If review is instituted, the patent owner may (1) file a response explaining why the claims under review are patentable over the cited art and (2) request permission to amend its claims, if needed.

Clearly, the role of the patent owner’s response is to dig into the merits of whether the claims are valid over the prior art.  What, then, is the role of the patent owner’s preliminary response?  In several venues, the APJs – who have diligently crisscrossed the country to explain the details of review proceedings to eager practitioners – have indicated that the preliminary response serves a limited role. The patent owner should raise narrow legal arguments in the preliminary response, such as estoppel, and save the heavy validity analysis for the response. 

That might not be good advice.  Recent institution decisions and final written decisions from the Board suggest that the preliminary response might be the patent owner’s best shot at defeating an inter partes review attack.  Whereas the Board’s final written decisions almost uniformly conclude with cancelation of most or all the challenged claims, its institution decisions include a fair number in favor of the patent owner.

The APJs’ decision last week in Apple v. RPI and Dynamic Advances (IPR2014-00077) is a case in point.  There, the patent owner filed a preliminary response, (1) opposing the petitioner’s construction of the claim limitation “case information,” and (2) asserting that each of the primary references failed to meet that limitation as properly construed.  It went all in with its substantive arguments.

And the APJs denied institution.  They first agreed with the patent owner’s claim construction and then found wanting each of the petitioner’s prior art references.  With almost exactly the same wording, the APJs went through each of those references, finding that the “[p]etitioner did not explain how the rules represent or incorporate prior uses of the natural language processing method” that meet the “case information” limitation.

Would the result have been the same if the patent owner had reserved its substantive arguments for its response and the review had been instituted? Perhaps.  Or, the petitioner might have persuasively explained how the prior art met the critical claim limitation, convincing the APJs to cancel the claims.

Should the patent owner always present its substantive arguments in its preliminary response?  As with a number of such strategic questions, the answer is a definite “perhaps.”


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