Responses: Just Because You Can Doesn't Mean You Should
The new post grant patentability challenges of the
America Invents Act (AIA) have been warmly
embraced by the public as a cost effective patent dispute resolution tool.
Patent challengers have quickly leveraged these new proceedings of the USPTO's
Patent Trial & Appeal Board (PTAB) to circumvent the
high cost of patent litigation and to accelerate opportunities
for settlement. Patentees, on the other hand, have been largely
caught unaware of the significant threat presented by these new road
blocks to patent monetization.
While many of the new PTAB proceedings are only now
getting underway a significant number of preliminary proceedings have been
concluded. It is during these preliminary
proceedings, and shortly thereafter, that many patentees have been
committing significant strategic errors.
First, when Congress fashioned the statutes for the new
PTAB proceedings it was well aware of the criticisms
pertaining to the patent reexamination model. For example, patentees
pointed out that reexamination was commenced without receiving any input from
the patentee. As a result, the new PTAB proceedings were designed to include
the option for a patentee to file a "preliminary response" to a challenger
petition. In this way, the PTAB may receive input from both parties before
deciding to institute trial. While this new option sounds like a great
opportunity for patentees, it's not the "no-brainer" it seems.
While almost every petition for IPR/CBM filed to date
includes declaration evidence of the challenger, a preliminary response may not
include such evidence from the patentee. (42.107/207). Thus, attorney argument
of a patentee preliminary response is weighted against the declaration evidence
of the challenger's petition As can be appreciated the "reasonable
likelihood of success" in this system is significantly skewed in
favor of the challenger. Not surprisingly very few grounds of unpatenability
have been declined to date as a result of patentee preliminary responses.
Further, should the patentee scramble in the short,
statutory time frame to file a preliminary response and fail to persuade the
PTAB to deny the petition, once instituted, the third party may be permitted to
file supplemental information (42.123/223). In some cases such supplemental
information could allow a challenger to further refine their positions based
on the preliminary response of the patentee.
Another consideration is that a successful preliminary
response may just win the patentee follow-on petitions. On the other hand, if
the challenge is overcome after a Trial order, estoppel would serve as a safeguard
from such refined attacks.
Failed preliminary responses provide the challenger a 4-6
month preview of the patentee's positions (patentee response not due until
months after Trial Order) for very little strategic value. Indeed, when coupled
with a request for rehearing 14 days after a Trial Order, the patentee has
essentially provided a nice package to the challenger for purposes of
deposition preparation (requests for rehearing in the PTAB, as in most courts,
are almost never successful and patentee discovery essentially begins upon
The decision to file a preliminary response depends on
many factors, some considerations that impact the decision to file include:
1. Will the challenger be outside the 12
month window of 42.101 (IPR only) if the preliminary response is successful?
2. Does the petition include declaration evidence to support the
grounds of unpatentability?
3. Is there a motion to stay pending in a parallel litigation so
that a response is necessary for optics?
4. Are there issues of standing? (precluding a second filing)
5. Are there weak grounds for some claims that if declined by the
PTAB would prevent a stay in a parallel litigation? (if so, prelim. response is
best focused on that subset).
6. Is it clear that the claims need to be amended? (not possible
in prelim. response)
7. In view of the likelihood that the preliminary response will
not move the Board off of the challenger's grounds in most cases, does it make
sense to provide advance notice of your arguments for little in return?
8. Are there multiple defendants likely to seek joinder? Can the
dispute be settled with the challenger outside the 12 month window (IPR only)
but before trial institution?
9. Do you need more time than available to develop an adequate
10. Will filing an optional paper complicate a parallel proceeding in later
While some have argued that a preliminary response should
be made to argue against an adverse claim construction proposed in the
petition, the PTAB construction presented at the time of the Trial Order is
preliminary and best rebutted by patentee evidence on point.
Later this week I will touch upon another common patentee
mistake- filing a Request for Rehearing.
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