Patent Owner's Response to Petition for Inter Partes Review

Summary

This is a template for a patent owner's response to a petition for inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB or the Board), an adjudicative body within the United States Patent and Trademark Office (USPTO). This template includes practical guidance and drafting notes. IPRs are trial proceedings conducted by the PTAB to review the patentability of one or more claims in any patent, where a petition may be filed by a person who is not the patent owner. The patent owner may submit a response, and may submit a preliminary response prior to the response. In contrast to the patent owner's preliminary response, which is filed before the Board decides whether to institute an IPR proceeding, the patent owner's response is filed after the Board decides in favor of institution. Together with the IPR petition, the patent owner's response frames the issues for the instituted IPR proceeding. For a template of a patent owner's preliminary response to a petition for IPR, see Patent Owner's Preliminary Response to Petition for Inter Partes Review. For more information on filing an IPR petition, see Inter Partes Review – Drafting an IPR Petition, Inter Partes Review Petition Drafting Checklist, and Petition for Inter Partes Review. Assuming the PTAB decides to institute a trial on the IPR petition (i.e., the petition and any preliminary response show a reasonable likelihood that the petitioner will prevail on at least one of the challenged patent claims), the patent owner typically has three months to conduct discovery before filing a response to the petition. See 37 C.F.R. §§ 42.120. Discovery may include deposing the petitioner's declarants. See the USPTO's November 2019 Consolidated Trial Practice Guide, at 7, 22–23. For more on discovery in AIA trial proceedings, see "Discovery Considerations" and "Objections to Evidence and Responses" under PTAB Trial Procedures in AIA Proceedings — Post-institution Filings and Procedures. The response should: • Identify all claims believed to be patentable (and state the basis for that belief) • Include supporting affidavits or additional factual evidence • Explain the relevance of the above evidence The response may also contain a claim chart. See November 2019 Consolidated Trial Practice Guide, at 44. In addition, the patent owner's response may address issues discussed in the institution decision. See 37 C.F.R. § 42.23(b); PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg. 79120, 79122 (Dec. 9, 2020). While the patent owner's response is optional, the USPTO encourages patent owners to explain why the challenged claims are patentable based on the claim interpretation advanced by the patent owner. Also note that, once a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner's response. Technical Requirements: 1. Word Count (37 C.F.R. § 42.24(b)): The word count limit for the patent owner's response is 14,000 words, the same as for the IPR petition. The word count applies to and includes any statement of material facts to be admitted or denied in support of the petition or motion. The limit does not include: • A listing of facts which are admitted or denied • Grounds for standing (under 37 C.F.R. §§ 42.104) • Mandatory notices (under 37 C.F.R. § 42.8). Note that a patent owner's response typically does not include mandatory notices under § 42.8 because those notices are due to be filed within 21 days of service of the petition, well in advance of the due date for filing the patent owner's response. See 37 C.F.R. §§ 42.8, 42.120. • Table of contents • Table of authorities, • Certificate of service or word count, • Appendix of exhibits or • Claims listing. • Listing of facts which are admitted, denied, or cannot be admitted or denied 37 C.F.R. §§ 42.24(a), (b). 2. Formatting Requirements: a. Number every page to facilitate review and quick. b. Use 14-point, Times New Roman proportional font (with normal spacing), c. Double line spacing (except in claim charts, headings, tables of contents, tables of authorities, indices, signature blocks, and certificates of service), and d. Margins of least 2.5 centimeters (1 inch) on all sides. See 37 C.F.R. § 42.6 for all formatting requirements. 3. Filing: The response is to be filed electronically. If filed by other means, it must (A) be accompanied by a motion requesting acceptance of this submission and (B) identify a date of transmission where a party seeks a filing date other than the date of receipt at the Board. 37 C.F.R. § 42.6(b). 4. Service: The response must be served on counsel of record for the petitioner. Under 37 C.F.R. § 42.6(e)(1), by agreement of the parties, service may be made electronically. Service may also be performed by Priority Mail Express® or by means at least as fast and reliable as Priority Mail Express®. Personal service is not required. 5. Exhibits: File all supporting documents referenced in the patent owner's response as exhibits. See 37 C.F.R. § 42.63(a). A patent owner must number its exhibits in the range of 2001–2999. See 37 C.F.R. § 42.63(c). Each exhibit must be labeled with the patent owner's name, and each page must be numbered. 37 C.F.R. § 42.63(d). Each party must maintain its own exhibit list that includes the exhibit number and a brief description of each exhibit. See 37 C.F.R. § 42.63(e). 6. Expert Declaration: Always consider filing an expert declaration with the patent owner's response to support your proposed claim construction, provide testimony as to the level of ordinary skill in the art, and explain how a person of ordinary skill in the art would understand the prior art and would or would not be motivated to combine prior art references. There is no page limit for a supporting expert declaration, so you can include more detailed explanations than can be accommodated within the 14,000-word count for the patent owner's response. For more information regarding expert declarations and expert testimony in AIA trial proceedings, see November 2019 Consolidated Trial Practice Guide, at 34-36. 7. Motions to Amend: Within three months of the institution decision (unless another due date is provided in a Board order), the patent owner also may file a motion to amend any instituted claims. The initial motion to amend may be filed without PTAB authorization. Note, however, that the patent owner must confer with the PTAB before filing—the PTAB may, for instance, adjust the case schedule and/or authorize additional discovery in light of the motion. See 37 C.F.R. §§ 42.121(a), 42.221(a); November 2019 Consolidated Trial Practice Guide, at 66-67. Note also that the patent owner may continue to argue, in the patent owner's response and otherwise during the IPR trial proceeding, that an original claim is patentable while presenting a proposed substituted claim. For additional information regarding motions to amend by the patent owner, see "Patent Owner's Motion to Amend" under PTAB Trial Procedures in AIA Proceedings — Post-institution Filings and Procedures. See also November 2019 Consolidated Trial Practice Guide, at 66-72. For more on IPRs and other AIA proceedings, see Post-issuance Procedures for Challenging Patents: IPR, PGR, and CBM.