Waiver of Patent Owner Preliminary Response (PTAB)

Summary

This template is for preparing an election to waive the patent owner's preliminary response under 37 C.F.R. § 42.107(b) or 37 C.F.R. § 42.207(b) in trial practice before the Patent Trial and Appeal Board (PTAB). This template includes practical guidance and drafting notes. 37 C.F.R. § 42.107 applies to inter partes reviews (IPRs) and 37 C.F.R. § 42.207 applies to post-grant reviews (PGRs). Under both 37 C.F.R. § 42.107(a) and 37 C.F.R. § 42.207(a), the patent owner may file a preliminary response to the petition requesting IPR or PGR, respectively. The patent owner's preliminary response is limited to setting forth the reasons why no IPR or PGR should be instituted and can include supporting evidence. Under 37 C.F.R. § 42.107(d) and 37 C.F.R. § 42.207(d), the patent owner's preliminary response may not include an amendment. Under 37 C.F.R. § 42.107(e) and 37 C.F.R. § 42.207(e), the patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a) to disclaim one or more claims in the patent. No IPR or PGR will be instituted based on disclaimed claims. Under 37 C.F.R. § 42.107(b) and 37 C.F.R. § 42.207(b), the patent owner's preliminary response must be filed no later than three months after the date of the notice indicating that the request to institute an IPR or PGR was granted a filing date. Both 37 C.F.R. § 42.107(b) and 37 C.F.R. § 42.207(b) state that the patent owner "may expedite the proceeding by filing an election to waive the patent owner preliminary response." Note that the <i>Patent Trial and Appeal Board Consolidated Trial Practice Guide</i> states that "[n]o adverse inference will be taken by such an election." Id. § II(C), pg. 52. Content of the Patent Owner's Waiver of Preliminary Response The patent owner's waiver should be limited to a simple statement waiving the right to file a preliminary response to the IPR or PGR petition. It is important to note that if the waiver includes any arguments, or even assertions without further support, regarding the institution of IPR or PGR, the Board may consider the waiver as a preliminary response and enter it as such. For example, in Advanced Micro Devices, Inc. v. Polaris Innovations Limited, IPR2019–01514, Paper 11, 2020 Pat. App. LEXIS 12866 (March 2, 2020), the patent owner filed a paper titled Patent Owner's Waiver of Preliminary Response which included the statement that the patent owner "elects to waive the patent owner preliminary response." However, the waiver also included the following statement: "The Board should not institute trial because Administrative Patent Judges (APJs) are unconstitutionally appointed." This statement was followed by three paragraphs of arguments and citations. See Advanced Micro Devices, Inc. v. Polaris Innovations Limited, IPR2019–01514, 2019 Pat. App. Filings LEXIS 22695, at *1 (Dec. 5, 2019). In view of the arguments contained in the waiver, the Board decided that it should be treated as a preliminary response under 37 C.F.R. § 42.107(a). Filing Requirements Note that the filing requirements of 37 C.F.R. § 42.6(b) apply to waivers of patent owner preliminary response under 37 C.F.R. § 42.107(b) and 37 C.F.R. § 42.207(b): (b) Modes of filing.(1) Electronic filing. Unless otherwise authorized, submissions are to be made to the Board electronically via the Internet according to the parameters established by the Board and published on the Website of the Office.(2)(i) Filing by means other than electronic filing. A document filed by means other than electronic filing must:(A) Be accompanied by a motion requesting acceptance of the submission; and(B) Identify a date of transmission where a party seeks a filing date other than the date of receipt at the Board.(ii) Mailed correspondence shall be sent to: Mail Stop PATENT BOARD, Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313–1450. It is important that your waiver is correctly filed and displayed in the record. You should, therefore, include the following caption in a header on each page of your motion: Patent Owner's Waiver of Preliminary Response Under 37 C.F.R. § [42.107(b) / 42.207(b)]Case No.: [case number]U.S. Patent No. [patent number] Each page should also be numbered to ensure that every page has been properly filed and to facilitate reference a particular page of the motion in the future, if necessary.