IPR Petition

An IPR petition is a formal legal document filed with the PTAB that must meet specific requirements under 37 C.F.R. Part 42: BASIC REQUIREMENTS: IDENTIFICATION: patent number being challenged; claims challenged (must list specific claim numbers); real parties in interest (all entities whose interests are represented in the petition); related matters (litigation, other proceedings involving the same patent); GROUNDS OF CHALLENGE: each ground must specify: (a) the specific prior art reference (patent number or printed publication citation); (b) which claims are challenged under each ground; (c) whether the ground is § 102 anticipation or § 103 obviousness; (d) for § 103: which references are combined and why; CLAIM CHARTS: element-by-element claim charts are required; for each challenged claim: map each claim element to the corresponding disclosure in the prior art reference; explain where each element is found; for § 103: identify which reference teaches each element; PETITION FORMAT REQUIREMENTS: 14,000-word limit for the petition (not counting claim charts as exhibits); page size 8.5 × 11 inches; 14-point font; 1-inch margins; exhibits submitted separately with exhibit numbers; FILING FEE: $19,000 for up to 20 claims; $25,000 for up to 20 claims + request for oral argument; $500/additional claim over 20; MANDATORY NOTICES: § 315(b) compliance statement (filed within 1 year of service of complaint, if applicable); statement that no IPR estoppel bars the petition; OPTIONAL ELEMENTS: declaration of technical expert (highly recommended); printed copies of foreign-language references with certified translation; claim construction arguments.

Timing is critical for IPR — several deadlines can permanently bar a petitioner from challenging a patent: THE § 315(B) ONE-YEAR BAR: 35 U.S.C. § 315(b): an IPR petition cannot be filed by a person who has been served with a complaint alleging infringement of the patent more than one year before the petition is filed; THE CLOCK STARTS AT SERVICE: the 1-year clock begins when the complaint is served on the petitioner (or real party in interest, or privy); a dismissal without prejudice of the original complaint does NOT restart the clock (Click-to-Call Technologies, Fed. Cir. 2018); a voluntary dismissal with prejudice may restart the clock in some circumstances; WHAT COUNTS AS SERVICE: formal service of a complaint in federal court; ITC complaint service; typically the date stamped on the proof of service; NOT the date the suit was filed; § 315(B) EXCEPTION: if the petition is filed as a result of a joint research agreement, the 1-year bar may not apply; TIMING FROM PATENT ISSUANCE: no statutory deadline measured from patent issuance; the only timing constraint is § 315(b) (one year from service); however, stale IPRs (filed years after the patent issued) may face discretionary denial; DISCRETIONARY DENIAL (FINTIV): PTAB uses the Apple v. Fintiv (PTAB 2020) precedential decision to discretionarily deny IPR petitions when parallel district court litigation is too far advanced; NHK Spring v. Intri-Plex (PTAB 2019): petitions filed close to a trial date in parallel district court litigation may be denied; PARALLEL PROCEEDING STRATEGY: file IPR as early as possible after service of complaint; do not delay filing to develop grounds — you have only 1 year; MULTIPLE PETITIONS: a petitioner may file multiple IPR petitions against the same patent on different grounds; PTAB may consolidate or require the petitioner to choose which grounds to proceed on; § 315(d): PTAB has discretion to consolidate.

Institution is a threshold decision by the PTAB after reviewing the petition: THE INSTITUTION STANDARD: 35 U.S.C. § 314(a): PTAB shall not institute unless the petition establishes a 'reasonable likelihood that petitioner would prevail with respect to at least one of the claims challenged in the petition'; this is a lower standard than 'more likely than not' (that's the PGR standard); this is also lower than the trial standard (preponderance of the evidence); WHAT PTAB EVALUATES AT INSTITUTION: is the prior art identified and properly characterized? Does the claim chart adequately map claim elements to the prior art? For § 103: is there an articulated motivation to combine with a reasonable expectation of success? Are claim terms properly construed? (since 2018, Phillips claim construction standard applies — same as district court); INSTITUTION RATES: historically: 60-70% of IPR petitions are instituted; post-SAS Institute (S.Ct. 2018, discussed below): institution is all-or-nothing — if instituted, all challenged claims are reviewed; PARTIAL INSTITUTION ELIMINATED (SAS INSTITUTE v. IANCU, S.Ct. 2018): pre-SAS: PTAB could partially institute (institute on some claims, deny others); SAS: institution must be on all challenged claims if any institution occurs; DISCRETIONARY DENIAL: Fintiv factors: (1) whether a stay exists or is likely in parallel district court case; (2) proximity of district court trial date; (3) investment by the parties in the parallel proceeding; (4) overlap between IPR and district court issues; (5) identity of parties; (6) other circumstances; PATENT OWNER PRELIMINARY RESPONSE (POPR): patent owner may file a preliminary response within 3 months of petition; can include factual evidence and declarations; PTAB considers POPR before institution; recent PTAB practice: institution rates have fluctuated with Fintiv discretionary denials, especially post-pandemic.

After institution, the IPR enters a trial phase that resembles streamlined litigation: TIMELINE AFTER INSTITUTION: 12-month statutory deadline from institution to Final Written Decision (FWD); this is a hard statutory deadline — § 316(a)(11); PTAB may extend by up to 6 months for good cause; TRIAL PHASES AFTER INSTITUTION: (a) PATENT OWNER RESPONSE (POR): filed within 3 months of institution; patent owner argues validity on the merits; may file additional evidence; declarations; may try to amend claims via a Motion to Amend (MTA); (b) PETITIONER REPLY: filed within 1 month of POR; limited to responding to arguments raised in POR; new argument or new evidence generally not allowed (but can respond to POR evidence); (c) PATENT OWNER SUR-REPLY: limited sur-reply allowed; (d) ORAL ARGUMENT: optional; typically 1-hour panel hearing before 3-APJ panel; MOTION TO AMEND: patent owner can attempt to amend claims to overcome the prior art; PTAB has discretion to grant or deny MTA; amended claims must: (a) respond to grounds of unpatentability; (b) not enlarge claim scope; (c) not introduce new matter; historically, MTAs were rarely granted; PTAB initiated pilot program to increase MTA grant rates; EVIDENCE STANDARD: preponderance of the evidence for final unpatentability determination; DISCOVERY: limited discovery (depositions of experts); no general fact discovery; BURDEN: petitioner bears burden of establishing unpatentability by preponderance; FINAL WRITTEN DECISION (FWD): decides which claims are unpatentable; if claim found unpatentable → claim is CANCELLED (removed from patent); if claim found patentable → survives IPR; estoppel attaches on all grounds petitioner raised or reasonably could have raised; APPEAL: FWD can be appealed to the Federal Circuit (37 C.F.R. § 90.3); deference to PTAB on factual findings.

IPR estoppel is one of the most significant consequences of filing — it permanently limits the petitioner's invalidity arguments in subsequent litigation: THE STATUTORY ESTOPPEL PROVISION: 35 U.S.C. § 315(e): once the PTAB issues a Final Written Decision in an IPR, the petitioner (and real parties in interest and privies) is estopped from asserting in district court, the ITC, or before the USPTO that a claim is invalid on any ground that the petitioner raised OR REASONABLY COULD HAVE RAISED in the IPR; SCOPE OF ESTOPPEL: 'reasonably could have raised' = prior art patents and printed publications that a petitioner exercising reasonable diligence would have discovered; IPR estoppel applies to patents and printed publications (the same bases available in IPR); WHAT ESTOPPEL DOES NOT COVER: prior art that could NOT have been raised in IPR: on-sale bar (§ 102(b)(1)(A)); public use prior art; prior commercial use; secret prior art; § 101 eligibility; § 112 written description/enablement; STRATEGIC IMPLICATIONS: a petitioner who filed IPR cannot then litigate on the same prior art in district court; petitioner must choose: IPR (prior art patents/publications) vs. district court invalidity (includes physical products, on-sale bar, § 101, § 112); filing IPR WAIVES the right to raise the same prior art in litigation; WHAT HAPPENS IF IPR IS UNSUCCESSFUL: if IPR is denied institution or if PTAB finds claims patentable in FWD, petitioner is estopped from raising those prior art arguments in litigation; PARTIAL VICTORY: if PTAB cancels some claims but not others, estoppel attaches to all grounds raised (not just the grounds for cancelled claims); RISK MANAGEMENT: consider filing IPR only if the prior art is strong enough to cancel claims; keep best litigation prior art (especially physical products, on-sale bar) for district court if IPR may not fully resolve the dispute; SPLITTING: a large defendant may split IPR petitioner identity from litigation parties to avoid estoppel binding the litigation team.