Lessons Learned from Early Decisions Declining to Institute an IPR

The PTAB has denied petitions for inter partes review in five of its 54 institution decisions (as of April 30, 2013). Those five cases are:

• Synopsis, Inc. v. Mentor Graphics Corp., IPR2012-00041, Paper 16 (Feb. 22, 2013)
• Denso Corp. v. Beacon Navigation, GmbH of Switzerland, IPR2013-00027, Paper 12 (Apr. 2, 2013)
• Wowza Media Systems, LLC v. Adobe Systems Inc., IPR2013-00054, Paper 12 (Apr. 8, 2013)
• Monsanto Co. v. Pioneer Hi-Bred Int’l, Inc. (I), IPR2013-00022, Paper 43 (April 11, 2013)
• Monsanto Co. v. Pioneer Hi-Bred Int’l, Inc. (II), IPR2013-00023, Paper 32 (April 11, 2013)

In each case, denial followed a patent owner’s response. Even at this early stage in IPR practice, much can be learned about petition drafting from the PTAB’s disposition of these petitions in view of the patent owner’s response. In particular, the decisions highlight the importance of clearly explaining how references satisfy all elements of the claims, providing and supporting claim constructions, and anticipating and addressing likely patent owner arguments.

In Synopsis, the PTAB construed a dispositive claim narrowly and used the patent owner’s reasoning to avoid a prior art reference. The PTAB also criticized the petition for not “clearly point[ing] to where each element of the claim is found” in the applied reference and for not “clearly explain[ing] the reasoning” behind petitioner’s invalidity arguments.

In Denso, the petitioner did not construe the claims in the petition. The PTAB relied on the “ordinary and customary meaning for all terms” and provided a specific construction for one claim term. The PTAB used its constructions to explain, for each asserted reference, where it felt petitioner failed to show the reference satisfied particular elements of the claims.

In Wowza, the PTAB rejected a number of obviousness challenges. The PTAB rejected petitioner’s proposed construction of a term, finding “no reasoning or evidence in support,” and declined to adopt a proposed rejection based on a construction of a different term it found “more pertinent to the issues raised in the Petition and Preliminary Response.”

In the Monsanto cases, the PTAB found the petition deficient for not sufficiently explaining why one of ordinary skill would find the claims inherent in the prior art. An expert declaration was given “little weight” for failing to “provide sufficient underlying data.”

*Jonathan R.K. Stroud is a Law Clerk at Finnegan.