Pitfalls and Potential: The All-Important Preliminary Response

Under 35 U.S.C. §§ 313 and 323, a patent owner (PO) may file a preliminary response to a petition to institute a trial challenging the validity of one or more claims in an issued U.S. patent. But a PO is not required to do so. Indeed, as of January 23, roughly 25% of IPR POs (137/544) and roughly 4% of CBM POs (3/66) have waived their opportunity to submit a preliminary response.

Reasons for not submitting a preliminary response vary. Perhaps a PO wishes to preserve its arguments after discovery regarding the petitioner or may want to consider the Board’s preliminary claim constructions before presenting arguments. Maybe a PO may not automatically submit a declaration with its preliminary response (37 C.F.R. § 42.107(c)), although at least one PO has tried. See Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005, Paper 15 (Dec. 3, 2012). Other reasons may be that a PO may not amend (e.g., 37 C.F.R. § 42.107(d)), although they may disclaim patent claims (e.g., 37 C.F.R. § 42.107(e)). And because a preliminary response is “limited to setting forth the reasons why no inter partes review should be instituted under 35 U.S.C. § 314” (37 C.F.R. § 42.107(a)), the Board may not consider certain substantive arguments in a response. In short, the decision not to preliminarily challenge a petition depends on factual and legal issues that should be considered based on circumstances relevant to the PO, the challenged patent, and the grounds set forth in the petition.

In contrast, where a PO does submit a preliminary response, the type of arguments pursued may vary. For example, a PO may highlight legal errors, challenge (or not challenge) claim constructions, and/or point out procedural deficiencies in a petition. In Lombard Medical Technologies PLC v. Medtronic, Inc., the PO simply pointed out that obviousness-type double patenting was unavailable in IPR. IPR2013-00269, Paper 9 (Aug. 8, 2013). While not the only ground at issue, the petitioner settled and the Board allowed the parties to terminate via a joint motion.

The Board may also give deference to unchallenged claim construction positions presented by a petitioner. For instance, in instituting the ten Corning IPR trials (IPRs 2013-00044–53), the Board noted that “Corning’s proposed interpretations . . . do not appear unreasonable “ and “[b]ecause these definitions are not specifically challenged by DSM, we adopt them for purposes of this decision.” See, e.g., Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 14 (May 13, 2013). In Conopco, Inc. v. The Proctor & Gamble Co., IPR2013-00505 Paper 9 (Nov. 15, 2013), the PO challenged the petitioner’s grounds as redundant in an attempt to minimize the issues considered by the Board should it institute a trial. These and other positions should be considered when a PO decides to submit a preliminary response.