Preliminary Responses in Inter Partes Review and Post-Grant Review


Written by: Tracy Hitt, Karl Renner, Dorothy Whelan

Preliminary Responses in Inter Partes Review and Post-Grant Review The January 9, 2013, decision issued by the Patent Trials and Appeals Board (“PTAB”) in SAP America, Inc. v. Versata Development Group, Inc., slip op. CBM2012-00001, provides insight into the reasons that the PTAB will consider in a patent owner’s preliminary response for purposes of determining whether to institute inter partes review (“IPR”), post-grant review (“PGR”), or covered business method (“CBM”) proceedings.

The PTAB’s decision was made in view of SAP’s petition seeking CBM review of Versata’s patent[1] and Versata’s preliminary response asserting that SAP’s petition failed to sufficiently demonstrate that the challenged claims were unpatentable under 35 U.S.C. §§ 101, 102, and 112. Versata’s arguments against SAP’s request for CBM review under 35 U.S.C. § 102 included substantive arguments that the prior art relied upon in the petition failed to teach a material limitation that appears in each of the challenged claims. These substantive arguments were based on evidence presented in court proceedings between SAP and Versata, including expert testimony, expert reports filed with the court, briefs filed with the court, court orders, and comparisons between the challenged claims and the teachings of the prior art. The PTAB considered all of Versata’s arguments as well as those challenging the petition’s request for review under 35 U.S.C. §§ 101 and 112. The PTAB’s consideration of Versata’s arguments is consistent with the guidance provided in the Trial Practice Guide [2] published by the Patent Office, which is discussed below. Ultimately, the PTAB was not persuaded by the patent owner’s arguments, but this case-specific outcome is not newsworthy. Rather, the PTAB’s willingness to consider these various and diverse grounds of attack, as well as the evidence referenced by patent owner is worthy of attention. Based on it, we believe that patent owners are well advised to carefully consider preliminary statements when their patents are challenged in petitions for review filed under IPR, PGR, or CBM, as each is governed by the PTAB under the referenced trial practice rules.

Under 35 U.S.C. §§ 313 and 323, a patent owner is afforded the right to file a preliminary response to grounds raised by a petition for review of a patent under IPR, PGR, or CBM. This preliminary response allows the patent owner to set forth the reasons why the IPR, PGR, or CBM proceedings should not be instituted, but §§ 313 and 323 do not specify what types of reasons are properly set forth in a preliminary response or what types of evidence the patent owner can use to support his or her reasons. The final rules governing IPR, PGR, and CBM (“final rules”)[3] and the Trial Practice Guide provide guidance regarding the scope of reasons and evidence that are properly presented in a patent owner’s preliminary response.

In general, according to the Trial Practice Guide, a preliminary response to a petition requesting IPR, PGR, or CBM of a patent can include procedural and substantive reasons why the petition should be denied. For example, according to the Trial Practice Guide the reasons set forth in a preliminary response to a petition for IPR, PGR, or CBM may include assertions that:

(1) The petitioner is statutorily barred from pursuing a review.
(2) The references asserted to establish that the claims are unpatentable are not in fact prior art.
(3) The prior art lacks a material limitation in all the independent claims.
(4) The prior art teaches or suggests away from a combination that the petitioner is advocating.
(5) The petitioner’s claim interpretation for the challenged claims is unreasonable.
(6) If a petition for post-grant review raises 35 U.S.C. 101 grounds, a brief explanation of how the challenged claims are directed to a patent-eligible invention. [4]

Thus, the Trial Practice Guide specifies that a patent owner can substantively argue against assertions of unpatentability that are set forth in the petition for IPR, PGR, or CBM, including the ability to substantively argue against assertions that the claims are anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103.[5] Since the preliminary response is submitted prior to a decision on the petition, the patent owner is provided a valuable opportunity to point out substantive deficiencies in the grounds alleged by the petition prior to institution of the IPR, PGR, or CBM proceedings, making it possible for patent owner to defeat a challenge to their patent very early in the process.

[1] U.S. Patent 6,553,350.
[2] 77 Fed. Reg. 48756, August 14, 2012.
[3] 77 Fed. Reg. 48680, August 14, 2012.
[4] Id. at 48764.
[5] A patent owner may rely on a wide range of evidence to support the reasons set forth in the preliminary response to a petition for IPR, PGR, or CBM.