This document summarizes key considerations from inter partes review petitions that have been denied. It outlines the IPR process and requirements for petitions. It then analyzes examples of denied petitions, finding common reasons were failures to properly construe claims, support obviousness combinations, address patent owner responses, and provide sufficient expert testimony. It concludes with best practices such as avoiding time bars, strengthening expert opinions, considering claim construction, and thoroughly responding to petitions.

1. INTER PARTES REVIEW (IPR) –
LEARNING FROM THE DENIED PETITIONS
BY:
KIRBY DRAKE

2. IPR Overview
• Involves request to cancel one or more claims
of an issued patent on grounds of anticipation
and/or obviousness based on patents or printed
publications
• Similar to validity challenges in federal district
court
• Institution of IPR not as a matter of right

3. Petition Requirements
• Must set forth grounds for standing (identify real
parties in interest)
• Must identify particularities of challenge
• Identify each claim being challenged
• Specify how each claim is to be construed
• Specify where each element of claim found in prior art
• Must file within one year after petitioner served
with patent infringement complaint

4. Optional Patent Owner Response
• Must file within 3 months of petition filing
• Possible challenges
• Statutory or time bars
• Estoppel based on petitioner or real party in interest
activities
• References not prior art, prior art does not teach or
teaches away from combination of references
• Claim construction is unreasonable

5. Denial Observations
• Over 50 petitions denied as to all grounds
• Variety of patent subject matter (mechanical, telecom,
enzymes, energy drinks, medical, semiconductors)
• Variety of patent owners (Adobe, Boston Univ., Cisco,
Eli Lilly, Symantec, Wi-Lan)
• At least 3 grounds included in each denied petition
• Denials authored by various PTAB judges (no more
than 6 for a single judge – mostly related patents)
• 90+% of patent owners filed optional response

6. Synopsis v. Mentor (IPR2012-00041)
Petitioner Cannot Hide Weaknesses in Petition
• Failed to construe key claim element
• PTAB construed key claim element and found not
disclosed in prior art reference
• Failed to state ground or rationale to support
obviousness finding
• PTAB found petitioner did not clearly explain
reasoning behind unsupported assertions (lack of
detail)

7. BSP v. Motio (IPR2013-00307)
Patent Owner Response Can Be Key
• Denial of several anticipation grounds
• PTAB referred to patent owner’s response and agreed
that prior art references did not teach all claim
elements
• Denial of several obviousness grounds
• PTAB agreed with patent owner that rationale for
combining teachings was conclusory and expert
declaration did not substantiate positions

8. Fontaine v. Raildecks (IPR2013-00361)
Claim Construction Positions Can Be Fatal
• Petitioner argued that claim terms should retain
plain and ordinary meaning
• Patent owner provided a claim construction for term
“stacking block”
• PTAB partially agreed with patent owner, and using
claim construction, concluded prior art references did
not disclose a “stacking block”

9. Dell v. Acceleron (IPR2013-00361)
Priority Analysis Can Lead to Denial
• Petitioner argued that patent-at-issue not
entitled to priority benefit but prior art should get
priority benefit
• Patent owner responded and identified disclosure in
provisional supporting claims and PTAB agreed
• Priority analysis was fatal to substantive grounds in
petition – both patent-at-issue and support for prior art
references

10. Monsanto v. Pioneer Hi-Bred (IPR2013-00002)
Expert Declaration Must Meet Standards
• Petitioner relied on expert declaration to
establish prior art taught and/or provided a
reason to defoliate plants within claimed
timeframe
• PTAB found that declaration failed to provide sufficient
underlying data to support opinions
• PTAB also did not credit expert’s conclusions that prior
art allegedly taught enhanced seed vigor

11. Procedural Grounds for Denial
• Petition not filed within one year after complaint
served (BioDelivery Sciences Int’l v. Monosol
RX, IPR2013-00315)
• Time bar because of successor-in-interest
actions (Anova Food v. Sandau, IPR2013-
00114)

12. PTAB Discretion to Deny IPR Petitions
• Intelligent Bio-Systems v. Illumina Cambridge
Limited (IPR2013-00324)
• More than one IPR petition on same patent filed
• PTAB found grounds in later petition similar to those
raised in petition already granted
• PTAB exercised discretion under 35 U.S.C. 314(a)
and 35 U.S.C. 325(d) and denied later filed petition

13. Best Practice Considerations
• Petitioner
• Avoid time bars and/or privity issues
• Make expert declarations meaningful
• Consider claim construction impact on substantive
grounds
• Avoid being duplicative or too hasty in analysis
• Patent Owner
• Consider and carefully respond to petition