While developing an inter partes review petition, it is easy to get so focused on the substance of the invalidity challenge and expert declaration that PTAB procedure and practice guidelines are left as an afterthought. However, as has been shown time and time again, the PTAB relies on its procedures to help keep post grant proceedings streamlined. As the dockets of the PTAB Administrative Patent Judges become heavier, one can expect the importance of procedure to become even greater. Two (related) practices that appear to frustrate PTAB Judges are: (1) incorporating into the petition by reference portions of declarations or other exhibits, and (2) insufficiently explaining in the petition how claim elements are met.
It has been a little more than one year since the Patent Trial and Appeal Board (“PTAB”) issued their first final written decision in an inter partes review and accordingly. Since then, by our calculation, the PTAB has issued 91 Final Written Decisions in IPR proceedings.1
Since the USPTO first issued its rules regarding inter partes review proceedings, prospective petitioners have grappled with the choices of which grounds of unpatentability to present to the Patent Trial and Appeal Board. Given the estoppel provisions of 35 U.S.C. § 315, which may prevent a petitioner from later raising any ground of unpatentability that either was raised or could have been raised in the IPR proceeding, petitioners taking the IPR plunge are loathe to hold back any grounds of unpatentability that might resonate with the Board, or later to the Federal Circuit on appeal.