Petitioners: Don’t Forget Procedure!

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.

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