The Basics of an Inter Partes Review Petition

The petition is the most important paper a challenger files in an inter partes review. The Board decides whether to institute trial largely on what the petition says, and the petitioner generally cannot add new grounds or fill gaps later. A petition that is incomplete or thinly argued may never reach trial.

The requirements come from two places: the statute, 35 U.S.C. § 312(a), and the Board’s trial rules in 37 C.F.R. Part 42, especially §§ 42.8, 42.22 and 42.104.

What the statute requires

Under 35 U.S.C. § 312(a), a petition may be considered only if it:

• is accompanied by the required fee;
• identifies all real parties in interest;
• identifies, in writing and with particularity, each claim challenged, the grounds for each challenge, and the evidence supporting each ground, including copies of the patents and printed publications relied on and any supporting declarations;
• provides any other information the Director requires by regulation; and
• provides copies of the petition and supporting evidence to the patent owner or its designated representative.

The real-party-in-interest requirement deserves particular care. An incorrect or incomplete identification can create problems with the filing date and with the one-year time bar of § 315(b). See who is the real party in interest in an IPR or PGR.

What the rules add

General content (§ 42.22)

Every petition must state the precise relief requested and give a full statement of the reasons for that relief, including a detailed explanation of the significance of the evidence.

IPR-specific content (§ 42.104)

For each challenged claim, the petition must identify:

• the claim and the specific statutory ground (anticipation under § 102 or obviousness under § 103) on which it is challenged;
• the patents or printed publications relied on;
• how the challenged claim is to be construed (§ 42.104(b)(3));
• how the construed claim is unpatentable, including where each claim element is found in the prior art; and
• the exhibit number of the supporting evidence and the specific portions relied on.

The petitioner must also certify that the patent is available for review and that the petitioner is not barred or estopped from requesting it. The claim construction statement links directly to the standard discussed in claim construction during inter partes review.

Mandatory notices (§ 42.8)

Each party must file notices identifying:

• each real party in interest;
• related matters, such as other judicial or administrative proceedings that could affect or be affected by the review;
• lead and back-up counsel; and
• service information, such as mailing and electronic addresses.

These notices must be kept current; changes during the proceeding have to be reported.

Length and service

An IPR petition is limited to 14,000 words (37 C.F.R. § 42.24(a)(1)(i)). Earlier, the limit was expressed in pages; the Office switched to word counts in 2016. The petition and its exhibits must be served on the patent owner at the correspondence address of record, and the petition will not receive a filing date until the requirements for a complete petition, including service, are met.

Expert declarations and claim charts

Most petitions are supported by a declaration from a technical expert. The declaration can explain how a person of ordinary skill would read the references, why a skilled artisan would have combined them, and what the state of the art was. Under 37 C.F.R. § 42.65(a), expert testimony that does not disclose the underlying facts or data on which it is based may be given little or no weight, so conclusory declarations add little.

Claim charts are useful for mapping claim elements to prior-art passages, but a chart alone is rarely enough. For obviousness in particular, the Board expects an explanation of why the skilled artisan would have combined the teachings and with what expectation of success. That reasoning has to appear in the petition itself.

Common reasons petitions fail

• Insufficient explanation. Citing large blocks of a reference without saying how they meet each limitation, or asserting a motivation to combine without support.
• Incorporation by reference. Under 37 C.F.R. § 42.6(a)(3), arguments may not be incorporated from one document into another. Pointing the Board to pages of an expert declaration instead of making the argument in the petition can lead the Board to disregard it. See the case note on Cisco Systems, Inc. v. C-Cation Technologies, LLC.
• Time bar. A petition filed more than one year after the petitioner, a real party in interest or a privy was served with an infringement complaint cannot be instituted (35 U.S.C. § 315(b)), apart from the joinder exception.
• Real party in interest problems. Failing to name a party that should have been named.
• Discretionary denial. Even a strong petition can be denied for reasons unrelated to its merits. Those practices have changed repeatedly, so check current USPTO guidance.

The threshold the petition must meet is discussed in the different threshold standards for AIA proceedings.

Key takeaways

• The statute (§ 312(a)) and the rules (§§ 42.8, 42.22, 42.104) together set the required contents of an IPR petition.
• Each ground must be explained claim by claim, with specific citations to the evidence and a claim construction statement.
• The petition is limited to 14,000 words, and arguments may not be incorporated by reference from declarations.
• Expert testimony should disclose its underlying facts; conclusory opinions carry little weight.
• Real party in interest and time-bar issues can defeat a petition regardless of its merits.