The widespread adoption by patent challengers of Inter Partes Review remains high. The vast majority of petitions to initiate an IPR are granted by the USPTO. However, the tactical use of a Patent Owner Preliminary Response can be very effective, as our firm recently showed.
Lerner David obtained a complete dismissal from the Patent Trial and Appeal Board of a petition for Inter Partes Review against our client's patent using a Preliminary Response. In rejecting at least six different grounds of alleged anticipation and obviousness, the PTAB relied on our arguments in the Patent Owner Preliminary Response explaining why the prior art references were missing elements of the challenged claims. No trial was instituted.
The decision shows the importance of retaining counsel who can, at the earliest stages of an IPR, assess both the technical and legal issues with an eye toward advancing the arguments to which the PTAB will be receptive. From this perspective, the value of filing a Patent Owner Preliminary Response can and should be evaluated as a means to preemptively attack a patent challenger's position. In its decision, the PTAB repeatedly referenced the particular examples our firm offered that simultaneously supported our client's patent, and undermined the arguments of the challenger.