by Thomas J. Leach and Brian McCall of Merchant & Gould

When Brett Favre joined the Minnesota Vikings in 2009, the aged quarterback joked that all he had to do was hand the ball off to the talented running back Adrian Peterson. Similarly, in inter partes reviews (IPRs) it might be tempting to just hand off the closest prior art to the expert Patent Trial and Appeals Board to invalidate the challenged claims. That could be a costly mistake. Here are some fundamentals to keep in mind when preparing a petition for IPRs.

Explain everything. The Board has criticized petitions for not including detailed explanations. Norman Noble, Inc. v. NuTech Ventures, IPR2013-00101, Paper No. 14 at 10 (June 20, 2013) (citing 37 C.F.R. § 42.104(b)(4); 37 C.F.R. § 42.22(a)). In Norman Noble, the Board emphasized that the “petition ‘must specify where each element of the claim is found in the prior art patents or printed publications relied upon;’ and it ‘must include . . . a detailed explanation of the significance of the evidence including material facts.'” Id. In drafting the petition, it is likely that you have spent so much time analyzing the references that your quotes and citations seemingly explain themselves. Step back. Force yourself to keep asking “why” and “what does this show” when drafting the petition. For instance, when you quote a reference, ask why that quote is important and which claim element it discloses, or how it supports the combination of references.

Do the heavy lifting. The Board has received more petitions than originally anticipated. Judges at the PTAB are time-pressed and rejecting your petition could ease their docket. Avoid giving the Board a quick out by skimping on explanations and citations. The Board has chastised incomplete or insufficient petitions as “improperly shifting the burden to the Board” to sift through the references and petition and make the petitioner’s argument for them. Google v. EveryMD, IPR2014-00347, Paper No. 9 at 25 (May 22, 2014). Your job does not end with identifying good prior art. That is the beginning. You need to weave the disclosures together into compelling invalidity arguments grounded in section 102 or 103, direct the Board to the support in each reference, and provide reasons to combine references or modify references to support obviousness arguments. Make each ground crystal clear: which references, which citations, and why they disclose each element.

Quality, not quantity. Avoid the shotgun approach, which dilutes your strong arguments and wastes precious pages. Instead, present complete arguments for your best positions. The Board has cautioned Petitioners that they will only address “the basis, rationale, and reasoning put forth by the Petitioner and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner. . . . [I]t is the responsibility of the Petitioner to clearly articulate [the best combinations of the references].” Liberty Mutual Ins. Co. v. Progressive Casual Ins. Co., CBM2012-00003, Paper 8 at 14 (October 25, 2012). The Board also directed that Petitioners “clearly express and explain . . . precisely how the teachings of multiple references are used in combination to meet a claim feature. We also recommend that all petitioners clearly state what the differences are between the subject matter claimed in a claim alleged as obvious over prior art, and the prior art.” Id. at 15. A Petitioner relying on a combination of references must do more than present the references and their teachings—they must explain how the references are combined and the differences between the prior art and the claims. The Patent Owner will stress any differences between the references and the claims and it is better to preempt those arguments with a solid, well-reasoned petition rather than hope that the Board does it for you. It won’t.

Preparing a successful petition for inter partes review is a formidable task. The Patent Owner will dissect and challenge every assertion you make in the petition and the Board will not bail out any half-baked arguments or fill gaps. Your chances of success greatly improve if you fully develop your arguments, provide specific support and focus on the best arguments.