19.1 AIA Trial Petitions, Preliminary Response & Institution

19.1 AIA Trial Petitions, Preliminary Response & Institution

Choose the correct AIA trial

An inter partes review (IPR) challenges patent claims under §§ 102 or 103 using patents or printed publications. It ordinarily cannot be filed until the later of nine months after patent grant or termination of any PGR. A petitioner served with a patent-infringement complaint generally faces the one-year § 315(b) time bar, subject to the statute’s joinder treatment.

A post-grant review (PGR) must generally be filed within nine months after grant or qualifying reissue. It can raise the invalidity grounds available under § 282(b)(2) or (3), including eligible §§ 101 and 112 grounds, except that failure to disclose best mode is not a basis for invalidity. PGR applies only to patents within its statutory first-inventor-to-file scope.

The petitioner must also account for civil-action bars. A party that first files a civil action challenging validity cannot later use the AIA trial as though the lawsuit did not exist, while a counterclaim is treated differently by statute. Work every timing fact before analyzing the merits.

Petition content and service

The petition defines the requested trial. It must identify every challenged claim, each precise statutory ground, and where every claim element appears in the relied-on evidence. It should explain claim construction needed to resolve the controversy, provide supporting declarations and exhibits, identify the real parties in interest and related matters, pay the fee, and certify service on the patent owner at the correspondence address of record or another permitted address.

Incorporation by reference is disfavored. Essential reasoning cannot be hidden in an expert declaration to evade word limits. Exhibits support the petition; they do not replace a clear explanation in the petition itself. The petitioner ordinarily bears the risk of omissions because a reply cannot introduce a new ground after institution.

Patent owner preliminary response

After the petition is accorded a filing date, the patent owner ordinarily has three months to file a preliminary response. It may argue statutory bars, discretionary denial, deficient evidence, claim construction, or failure to meet the institution standard. The patent owner may disclaim challenged claims, and the Board does not institute review of a disclaimed claim.

The rules permit testimonial evidence with a preliminary response. Because cross-examination normally occurs only after institution, a genuine issue of material fact created by conflicting testimony is viewed in the petitioner’s favor solely for deciding whether to institute. That provisional treatment does not shift the ultimate burden at trial.

Institution standards

For IPR, the petitioner must show a reasonable likelihood that it would prevail as to at least one challenged claim. For PGR, the petition must show that it is more likely than not that at least one challenged claim is unpatentable, or raise a novel or unsettled legal question important to other patents or applications.

The Board also has statutory and discretionary considerations, including parallel proceedings, serial petitions, and fairness to the parties and the system. The Consolidated Guide explains factors but they are not substitutes for the governing statutes, rules, and precedential decisions.

The Board decides institution within three months after receiving the preliminary response or after the time for it expires. Under SAS Institute, if an IPR is instituted, the trial proceeds on all challenged claims; USPTO practice also includes all grounds presented in the petition. The Board can deny the petition entirely but does not create a partial institution limited to selected claims or grounds.

Burdens and evidence

The petitioner retains the ultimate burden to prove unpatentability by a preponderance of the evidence. The patent owner does not bear a burden to prove an issued claim patentable merely because trial was instituted. Authentication, hearsay, expert qualification, and relevance may affect evidence, while failure to timely object can waive an evidentiary complaint.

Institution comparison

An exam problem often supplies a strong prior-art theory but a fatal time bar. Institution requires both a legally available proceeding and a sufficient merits showing.