Petitioner's Biggest Problem: Challenge Depth Mismatch

With only sixty pages in which to present a thorough treatment of every issue, the Petitioner must balance depth of analysis against the number of challenges. The fear of estoppel often drives Petitioners to present many challenges with a shallow analysis that is supported by a perfunctory expert declaration rehashing the Petition. The Board often institutes on only a handful of such challenges, with the result that the Patent Owner can devote its sixty pages of Response to a much deeper analysis of many fewer issues. That deep analysis can expose gaps in the Petition evidence and trap the Petitioner in the " Death Valley" between the reasonable likelihood it demonstrated and the preponderance of evidence it seeks. (In PGR and CBM, the standard for institution is somewhat higher and requires a showing that at least one challenged claim more likely than not is unpatentable, if the Petitioner's challenge were to go unrebutted.) Petitioners should take this potential