Pitfalls And Potential: The All-Important Preliminary Response

Under 35 U.S.C. §§ 313 and 323, a patent owner (PO) may file a preliminary response to a petition to institute a trial challenging the validity of one or more claims in an issued U.S. patent. But a PO is not required to do so. Indeed, as of January 23, roughly 25% of IPR POs (137/544) and roughly 4% of CBM POs (3/66) have waived their opportunity to submit a preliminary response.

Reasons for not submitting a preliminary response vary. Perhaps a PO wishes to preserve its arguments after discovery regarding the petitioner or may want to consider the Board's preliminary claim constructions before presenting arguments. Maybe a PO may not automatically submit a declaration with its preliminary response (37 C.F.R. § 42.107(c)), although at least one PO has tried. See Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005, Paper 15 (Dec. 3, 2012). Other reasons may be that a PO may not amend (e.g., 37 C.F.R. § 42.107(d)), although they may disclaim patent claims (e.g.,