Imagine That IP Law Blog

When a party wishes to challenge the validity of another's patent, the party may chose to file a Petition Inter Partes Review (IPR) with the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB). If the Petition fails to provide sufficient evidence to  to demonstrate a reasonable likelihood of success on the merits, the PTAB will deny institution of the IPR.

For example, the Petition is required to include “[a] full statement of the reasons for relief requested, including a detailed explanation of the significance of the evidence including material facts,” 37 C.F.R. § 42.22(a)(2), which must include a statement of “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable,” id. § 42.104(b)(3)-(4). For the IPR to be instituted, the Petitioner must “show[] that there is a reasonable likelihood that the Petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Moreover“[u]nlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, in an IPR, the patent challenger has the burden of producing evidence in the Petition to support a conclusion of unpatentability.

Rather than relying on vague conclusory statements to support unpatentability based on obviousness under 35 USC §103, Petitioners must provide specific reasoning supported by evidence. As explained by the Federal Circuit, “[t]o satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements.” In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).  Instead, the Petitioner has the burden to submit facts to the record that show “[w]hether the prior art discloses a claim limitation, whether a skilled artisan would have been motivated to modify or combine teachings in the prior art, and whether she would have had a reasonable expectation of success in doing so”. Univ. of Strathclyde v. Clear-Vu Lighting LLC, 17 F.4th 155, 160 (Fed. Cir. 2021).   If the petition does not clearly demonstrate how the cited prior art meets each claim element, the Petitioner will fail to meet its burden.

“Failure to prove the matter as required ... means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden [the petitioner] loses.” Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015). Consequently, if the Petition fails to particularly point out how the cited prior art meets each of the claimed elements as construed by the Petitioner, the Petitioner loses, and the IPR should be denied.

In many cases, Petitioners try to satisfy their burden by alleging that the claim terms should be afforded their “plain and ordinary meaning.” However, a “determination that a claim term “needs no construction” or has the “plain and ordinary meaning” may be inadequate when a term has more than one “ordinary” meaning or when reliance on a term’s “ordinary” meaning does not resolve the parties’ dispute.” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). Instead, “[t]he terms used in the claims bear a presumption that they mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.” Honeywell Int'l, Inc. v. ITC, 341 F.3d 1332, 1338 (Fed. Cir. 2003). Accordingly, “Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1358 (Fed. Cir. 2017). Merely stating that all claim terms have their “plain and ordinary meaning” without considering the patent’s complete context is therefore inadequate.

“The written description and other parts of the specification, for example, may shed contextual light on the plain and ordinary meaning.” Aventis Pharm., Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013). As a result, although the “plain and ordinary meaning” is not based on any specialized definition, the meaning of the terms is established based on how a person of ordinary skill at the time (POSITA)would have understood the terms in the claim in the context of the entire patent, including the specification and the drawings.

Therefore, it is insufficient for a petitioner to satisfy their burden by treating the “plain and ordinary meaning” “like a nose of wax which may be turned and twisted in any direction.” White v. Dunbar, 119 U.S. 47, 51, 7 S. Ct. 72, 74 (1886). Accordingly, for a Petitioner to meet the burden of showing “[h]ow the construed claim is unpatentable,” the Petitioner must, at a minimum, establish the meaning a POSITA would ascribe to each disputed claim term. Then, the Petitioner must show how the cited prior art meets each of the terms based on the meaning ascribed by the POSITA.

For Petitioners
As the Supreme Court explains, “in an inter partes review the petitioner is master of its complaint,” and “the statute envisions that a petitioner will seek an inter partes review of a particular kind—one guided by a petition describing “each claim challenged” and “the grounds on which the challenge to each claim is based.” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). Accordingly, “[b]ecause of the expedited nature of IPR proceedings, it is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330 (Fed. Cir. 2019). Therefore, Petitioners need to ensure that their petition clearly sets forth how each challenged claim is to be construed, and how the construed claim is unpatentable.

As master of the complaint, the Petitioner has the burden to show how the cited prior art meets each claim element of the challenged claims as understood by a POSITA. A cursory statement that all claim terms should be construed based on their “plain an ordinary mean” can therefore doom a petition.

For Patent Owners
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” FanDuel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1341 (Fed. Cir. 2020). If the petition fails to adequately specify how the cited prior art aligns with each of the claimed elements as interpreted by the Petitioner, the Petitioner will fail to meet its burden, and the IPR should be denied.

Unless the meaning of disputed claim language is undisputed, it is the burden of the Petitioner to construe the claim term. Patent Owners should therefore utilize the Patent Owner’s Preliminary Response to demonstrate how the meaning is disputed and the Petitioner has failed to offer a claim construction for the terms that are necessary to resolve the controversy.  In addition, Patent Owners can beneficially point out how the art cited in the Petition fails to meet the elements in the challenged claims as construed by the Petitioner.