Inter Partes Review (“IPR”) proceedings before the Patent Trial and Appeal Board (“PTAB”) have become a leading forum for patent disputes. IPRs are designed to be a faster and less expensive alternative to district court litigation,1 and they have proven increasingly popular with defendants in district court patent litigation and others interested in challenging patents. Indeed, as of July 2014, the PTAB is the second busiest patent docket in the nation, after the Eastern District of Texas.2
In many ways, IPR proceedings resemble a streamlined and accelerated district court litigation on validity alone. As in district court, a wide range of motions are available in IPR to both petitioner and patent owner; but, in keeping with the goal of increased efficiency, certain limits are placed on how and when such motions can be filed. This article presents an overview of motion practice in IPRs and the strict timelines that can apply. We outline some of the most valuable motions and highlight several significant choices that petitioners and patent owners must make within the first few weeks after institution of the IPR proceeding.
Motions Available in IPR
Many of the motions familiar to plaintiffs and defendants in district court patent litigation have counterparts in IPR. The PTO’s Office Patent Trial Practice Guide (“Practice Guide”) presents a menu of motions and requests available to both petitioner and patent owner.3 Some of the most important motions include the following:
Motions for Joinder (Consolidation),4
Motions for Mandatory Initial Disclosures,5
Motions to Waive Page Limits (for the petition, or for various replies and motions),6
Motions for Additional Discovery,7
Motions for Additional Briefing,8
Motions to File Supplemental Information and Motions for Judgment Based on Supplemental Information,9
Motions to Disclose Inconsistent Information,10
Motions to Exclude Evidence,11
Motions to Expunge Evidence,12
Motions to Seal (and for Protective Orders),13
Motions to Compel Testimony,14
Motions for Live Testimony (at oral argument),15
Motions for Observations on Cross-Examination,16
Motions to Terminate IPR on Joint Request of Petitioner and Patent Owner,17 and
Motions for Reconsideration or Rehearing.18
IPR practice also allows for oppositions to motions19 and for replies to oppositions.20
Unlike district court litigation, IPR offers the patent owner the opportunity to amend the claims of the challenged patent(s).21 However, motions to amend are permitted only at the discretion of the PTAB,22 and PTAB panels have shown very little willingness to allow claim amendment; as of July 2014, just one motion to amend claims had been granted.23
Authorization and Other Formal Requirements
Generally, the PTAB requires a moving party to request and receive authorization prior to filing any motion.24 Exceptions to the rule are granted in certain cases where it would be impractical to seek prior authorization, such as motions to seal and motions filed with a petition (e.g., motions to waive page limits).25 The Practice Guide also notes a handful of motions for which authorization is required but granted automatically, including motions for rehearing, motions for observation on cross-examination, and motions to exclude evidence.26 However, most motions, including motions for joinder, motions to file supplement information, motions to amend, and motions for additional discovery, require the PTAB’s express authorization.
Motions are subject to numerous other formal requirements. Each motion or petition must be filed as a separate paper.27 Motions and oppositions are limited to 15 pages,28 while replies to oppositions are capped at five pages.29 While page limits can be lifted with a motion to waive page limits, the movant must show that a waiver meets the strict “interests of justice” standard.30 The PTAB has generally been reluctant grant waiver absent a showing of extraordinary circumstances by the movant.31
Time Limits and Rules on Exchange of Motions Lists
Parties in an IPR proceeding must be aware that the PTAB not only requires authorization for most motions but also imposes very strict time limits on motion practice. Certain motions are governed by deadlines established by specific PTO rules. For example, objections to pre-trial evidence (i.e., evidence used in the petition or the preliminary response) must be served within just ten business days of institution of the IPR.32 Additional motions that must be filed within the first few weeks after institution include motions for rehearing of petitions that are granted in part, which are due within 14 days of institution;33 motions to submit supplemental information, which must be filed within one month of institution;34 and motions for rehearing of a decision not to institute a trial, which must be filed within 30 days of the decision.35 Timing of other motions, however, is left to the discretion of the PTAB, which is broadly authorized to “set the times and conditions for filing and serving notices.”36
As noted in the Practice Guide, the PTAB will typically schedule an initial conference call “about one month from the date of institution to discuss the motions that the parties intend to file and to determine if any adjustment needs to be made to the Scheduling Order.”37 Petitioner and patent owner are required to exchange detailed lists of proposed motions prior to the conference. According to the Practice Guide, “[a]n adequate motions list is necessary to provide the Board and the opposing parties adequate notice to prepare for the conference call and to plan for the proceeding.”38 A motions list “should contain a short, concise statement generally relaying enough information for the Board and opposing counsel to understand the proposed motion[s].”39
Because of the significant restrictions that apply to motion practice in IPR, both petitioner and patent owner must think early on about any and all motions for relief they may want to file throughout the proceeding – motions for joinder, for additional discovery, to file supplemental information, and so on. Immediately upon institution of the IPR, parties should carefully and strategically prepare a complete list of proposed motions. Motions not proposed in the initial exchange may be refused by the PTAB; PTO rules note generally that “[a] party should seek relief promptly after the need for relief is identified. Delay in seeking relief may justify a denial of relief sought.”40 Parties should also note, however, that spurious motions included in a motions list without adequate description and explanation of purpose may be dismissed at the initial conference stage, with risk of waiver of future use of the motion.41
In addition to the preparation of a motion lists outlined above, petitioners and patent owners alike must also remember that a handful of important motions are due even sooner. As noted above, motions for rehearing of petitions granted in part and objections to pre-trial evidence must be filed within two weeks of institution. Because of the very tight timetable, petitioners and patent owners may be wise to prepare for such motions even before receiving a notice of institution.
Finally, as also noted above, a handful of motions, including motions to exclude evidence, are exempted from strict authorization and timing requirements. These exempted motions may, at first glance, seem to present opportunities for creative lawyering. However, the PTAB Practice Guide stresses that “[a] motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact.”42 Earlier this year, the PTAB emphasized that it will reject any attempt to use a motions to exclude to introduce new arguments or evade page limits. In Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., the board chastised the patent owner for attempting to use a motion to exclude as a sur-reply.43 “While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case.”44
A wide variety of motions are available to both the petitioner and patent owner in Inter Partes Review, just as in district court. However, moving parties must abide by the PTAB’s stringent formal requirements, which include strict page limits and a need for prior authorization from the Board before many important motions can be filed, or risk incurring the Board’s ire. Parties in IPR should also pay close attention to the tight time limits on motion practice and should be prepared to exchange detailed lists of proposed motions very early on, within weeks of institution of the IPR.
1See, generally, Changes to Implement Inter Partes Review Proceedings, 77 Fed. Reg. 7041 (Feb. 10, 2012) (codified at 37 C.F.R. pt. 42).
2Docket Navigator, “Patent Litigation Statistics,” available here. Between January 1 and July 23, 2014, 974 cases concerning patent infringement, validity, and/or enforceability had been filed in the Eastern District of Texas, versus 826 post grant proceedings filed at the PTAB. Most, though not all, of the post grant proceedings at the PTAB are IPR cases. The District of Delaware was in third place, with 602 cases filed.
3Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012).
437 C.F.R. § 42.122.
537 C.F.R. § 42.51(a)
6Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48762 (Aug. 14, 2012).
737 C.F.R. § 42.51(b)(2); a high “interests of justice standard” applies to additional discovery, and these motions have been rarely granted.
8See SAP America, Inc. v. Versata Development Group, Inc., CBM2013-00042, Paper 33: Order on Conduct of the Proceeding (July 11, 2014), in which the PTAB granted the patent owner’s request for additional briefing in light of the Supreme Court’s recent decision in the case of Alice Corp. v. CLS Bank.
937 C.F.R. § 42.123.
1037 C.F.R. § 42.51(b)(3).
1137 C.F.R. § 42.64.
1237 C.F.R. § 42.56.
1337 C.F.R. §§ 42.14 & 42.54 and Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48760-61.
14Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012); see also 35 U.S.C. § 24.
15Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
16Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767-68 (Aug. 14, 2012).
1735 U.S.C. § 317.
1837 C.F.R. §§ 42.71(c) & (d).
1937 C.F.R. §§ 42.23 & 42.24(b).
2037 C.F.R. § 42.24(c).
2135 U.S.C. § 316(d) and 37 C.F.R. § 42.121.
2237 C.F.R. § 42.121(a).
23International Flavors & Fragrances, Inc. v. U.S. Department of Agriculture, IPR2013-00124, Paper 12 (May 20, 2014); see also Brett Thompsen, “International Flavors – A True Guide for Amending Claims During an IPR?,” Baker Botts Post-Grant Report, June 2014, available here.
2437 C.F.R. § 42.20(b).
25Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48762 (Aug. 14, 2012).
26Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48762-3 (Aug. 14, 2012).
2737 C.F.R. § 42.22(a).
2837 C.F.R. §§ 42.24(a)(1)(v) & 42.24(b)(3).
2937 C.F.R. § 42.24(c)(2).
3037 C.F.R. § 42.24(a)(2).
31See, for example, Illumina v. Trustees of Columbia University, IPR2012-00006, Paper 12 (Decision on Motion, Nov. 9, 2012) (“It is not the Board’s role to compare the Illumina petition with its proposed petition and attempt to figure out if the Illumina request for waiver of the page limit is in the interests of justice. Instead Illumina has the burden of establishing why it is entitled to the relief sought, 37 CFR 42.20(c).”)
3237 C.F.R. § 42.64(b)(1).
3337 C.F.R. § 42.71(d)(1).
3437 C.F.R. § 42.123(a)(1).
3537 C.F.R. § 42.71(d)(2).
3637 C.F.R. § 42.21(b).
37Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758 (Aug. 14, 2012).
38Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
39CRS Advanced Technologies v. Frontline Technologies, CBM2012-00005, Paper 31 (Order - Conduct of the Proceeding, Feb. 13, 2013, at p. 2).
4037 C.F.R. § 42.25(b).
41See ChiMei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00038, Paper 18 (Order - Initial Call, Apr. 26, 2013).
42Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012).
43Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 (Final Written Decision, Jan. 23, 2014).