Grounds asserted by a petitioner in an IPR, but not instituted (“non-instituted grounds”) can be a source of frustration for the petitioner and the patent owner alike.  Frequently, not all grounds asserted in an IPR will be instituted by the Patent Trial and Appeal Board (“the Board”).  For the petitioner, non-instituted grounds may be a source of concern, especially if future petitions are time-barred, and/or if the instituted grounds represent only a single invalidity position (e.g., anticipation under 102, but not obviousness under 103). For the patent owner, non-instituted grounds leave unanswered questions about whether and future IPRs might be filed.  

From the perspective of the Board, narrowing the asserted grounds is often necessary for reasons of efficiency, since IPRs are mandated to be completed within one year from institution.  Indeed, a primary motivation for instituting word/page limits
for IPR filings is to ease the burden on the Board.

The first case reducing the number of grounds was Liberty Mutual, in which over 400 grounds were asserted. In that case, the Board categorized the grounds, and forced the petitioner to choose among sets of grounds to be considered. The Board also established a framework focused on various ways that grounds could be “redundant,” and thereafter petitioners diligently focused on cutting back on the number of grounds and argue the non-redundancy of asserted grounds. Later cases proved that sometimes “redundant” grounds was shorthand for too many grounds to decide the IPR in one year, and that deciding that grounds were redundant was not about the substance of the grounds. In most IPRs filed to date, the instituted grounds and/or claims have been fewer than the asserted ones.

In subsequent cases, an oddly-paired set of holdings has emerged related to the statutory language about estoppel as it relates to grounds that “reasonably could have been raised.” The first set of cases broadly construed this language to include all prior art that could have been found by a skilled searcher’s diligent search. The second set of cases focused on what the terminology “during” an IPR meant, and found it to include only instituted grounds, and that “during” an IPR meant institution and thereafter, such that non-instituted grounds were found to “could not” have been raised.

From the perspective of the petitioner, these decisions encourage including in an IPR as many grounds covering as much relevant art as possible, in view of the risk of future estoppel from any ground not raised that “could have” been raised, but not against those that were asserted and not instituted. On the other hand, there are real limits to the number of grounds that can be raised effectively in a single IPR based on the current word limits, greatly increased costs to filing multiple IPRs, and petitioner typically has no ability to control which grounds the Board selects.

For patent owners, non-instituted grounds also have negatives. Because non-instituted grounds are excluded from those that “could have been” raised, patent owners are left with uncertainty about whether their patent may be subject to scrutiny in the future filings based on the non-instituted grounds.

Thus, while reducing the number of grounds helps the Board meet its one year mandate for IPRs, the impact of the non-instituted grounds on both petitioner and patent owner extends well beyond the IPR in which they were denied.

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Photo of Jennifer Bush Jennifer Bush

Jennifer Bush focuses her practice on prosecuting patent applications in a wide range of technical fields, including computer software, Internet technologies, RFID, and business methods. Jennifer also has patent prosecution experience with life sciences and medical devices. Her practice also involves intellectual property strategy and counseling, as well as inter partes reviews, patent appeals and reexaminations. Jennifer has analyzed intellectual property issues for numerous due diligence and litigation matters.

In addition to providing legal services for her clients, Jennifer is a Lecturer-in-Law at the University of California, Davis School of Law, where she teaches patent prosecution and practice. She is also a member of the faculty at the Practicing Law Institute, and co-chair of the annual Fundamentals of Patent Prosecution boot camp.  She has lectured on topics related to patent law at the University of California, Hastings College of the Law and Santa Clara University School of Law.

View Jennifer’s bio on Fenwick.com