For the issues raised for petitioner and patent owner like by non-instituted grounds, a possible model emerges based on the Board’s actions in Liberty Mutual, and in consideration of a near analogue in patent prosecution practice.

In Liberty Mutual (although very infrequently thereafter), the Board identified from within the “redundant” grounds raised, various groupings of grounds, and issued a pre-institution decision order that gave the petitioner in that case seven days to select which sets of grounds it wanted to maintain.

This process has a near-analogue in patent prosecution practice at the Patent Office: the restriction requirement. In this process, if an application for patent claims two or more independent and distinct inventions, the examiner may require the applicant to elect one of the inventions for examination.  Like the reduction of grounds in an IPR, this process limits the scope of examination for the case to a subset of inventions if more than one is claimed.  A non-elected invention is not examined, but may be re-filed in a divisional application (for a new fee) without losing the original filing date, and assuming that no new matter is added to the specification.  

In view of Liberty Mutual and of the similar goal of limiting of issues for consideration, a restriction requirement model for IPR grounds seems workable. When the number of grounds in an IPR petition exceeds the number that the Board believes can be addressed within the statutory time limits for IPRs, the Board could identify separable sets of grounds as they did in Liberty Mutual, and issue a similar grounds selection mandate to petitioners to choose among them for the filed IPR. Doing so would provide petitioners greater control over which of the asserted grounds are the focus in the case in which fewer than all asserted grounds will be maintained.

As in Liberty Mutual, non-selected grounds would not be considered in the IPR, and would not be guaranteed institution.  However, under this model the petitioner could elect to pursue another IPR (for another fee) based on a different set of grounds/claims as indicated by the Board’s grounds selection mandate, but keep their filing date and be limited to the content of the original petition. Then the Board would issue an institution decision as usual. This process would still limit the issues in the IPR and allow for timely completion, while allowing the petitioner an opportunity to pursue the grounds not selected in the first IPR.  

The patent owner also would benefit from this process. Even though this process may mean that more than one IPR might be asserted against their patent, the petitioner would need to decide between sets of grounds before they are instituted.  Further, because petitioner would be limited to the content of the original IP petition, the word/page limits would continue to provide a natural limit on how many grounds a petitioner could support with evidence sufficient for institution.  If the petitioner does decide to pursue the non-selected grounds from the mandate, patent owner would have certainty from the Board whether an IPR would be instituted on those grounds sooner rather than later.

Following this near-analogue from prosecution practice, the Board could continue to meet its time and efficiency mandate, while providing a solution to the problem of non-instituted grounds in a way that is beneficial to both parties.

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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