When Will the PTAB Deny a Petition for Inter Partes Review?

An Inter Partes Review (IPR) is an administrative proceeding before a panel of Administrative Patent Judges at the Patent Trial and Appeal Board (PTAB or Board) – part of the United States Patent and Trademark Office (USPTO).

The PTAB reviews whether one or more claims in a patent is patentable.

As the USPTO explains,

Inter partes review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months).

The IPR process was created as part of the America Invents Act (AIA) in 2011, which was intended “to modernize the U.S. patent system and strengthen America’s competitiveness in the global economy.”

An IPR is conducted only on issues of “novelty” and “obviousness” compared to the prior art.

“Novelty” means that an invention is new. An invention isn’t new if it was known to the public before the filing date of the patent application. The novelty requirement prevents prior art from being patented again.

Determining whether an invention is “novel” requires a search of the prior art. Prior art can include things like prior patents, as well as publications.

The “obviousness” test considers whether an invention would be obvious to someone “skilled in the art.”

Under 35 USC 103,

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

For example, an improvement to a carburetor must not be obvious to someone “skilled in the art” of carburetors in order to be patentable.

Inter partes review is denied about 30% of the time for procedural reasons. A 2020 PTAB proceeding involving Apple Inc. sets forth some of the factors that will be considered in deciding whether review should be denied. The PTAB considers these factors, which relate to whether “efficiency, fairness, and the merits support the exercise of authority” to deny the review.