PTAB Continues to Add Gloss to Inter Partes Review Trial Practice Rules

iStock_000008674333XSmallWelcome to our third and final report on one of the more comprehensive orders issued to date by the PTAB in an Inter Partes Review proceeding, the PTAB’s “Conduct of the Proceedings” Order from Inter Partes Review No. IPR2012-00022 (Ariosa Diagnostics v. Isis Innovation, Ltd.).  This post focuses on three quick-hitting topics touched upon by the Board in the Ariosa IPR that helps add clarity regarding how these proceedings will be handled.  Earlier posts relating to this order can be found HERE and HERE.

First, the PTAB made note of the fact that the parties advised the Board that they were discussing the entry of a protective order.  As advice that can be used as an IPR practice tip, the Board requested that, to the extent the proposed order deviated from the Board’s default protective order, the parties should identify the differences between the proposed protective order and default protective order.

Second, the PTAB asked Isis, the patent owner, for a date by which it thought it would file any Patent Owner Preliminary Response.  Ariosa took the opportunity to suggest that, given that many of the issues in this Inter Partes Review were similar to those addressed in the co-pending district court litigation between the same parties, that Isis should be given a shortened time frame to file the Preliminary Response.  Isis responded by suggesting that the impending holidays, as well as the fact that counsel for the IPR was different than counsel for the litigation, would make it difficult to file the Preliminary Response sooner than the 3 month window allowed by the Trial Practice Rules.  37 CFR § 42.107.  The Board did not shorten the three month timeframe for filing the Preliminary Response.  It is, however, telling that it considered such an action – suggesting that such requests to shorten the timeframe for filing a Patent Owner Preliminary Response may, under the right circumstances, be granted.

Third, and lastly, Isis requested clarification of the page limit for the Preliminary Response regarding whether such response is limited to the number of pages included in the petition, or whether it was entitled to the full 60 pages allowed by the Trial Practice Rules.  37 CFR §42.24.  The Board made clear that the patent owner is entitled to the full 60 pages provided in the rules, even if the petitioner did not use the full 60 pages in its petition.

Slowly, but surely, clarity is being brought to Inter Partes Review proceedings and the Trial Practice Rules that govern them.