Preliminary Statement Must Rebut Statement of Facts in Petition

Tucked within a fairly innocuous PTAB Order authorizing Patent Owner to file a motion seeking additional discoveryNeedle in a haystack was an interesting excerpt that should be noted regarding the content of a Patent Owner Preliminary Response. The Inter Partes Review at issue is styled as Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080, involving US Patent No. 6,173,403.

The issue that drew my attention in this Order related to what requirement, if any, a Patent Owner has to respond to a statement of facts that is included in a petition. The Trial Practice Rules, as proposed, included a requirement that a petition must contain a statement of material facts. In the final rules, however, that requirement was dropped in favor of a stance that such statements of material facts are optional. Seemingly left unanswered in the Rules is the question of what must Patent Owner say in its Preliminary Response in opposition to any statement of material facts included in a petition.

That question was answered by the Board in above-referenced “Order Authorizing Motion for Additional Discovery.” In that Order, the Board noted that the issue arose by virtue of an inquiry by Patent Owner during a status conference call. Patent Owner requested guidance on whether its preliminary response must respond to the statement of facts provided with Patent Challenger’s petition. The Board instructed that, “[s]hould Patent Owner choose to file a preliminary response…Patent Owner must respond to Petitioner’s statement of facts by admitting or denying each fact, or stating that the fact cannot be admitted or denied based on information available at this point in time.” Order at 3. Notably, this response does not count against the page limit for a preliminary response.

You just never know where a nugget of PTAB guidance might be found.