A review of recently issued PTAB decisions in which an Inter Partes Review (IPR) petition has been granted (i.e., orders initiating an IPR proceeding) confirms that the standard for granting a petition to review an issued patent is indeed more stringent then prior reexamination practice. Ex parte reexamination still only requires a “substantial new question of patentability” while IPR requires a demonstration that there is a reasonable likelihood that the petitioner will prevail on the asserted grounds for nonpatentability.
An informal survey of the IPR petitions granted in May 2013 shows that only about one-half of the proposed grounds for review pass muster under the “reasonably likely to prevail” standard. Notably, omnibus arguments by the petitioners, such as those suggesting that the cited references can also be combined in other ways, have been routinely ignored.
At least one PTAB panel recently took the time to criticize the practice of omnibus arguments as too vague to satisfy the statutory requirements for IPR. In an order denying in part the petition in IPR2013-0075 (Oracle Corp. v. Clouding IP, LLC), the PTAB panel noted that petitioner had included the following improper omnibus argument:
The references addressed below each provide the teaching believed by the Examiner to be missing from the prior art and variously anticipate or render obvious the claimed subject matter. It should be understood that rejections may be premised on alternative combinations of these same references.
Administrative Judge Lee chided the petitioner, noting that the petitioner has the burden of proof and that Board will not propose grounds for rejection sua sponte. In his order, he declared that “[a]ll non-specifically identified grounds of unpatentability are herein denied. . . . the Patent Owner need not speculate, address, or otherwise respond to alleged grounds which have already been denied.” Thus, would be petitioners should take note of this decision and follow the advice.