Feature

Strategic Considerations before Filing an IPR

John M. Bird and Margaret M. Welsh

©2014. Published in Landslide, Vol. 7, No. 2, November/December 2014, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

More than two years ago, the America Invents Act (AIA) reshaped trials at the U.S. Patent and Trademark Office (USPTO). The AIA established inter partes review (IPR) proceedings with the goal of having a new procedure that would provide a faster and cheaper alternative to district court litigation. IPRs allow for any person other than the patent owner to file a petition challenging the validity of a patent in view of prior art patents or printed publications. IPRs have started to change the landscape of patent practice, as they are being filed at an exponential rate. In many cases, IPRs provide a cost-effective and quick alternative to challenge the validity of a patent. The benefits of IPRs have placed urgency and importance on invalidating patents at the USPTO.

However, not all disputes warrant IPR, and a potential petitioner has much to consider when deciding whether to file an IPR. The potential petitioner should consider at least the following: (1) statutory and regulatory requirements, (2) claim constructions, (3) asserted grounds, and (4) expert declarations.

Requirements to Consider in Initial Planning

Is the Patent Eligible for IPR?

A potential IPR petitioner should first consider whether the accused patent is eligible for IPR. Most petitioners filing IPRs are also parties in a litigation, or suppliers of parties involved in a litigation, and are challenging the validity of a patent at the Patent Trial and Appeal Board (PTAB) either before or concurrently with the district court. Under 35 U.S.C. § 315(a)(1), any person other than the patent owner may file a request for IPR if they have not previously filed “a civil action challenging the validity of a claim of the patent,” such as a declaratory judgment action.1 However, a petitioner is not barred from filing an IPR if the petitioner filed a counterclaim challenging the validity of a claim, 2 filed a claim for declaratory judgment after the date an IPR is filed,3 or filed a declaratory judgment action seeking only a judgment of noninfringement.4

Practice Tip

An accused infringer should consider all possible defense strategies to ensure the most favorable outcome, and carefully compare the possible benefits of filing an IPR (i.e., cost, speed, and lower evidentiary standards) with the potential benefits of filing a declaratory judgment for invalidity (i.e., possibly a choice of forum).

Besides the restrictions above, if the patent being attacked is a patent subject to the AIA’s first-to-file novelty provisions, the IPR cannot be filed until the later of (1) nine months after the grant of the patent, or (2) after the date of termination of any post-grant review petition.5

Additionally, all IPRs must be filed within one year from being served with a complaint alleging infringement.6 While practitioners generally understand this rule, the start date of the one-year period is important to determine. For example, if a defendant is accused of infringing the same patent in two separate complaints, the start of the one-year period is calculated from service of the first complaint.7

Practice Tip

Consider challenging all the patent’s claims in an IPR and not just the accused claims, because a patent owner could potentially assert different claims in a second action filed more than one year after a first action. In this case, the petitioner may not be able to challenge the new claims in an IPR.

An exception to the one-year requirement is joinder of IPRs. The PTAB has discretion to join an IPR after the one-year bar date with another IPR under 35 U.S.C. § 315.8 When determining joinder, the PTAB will consider the impact on the proceedings (i.e., time and cost).9 Specifically, the PTAB will take into account whether the joined petitioner will consent to allowing the original petitioner to maintain control over the proceeding. In Dell v. Network-1 Security Solutions, Inc., Dell consented to allow the original petitioner, Avaya, to maintain control of the proceeding, such that the impact of joinder was minimal.10 Dell was only permitted to file a separate filing on any point of disagreement with Avaya of no more than seven pages.

Should You File an IPR?

Before rushing to file an IPR, a potential petitioner should consider whether filing an IPR is warranted in a particular case. While an IPR aims to offer a cost-effective solution for challenging the validity of a patent, both the request fee of $9,000 and the post-institution fee of $14,000 are due at the time of filing an IPR.11

Practice Tip

Consider the upfront filing fees for IPRs, especially if a potential petitioner is accused of infringing many patents or many claims of a patent. If multiple patents or numerous claims are asserted against a potential infringer, the filing fees quickly add up. However, a potential infringer would be wise not to be too shortsighted, as a district court litigation may cost a defendant $2 million to $8 million in legal fees. Thus, depending on the case, filing IPRs on multiple patents or numerous claims could be cost effective.

In addition to cost, another consideration is the impact of estoppel associated with filing IPRs. If an IPR of a claim of a patent “results in a final written decision,” the petitioner is estopped from asserting “that the claim is invalid on any ground that the petitioner raised or could have raised during [the] inter partes review.”12 Because IPR is limited to grounds raised based on patents or printed publications, a petitioner should not be barred from asserting invalidity based on, for example, subject matter patentability, prior use or sale, or indefiniteness. However, if the PTAB is not persuaded that a claim is anticipated by a reference and issues a final written decision upholding the validity of that claim, estoppel could extend to any ground later raised based on reasonably available prior art, including any obviousness grounds. Thus, a petitioner should carefully consider whether all publication-based prior art is available at the time of filing an IPR, and an extensive prior art search should be conducted before filing an IPR.

Practice Tip

A petitioner should conduct an extensive prior art search and determine whether all patents and publications are available before filing an IPR.

Along these lines, when filing an IPR, a petitioner should consider each claim and determine whether an IPR is appropriate for each claim. For an IPR to be instituted, a petitioner must demonstrate “a reasonable likelihood that the petitioner [will] prevail with respect to at least 1 of the claims challenged in the petition.”13 A petitioner should be careful to give each challenged claim its best effort and critically analyze the claim’s likelihood of success in an IPR because the petitioner may be estopped from challenging the validity of that claim in district court or another PTAB proceeding.

A petitioner should carefully consider the impact of estoppel when filing an IPR, but should not be too fearful of estoppel. Estoppel results only from review that “results in a final written decision.”14 Thus, if the PTAB does not institute the IPR, the petitioner will not be estopped. Further, if a petitioner is unable to show the PTAB that there is a reasonable likelihood that petitioner will prevail with respect to at least one of the claims challenged in the petition, then it may be hard to persuade the district court as well.

Some Formality Requirements

When filing an IPR petition, there are some requirements that every petitioner should know. First, there are statutory requirements that must be met in order for the petition to be granted a filing date. When a petition is filed, a paralegal, and possibly a judge, at the PTAB will review the petition and look for these statutory requirements.15 Statutory requirements include: paid fees, identification of the patent and the claims challenged, identification of the real party-in-interest, provided copies of the patent and printed publications referenced in the petition, and provided evidence of service to the patent owner.16 If one of the statutory requirements is missing from the petition, the PTAB will issue a notice that the petition is incomplete. A deficient petition may be corrected, usually within a month, and accorded a filing date of the new petition. This initial review usually occurs within a few weeks of filing the petition.

Practice Tip

Pay particular attention to the statutory requirements, because a petitioner may be allowed to correct the petition but will be accorded a filing date of the corrected petition. This may be critical if the petitioner files close to the one-year bar date.

In addition to the statutory requirements, there are certain regulatory requirements that must also be met. In the initial review, the PTAB will also review the petition for certain regulatory requirements, including: “page limits, font size, signature, [and] identification of lead and backup counsel.” 17 If the petition is considered deficient, the petitioner will usually be given five business days to file a corrected petition and accorded the filing date of the original petition.18

The petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”19 A common way to make sure that a petitioner has presented evidence for every claim element is to use claim charts. One common petitioner mistake is to include arguments in the claim charts. The PTAB considers including arguments and claim constructions in the claim charts to be impermissible. “Explanations, characterizations, conclusions, or inferences drawn from the references are improper in a claim chart,” and “if there is any need to explain how a reference discloses or teaches a limitation, that explanation must be elsewhere in the petition.” 20 The PTAB appears to view arguments in the claim charts as an improper attempt to circumvent the double spacing and page limit requirements. However, even if the contents of the claim charts do not impact the page length, the PTAB is very strict regarding the use of claim charts. For example, any reference to legal terms such as “anticipation” or “obvious,” even in a header of the claim chart, may be considered legal analysis and deemed improper. Claim charts should only include the disclosure of the prior art, or a summary thereof, and appropriate pinpoint citations.

Practice Tip

Common errors found in petitions include: improper inclusion of arguments and/or legal analysis in claim charts; failure to include claim construction of certain claim terms; failure of exhibits to match documents listed in the exhibit list and failure to sequentially number exhibits; improper usage of margins less than one inch; failure to certify that the petitioner is not barred or estopped from requesting a review; and failure to identify related matters.21

Preliminary Strategies

In addition to the requirements of an IPR petition, a petitioner should also evaluate several strategic considerations in the initial planning stages, including how many petitions to file, when to file the petition, and what parties to involve in the proceeding. Several petitioners have filed multiple IPRs against a single patent if there are numerous challenged claims or various references under consideration. In addition, if a petitioner files an IPR well before the one-year bar date and is unsuccessful, a petitioner may file a second IPR to present additional grounds, assuming estoppel is not invoked.22

A decision denying institution of an IPR or granting institution with respect to only some of the patent’s claims may provide significant guidance for a second IPR petition. Before the IPR trial begins, the PTAB will issue a decision either granting or denying the petition. This decision includes claim constructions of significant terms and a detailed discussion regarding why the grounds have or have not been accepted. The petitioner can use this guidance to craft arguments that are more likely to succeed.23

Practice Tip

Where appropriate, consider filing an IPR well before the one-year bar date to allow for time to refile a second petition. Filing multiple petitions may allow a petitioner to challenge claims not instituted in a first PTAB decision.

When filing an IPR petition, one important consideration is identifying the real party-in-interest or privy of the petitioner. Any real party-in-interest must be disclosed, as estoppel applies to any “real party in interest or privy of the petitioner.”24 When drafting an IPR, a petitioner should consider the involvement of parties in the proceeding, because any party with sufficient control or monetary investment in the proceeding will most likely be considered a real party-in-interest or privy of the petitioner.25 In some cases, it might make sense for various defendants to pool their resources and file a joint IPR in which multiple defendants are named real parties-in-interest. However, petitioners should consider that an IPR will be barred if “the petitioner, real party in interest, or privy of the petitioner” is served a complaint more than one year before the filing date of a petition. 26

In addition to the requirements to consider during initial planning, there are several factors relating to the substance of a petition that play an important role in the outcome of an IPR proceeding.

Claim Construction

Claim construction is required to be included in the petition by 35 C.F.R. § 42.104(b)(3) and can be the key to a successful IPR proceeding. Although the Office Patent Trial Practice Guide27 recites that “it may be sufficient for a party to provide a simple statement that the claim terms are to be given their broadest reasonable interpretation, as understood by one of ordinary skill in the art and consistent with the disclosure,” the petition should provide a construction for at least one term key, and preferably provide constructions for any terms that the petitioner believes are likely to be disputed by the patent owner. Claim construction is such a focus of the PTAB that decisions often include constructions for terms that are not disputed by either party.28

Broadest Reasonable Interpretation

The IPR rules provide that “[a] claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification in which it appears.”29 Claim terms construed using the broadest reasonable interpretation (BRI) are given their “ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure.”30 The BRI standard looks to any definitions provided in the specification and considers both the specification and the prosecution history to determine if “the patentee disavows the full scope of the claim term.”31

The appropriateness of using the BRI standard is currently being challenged by the losing patent owner in Versata Development Group, Inc. v. SAP America, Inc.32 A group of corporations including 3M, General Electric, and Procter & Gamble filed a joint amicus brief challenging the PTAB’s use of this standard in post-grant proceedings. Moreover, the now withdrawn anti-patent troll patent reform bill entitled the Innovation Act (H.R. 3309), which was passed by the House of Representatives in December 2013, would have changed the claim construction standard in post-grant proceeding to the Phillips standard.33

In an IPR of an expired patent, however, the claims are construed using the Phillips standard. Under this standard, claim terms “generally are given their ordinary and customary meaning, as understood by a person of ordinary skill in the art, at the time of the invention, taking into consideration the language of the claims, the specification, and the prosecution history of record because the expired claims are not subject to amendment.”34

Although these standards are different, for many patents they most likely will result in the same construction. In practice, inter partes tribunals applying both the BRI and Phillips standards focus on determining the ordinary and customary meaning of the claim term consistent with its use in the specification and prosecution. In Cisco Systems, Inc. v. AIP Acquisition, LLC, the PTAB initially provided claim constructions based on the BRI standard.35 However, during a conference call, the PTAB determined that the patent at issue is likely to expire before a final decision is rendered. After both parties agreed that the patent will expire before the final decision, the PTAB sent an order commenting that the previous constructions under the BRI standard are not changed even though the claims are properly construed using the Phillips standard. The PTAB did note that, unlike a district court proceeding, the claims in the IPR will not be construed in a manner that preserves their validity.36

Dictionary definitions should be included in the petition for claim terms that may be disputed. Definitions are objective evidence of a claim term’s meaning, and the PTAB often refers to them in its decisions. For example, in Xilinx, Inc. v. Intellectual Ventures I LLC, the PTAB commented that the specification did not “shed much light on the meaning of ‘light-shutter matrix system,’” and therefore looked to the definitions of “shutter” and “matrix.”37

PTAB final decisions using the BRI standard have provided constructions that are broad, but “reasonable . . . in light of the specification” such that they are not overly broad. Potential petitioners should carefully consider the specification and even the file history when deciding what claim construction to propose, regardless of which standard is used. In Berk-Tek, LLC v. Belden Inc., the PTAB construed “a plurality of transmission media,” which are passed with a core through a first die, bunched with the core using a second die, and twisted with the core, to require that all of the transmission media closed within the cable are required to be passed, bunched, and twisted.38 The petitioner argued that the broadest reasonable interpretation would require that only two transmission media within a group be passed, bunched, and twisted, and that to construe the claim otherwise would be to read limitations from the specification into the claims.39 But the PTAB found this broader construction to be inconsistent with the context of the other claim limitations and inconsistent with the specification, in which the invention is designed to maintain a physical spacing between each of the twisted pairs.40 In Scotts Co. v. Encap LLC, the PTAB looked to the prosecution history to determine the meaning of the limitation “in a solid state at the time of coating.”41 Because the patent owner had added this limitation to overcome a reference that disclosed 0.1 to 2.5 percent solids at the time of coating, the PTAB construed “in a solid state” to require that more than 2.5 percent of the soil conditioning material be in a solid state at the time of coating.42

Practice Tip

The claim construction section of an IPR petition should take into account the patent’s specification and any available dictionary definitions of key terms. Claim constructions should also be consistent with the patent’s prosecution history.

Claim Construction Strategies

A petitioner will rarely find a prior art reference that is very similar to the disclosure in the specification of the patent at issue in all relevant aspects. Therefore, a potential petitioner often must rely on prior art having a disclosure that is not so similar to that of the examples provided in the patent. In these situations, a determination of whether the claims can be construed broadly enough to read on the presented prior art will become a key issue. If any feature of the prior art is more similar to the accused product than to the embodiment disclosed in the patent, then there is a risk in presenting a broad claim construction. For example, take a hypothetical claim reciting: “A food item, comprising a fruit and a cheese.” Assume that:

  • The patent’s specification discloses only one embodiment, melon, and mozzarella.
  • The accused product is tomato and mozzarella.
  • The prior art is tomato and dairy cream sauce.

The IPR petitioner would need to argue that a “fruit,” in the context of the specification, is broad enough to read on a tomato. If the PTAB finds that the tomato is a “fruit” and that the dairy cream sauce is a “cheese,” the claim will be unpatentable, a great result for the petitioner. And if the PTAB finds that the tomato is not a “fruit” for culinary purposes, that’s also a good result for noninfringement purposes. A district court will give some weight to the PTAB’s claim construction, and the district court’s construction based on the Phillips standard is unlikely to be broader than the PTAB’s construction based on the BRI standard. However, if the PTAB finds that a tomato is a “fruit,” but that dairy cream sauce is not a “cheese,” the result will be very negative for the petitioner. Not only will the petitioner lose the IPR, but there will be a record of a negative claim construction of the term “fruit,” albeit a claim construction based on the BRI standard (and not the Phillips standard).

Practice Tip

When preparing the petition, always carefully consider the consequences different claim construction results can have on underlying district court litigation.

Means-Plus-Function Issues

The IPR petition must include a claim construction for each limitation governed by pre-AIA 35 U.S.C. § 112, paragraph 6 (AIA 35 U.S.C. § 112(f)). Because the scope of a means-plus-function limitation is the corresponding structure and equivalents, the construction in the IPR petition must “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”43 Practitioners ignore this rule at their own peril because the PTAB will likely deny the IPR request if the claim construction of a means-plus-function element does not identify the corresponding structures.44

Practice Tip

Consider whether an IPR is appropriate for a means-plus-function claim. Features in the prior art that are asserted as meeting a means-plus-function limitation must be the same as or equivalent to the corresponding structure in the specification.

Also consider that for computer-implemented means-plus-function limitations, the corresponding structure is likely to be an algorithm.45 An IPR petition should not be filed if the petitioner believes that the specification does not disclose any structure or algorithm corresponding to the means-plus-function limitation. For example, in Blackberry Corp. v. MobileMedia Ideas, LLC, the PTAB terminated the IPR proceeding because the specification failed to specify any structure or algorithm corresponding to a means-plus-function limitation.46

Grounds Presented

With the length of the IPR petition limited, a petitioner must often carefully choose which grounds to present in the petition. Moreover, if too many grounds are presented, the PTAB is likely to reduce the number of grounds that are considered. Less than two months after IPRs and transitional covered business method (CBM) reviews became available, the PTAB issued an order explaining that multiple grounds for unpatentability for the same claim would not be considered unless the petition explains the relative strengths and weaknesses of each ground.47 The PTAB characterized the issues as “horizontal redundancy,” i.e., multiple references used as alternatives, and “vertical redundancy,” i.e., a full combination of the references and a subcombination of references.48 The PTAB generally will not consider more than a few grounds for each claim of a patent.

If the petition includes too many grounds without explaining the relative strengths and weaknesses of each ground, the PTAB may not appreciate which grounds are stronger and just select the first presented ground. There is the possibility that the PTAB might institute an IPR only for grounds that the petitioner believes are weaker, while characterizing the other grounds as redundant. And if that occurs, the petitioner is out of luck. The PTAB requires that any discussion of strengths and weaknesses be provided in the petition and will not entertain new arguments in a request for reconsideration.49

Practice Tip

Petitioners should critically analyze grounds presented and avoid putting weak arguments in the petition. While a petitioner should always put strongest arguments first, the PTAB could still institute a ground that the petitioner considers to be weaker.

In addition to explaining the relative strengths and weaknesses of multiple grounds, petitioners should present their strongest arguments first to increase the odds that the strongest arguments are accepted, even if the argument is based on obviousness. The PTAB is comfortable with obviousness grounds based on combining multiple references as long as there are objective reasons to combine the references in a manner that would meet the claim. For example, in Garmin International, Inc. v. Cuozzo Speed Technologies LLC, the PTAB found the instituted claims obvious over different multi-reference combinations, including a four-reference combination.50

Expert Declarations

An IPR petition is not required to be supported by an expert; however, depending on the nature of an IPR, an expert declaration may contribute to its success. For example, an expert declaration may be important for claim construction and obviousness issues. Specifically, as “a person of ordinary skill in the art,” oftentimes an expert may provide persuasive reasoning for an obviousness rationale. If a ground combines two prior art references, an expert may be able to provide beneficial reasoning that it would have been obvious to one of ordinary skill in the art to combine the two references.

A petitioner should note, however, that an expert declaration should include “data and calculations that underlie [the expert’s] opinions.”51 An expert opinion without supporting facts may be given little weight. To support an expert’s analysis, the expert may consider citing to textbook references, modeling, and any calculations, analysis, or other references relied on in forming the expert’s opinion.

Practice Tip

Use experts wisely and include detailed factual support that underlies the expert’s conclusions.

Conclusion

From the above, a petitioner can discern that IPR practice favors a highly prepared petitioner who has carefully thought about these considerations and who has crafted the best case in the petition. The IPR is relatively new and presents a changing landscape. The case law grows weekly, and the practice tips discussed herein will grow more refined and nuanced over time.

Endnotes

1. See 35 U.S.C. § 315(a)(1).

2. Id.. § 315(a)(3).

3. Id. § 315(a)(2).

4. See Ariosa Diagnostics v. Isis Innovation Ltd., No. IPR2012-00022, at 8 (P.T.A.B. Feb. 12, 2013), Paper No. 20.

5. 35 U.S.C. § 311(c).

6. Id. § 315(b).

7. See Accord Healthcare, Inc. v. Eli Lilly & Co., No. IPR2013-00356, at 3 (P.T.A.B. Oct. 1, 2013), Paper No. 13 (holding that “[t]he plain language of the statute does not indicate or suggest that the filing of a later lawsuit renders the service of a complaint in an earlier lawsuit a nullity”); Universal Remote Control, Inc. v. Universal Elecs., Inc., No. IPR2013-00168 (P.T.A.B. Aug. 26, 2013), Paper No. 9.

8. See 35 U.S.C. § 315(b)-(c); 37 C.F.R. § 42.122(b).

9. See Dell Inc. v. Network-1 Sec. Solutions, Inc., No. IPR2013-00385, at 7-8 (P.T.A.B. July 29, 2013), Paper No. 17 (permitting Dell to join an IPR petition filed by Avaya Inc. even though the one-year bar date had already passed for Dell because Dell asserted the same ground of unpatentability with the same prior art references).

10. Id.

11. See Patent Review Processing System (PRPS) Frequently Asked Questions (FAQ), U.S. Pat. & Trademark Off., E6, http://www.uspto.gov/ip/boards/bpai/prps.jsp (lasted modified Aug. 11, 2014) [hereinafter PRPS FAQ]. The institution fee will be refunded if the IPR is not instituted. Id. at E7.

12. 35 U.S.C. § 315(e).

13. Id. § 314(a).

14. Id. § 315(e).

15. See PRPS FAQ, supra note 11, D3.

16. 35 U.S.C. § 312(a).

17. See PRPS FAQ, supra note 11, D3; 37 C.F.R. §§ 42.6, 42.8, 42.22, 42.24.

18. Id.

19. 37 C.F.R. § 42.104(b)(4).

20. Id. (holding that the second petition was not duplicative because the petitioner relied on two additional references that were previously not raised with respect to certain claims).

21. See PRPS FAQ, supra note 11, D10.

22. See Garmin Int’l, Inc. v. Cuozzo Speed Techs., LLC, No. IPR2013-00373, at 28 (P.T.A.B. Dec. 18, 2013), Paper No. 12.

23. Id. (holding that the second petition was not duplicative because the petitioner relied on two additional references that were previously not raised with respect to certain claims where the claims reviewed in the second petition were not subject to the first IPR); Garmin Int’l, Inc. v. Cuozzo Speed Techs., LLC, No. IPR 2012-00001 (P.T.A.B. Jan. 9, 2013), Paper No. 15.

24. See 35 U.S.C. § 315(e); 37 C.F.R. § 42.8(b)(1).

25. Generally, codefendants or concurrent defendants in litigation are not real parties-in-interest unless evidence of guiding or controlling IPR. Denso Corp. v. Beacon Navigation GmbH, No. IPR2013-00026, at 11 (P.T.A.B. Mar. 4, 2014), Paper No. 34 (holding that codefendants were not real parties-in-interest because there was no evidence that “the alleged additional real parties-in-interest have engaged in strategic planning, preparation, and review of the Petition”).

26. 35 U.S.C. § 315(b).

27. 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).

28. See, e.g., Harmonic, Inc. v. Avid Tech., Inc., No. IPR2013-00252, at 10 (P.T.A.B. July 10, 2014), Paper No. 27 (construing the phrase “a predefined period of time” even though neither the petitioner nor the patent owner provided a construction for this phrase).

29. 37 C.F.R. § 42.100(b) (emphasis added).

30. Redline Detection, LLC v. Star Envirotech, Inc., No. IPR2013-00106, at 8 (P.T.A.B. June 30, 2014), Paper No. 66 (citing In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)); Scotts Co. v. Encap LLC, No. IPR2013-00110, at 9 (P.T.A.B. June 24, 2014), Paper No. 79 (same).

31. Scotts Co., No. IPR2013-00110, Paper No. 79, at 9.

32. No. 2014-1194 (Fed. Cir. 2014).

33. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

34. Panel Claw, Inc. v. Sunpower Corp., No. IPR2014-00386, at 7 (P.T.A.B. June 30, 2014), Paper No. 7 (citing Phillips, 415 F.3d at 1312–13).

35. No. IPR2014-00247 (P.T.A.B. May 27, 2014), Paper No. 14.

36. Cisco Sys., Inc. v. AIP Acquisition, LLC, No. IPR2014-00247, at 3 (P.T.A.B. July 10, 2014), Paper No. 20.

37. No. IPR2013-00112, at 9–10 (P.T.A.B. June 26, 2014), Paper No. 51.

38. No. IPR2013-00057, at 9–13 (P.T.A.B. Mar. 18, 2014), Paper No. 46.

39. Id. at 10.

40. Id. at 11–13.

41. No. IPR2013-00110 (P.T.A.B. June 24, 2014), Paper No. 79.

42. Id. at 14–16.

43. 47 C.F.R. § 42.104(b)(3).

44. See, e.g., Gracenote, Inc. v. Iceberg Indus. LLC, No. IPR2013-00551, at 44 (P.T.A.B. Feb. 28, 2014), Paper No. 6.

45. Id. at 16, 19 (citing Aristocrat Tech. Austl. Pty. Ltd. v Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)).

46. No. IPR2013-00036 (P.T.A.B. Mar. 7, 2014), Paper No. 65.

47. See Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., No. CBM2012-00003 (P.T.A.B. Oct. 25, 2012), Paper No. 7.

48. Id. at 3.

49. See, e.g., Rackspace US, Inc. v. PersonalWeb Techs., LLC, No. IPR2014-00062, at 4 (P.T.A.B. July 2, 2014), Paper No. 19 (noting “we could not have misapprehended or overlooked an argument that was not presented in the first instance in the petition”).

50. No. IPR2012-00001 (P.T.A.B. Mar. 5, 2013), Paper No. 59.

51. Monsanto Co. v. Pioneer Hi-Bred Int’l, Inc., No. IPR2013-00022, at 6 (P.T.A.B. Apr. 11, 2013), Paper No. 43 (noting that the expert failed to provide sufficient underlying data such that one of ordinary skill in the art would have a reasonable basis to believe that his calculations and conclusions were correct).