PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence, PTAB Litigation Blog

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It is no secret that the Patent Trial and Appeal Board (PTAB) often leverages its discretionary denial powers to deny inter parties review (IPR) petitions.  The PTAB has discretionarily denied IPR petitions, for example, due to parallel district court scheduled trialsdistrict court findings of indefiniteness, and overbroad challenges.  Typically, in these cases, the Patent Owner rebuts some of the Petitioner’s evidence of invalidity.  But what happens when the Patent Owner decides not to rebut Petitioner’s evidence at all?  In reviewing IPR institution decisions, the PTAB often substitutes its own technical analysis to refute Petitioner’s evidence.  Yet, when it comes to final decisions—post-institution—the Federal Circuit has found that absent Patent Owner rebuttal evidence, Petitioner’s evidence is substantial evidence sufficient for prevailing on the merits.  This begs the question—why is Petitioner’s unrebutted evidence insufficient to prove a reasonable likelihood of prevailing on the merits for an institution decision?

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