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The Patent Trial and Appeal Board Requires A Patent Owner’s Challenge on The Petitioner’s Standing to be Raised in the Patent Owner’s Preliminary Response

In IPR2012-00022, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Tierney, Green and Robertson) issued a decision rejecting the Patent Owner Isis Innovation Limited’s (“Patent Owner”) motion for leave to challenge petitioner Arisoa Diagnostics’ (“Petitioner”) standing to file the petition for inter partes review. According to the Patent Owner, the Petitioner lacks standing because it raised the affirmative defense of invalidity as an affirmative defense to the Patent Owner’s counterclaim for infringement of the asserted patent in a Declaratory Judgment Action filed by the Petitioner seeking a declaration of non-infringement in the Northern District of California, Case No. 3:11-cv-06391.

The Patent Owner argued that allowing the Petitioner to file an inter partes review under such circumstances would violate Section 315(a)’s prohibition against filing an IPR when a petitioner has filed a civil action challenging the validity of a claim of the asserted patent before filing the petition for inter partes review. While Section 315(a)(3) provides an exception to this rule in the circumstance when the petitioner’s challenge to the patent’s validity is in the form of a counterclaim in a suit initiated by the patent owner, the Patent Owner argues that this exception does not apply to the circumstances present here.

Without addressing the merits, the PTAB held that such arguments challenging the standing should be raised in the Patent Owner’s Preliminary Response.

The Patent Owner also sought to strike portions of the petition that discuss the subject matter eligibility of the claims under Section 101 in light of the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). Under Section 311, inter partes review is limited to prior art issues under Sections 102 and 103.

Again, the PTAB declined to address the merits of the Patent Owner’s arguments and held that such arguments should be raised in the Patent Owner’s Preliminary Response.

In response to issues raised about the entry of a protective order, the Board requested that the parties “identify the differences between the proposed protective order and the default protective order” in a request for a protective order that deviates from the Board’s default protective order.

Finally, the Board clarified that the page limitation for the Patent Owner’s Preliminary Response is not limited to the actual number of pages in the petition and that the Patent Owner is entitled to the full 60 pages.


This decision addresses several procedural issues regarding inter partes review before the PTAB. The Board appears to prefer to have the patent owner’s challenges to standing and the propriety of invalidity arguments set forth in the Patent Owner’s Preliminary Response. It will be interesting to see the Board’s response to the substantive issues raised by the Patent Owner.

Ariosa Diagnostics v. Isis Innovation Limited, Case IPR2012-00022 (JL) (November 20, 2012), Paper 14.

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or