Lawyers generally do not like to lay out their entire case at the outset of litigation. They like to hold back some arguments to see how their adversary responds. Yet a PTAB trial proceeding is one place where doing anything less than a full reveal could prove fatal.
The Petition is the one and only shot the Petitioner has at making the case for unpatentability. The fast-paced, multi-stage see-saw procedure that the PTAB uses for IPR sometimes obscures this basic fact. But the Petitioner who fails to appreciate it may face dire consequences for not laying out its full case in the Petition. Hence the central quirk of PTAB litigation: the Petitioner’s case doesn’t begin with the Petition: rather, it ends with the Petition.
The Petitioner must seize and exploit its one opportunity to shape the proceeding in the Petition. That means identifying and decisively dealing with every possible issue right up front in the Petition. Shore up weaknesses in the prior art with expert testimony. Address the rationale to combine references with a compelling story in which the expert weaves together strands of knowledge existing at the time of invention. View the Petition not so much as a piece of advocacy as an opportunity to draft the opinion you’d like to see the Board adopt in its final written decision. Crafting the Petition with that goal in mind is the surest path to success.