Petitioners often view the Petition as an opening salvo in what they expect will be a back-and-forth process. In reality, the Petitioner loses control of the proceeding after the Petition is filed. Once trial is instituted, the Patent Owner calls the shots. For example:
- The Patent Owner decides what new witness testimony to introduce and thereby limits the scope of the Petitioner’s discovery.
- The Patent Owner decides what issues to raise in the Response and thereby limits the scope of the Petitioner’s Reply.
- The Patent Owner decides what claim amendments to propose and thereby controls that portion of the proceeding.
A Patent Owner who is able to identify a material gap in the Petition evidence — and cogently expose it with well-timed rebuttal evidence — is in a good position to win the IPR, no matter how thoroughly or persuasively the Petitioner can present the missing evidence in the Reply. This is because the Board usually will disregard a Reply that presents new evidence essential to the Petitioner’s case. So the Petitioner who accidentally (or intentionally) delays developing an issue risks having the Reply ignored or discarded. A Patent Owner win at the final written decision is particularly disastrous for the Petitioner, due to the estoppel that attaches to all grounds that the Petitioner raised or reasonably could have raised during the review. Just another reason to remember that the Petitioner’s case doesn’t really just start with the Petition; it ends with it, too.