First Design Patent Owner Preliminary Response Filed in ATAS v. Centria

July 29th, 2013

IPR2013-00259 of D527,834 for a “Building Panel”

On July 24, 2013 the patent owner in IPR2013-00259, Centria, filed the first preliminary response in an inter partes review (IPR) of a design patent. In an IPR proceeding, the patent owner is afforded an opportunity to file a preliminary response to the petition before the Board decides whether or not to institute trial. 35 U.S.C. § 313; 37 C.F.R. § 42.107. The Board may only institute trial where the petitioner establishes a “reasonable likelihood” of prevailing with respect to at least one claim challenged in the petition. 35 U.S.C. § 314(a). The Board may not authorize trial where the information presented in the petition, taking into account any patent owner preliminary response, fails to meet this standard.

In general, the preliminary response is due within three months of the notice of a filing date and the Board is required to issue its decision on institution three months after receiving the patent owner’s preliminary response. 35 U.S.C. § 314(b)(1). There have been 234 patent owner preliminary responses submitted in the total of 382 petitions for inter partes review filed to date. Where a patent owner seeks to “expedite” the proceeding, they may file an election to waive the patent owner preliminary response. 37 C.F.R. § 42.107(b). To date, only 5 waivers of the patent owner preliminary response have been filed. The preliminary response may present evidence other than new testimonial evidence to demonstrate that no review should be instituted. 37 C.F.R. § 42.107(c). The limitation on “new testimonial evidence” may be waived where a party demonstrates that such evidence is in the interests of justice—e.g., addressing issues relating to petitioner standing.

Preliminary responses typically include assertions that (1) the petitioner is statutorily barred from pursuing a review; (2) the references asserted to establish that the claims are unpatentable are not in fact prior art; (3) the prior art lacks a material limitation in all of the independent claims; (4) the prior art teaches or suggests away from a combination that the petitioner is advocating; and (5) the petitioner’s claim interpretation for the challenged claims is unreasonable. A patent owner may also file a statutory disclaimer of one or more challenged claims to streamline the proceedings. Where no challenged claims remain, the Board has stated that it will terminate the proceeding. Where one or more challenged claims remain, the Board’s decision on institution would be based solely on the remaining claims. 77 Fed. Reg. 48764-65.

In IPR2013-00259, among other assertions, Centria argues that ATAS failed to show a reasonable likelihood of success in proving invalidity on any ground raised in the petition. “At issue in this proceeding is whether ATAS has proven there is a reasonable likelihood that the claimed design of the ‘834 Patent is invalid for anticipation under 35 U.S.C. § 102 or obviousness under 35 U.S.C. § 103.” (IPR2013-00259, Patent Owner Preliminary Response, Paper No. 10, p. 13-14). In support of the relevant standard, ATAS cites Munchkin, Inc. v. Luv’n Care, Ltd, IPR2013-00072, Decision Instituting Trial, Paper No. 8 (April 25, 2013).

For more information, please contact Sterne Kessler Directors Tracy Durkin ( or Mark Rygiel (