In addition to the requirements of §§ 42.6, 42.8, 42.22, and 42.24, the petition must set forth:
(a) Grounds for standing. The petitioner must certify that the patent for which review is sought is available for inter partes review and that the petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in the petition.
(b) Identification of challenge. Provide a statement of the precise relief requested for each claim challenged. The statement must identify the following:
(1) The claim;
(2) The specific statutory grounds under 35 U.S.C. 102 or 103 on which the challenge to the claim is based and the patents or printed publications relied upon for each ground;
(3) How the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function;
(4) How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and
(5) The exhibit number of the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.
(c) A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition.
Notes of Decisions
Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015).
· cites it 3× “” 37 C.F.R. § 42.104 (b)(5). In the present case, other than stating that massively parallel sequencing was known by 2008; the Petitions and supporting declarations say little about the relevance of Exhibit 1010, such as how a skilled artisan would have used what it showed about…”
In Re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016).
“368 (quoting 37 C.F.R. § 42.104 (b)(4)). Magnum also contended that McClinton’s Petition and expert declaration focused on explaining how a skilled artisan might have modified Alpha in view of Cockrell and Kristiansen, but failed to *1373 describe how a skilled artisan would…”
Saint Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322 (Fed. Cir. 2018).
· cites it 2× “4, 2014) (citing 37 C.F.R. § 42.104 (c)). At the same time, a patent owner in IPR may seek to amend its patent claims during the proceedings, an option not available in civil litigation.”
Yeda Rsch. & Dev. v. Mylan Pharm. Inc., 906 F.3d 1031 (Fed. Cir. 2018).
“See 37 C.F.R. § 42.104 (b) (describing the content of the petition, including both "the patents or printed publications relied upon for each ground," and "supporting evidence relied upon to support the challenge").”
Prolitec, Inc. v. Scentair Tech., Inc., 807 F.3d 1353 (Fed. Cir. 2015).
· cites it 2× “” 37 C.F.R. § 42.104 (b)(2). Prolitec moved to amend by replacing claim 1 with claim 3, which replaced the term “mounted” with the term “permanently joined.”
Uusi, LLC v. United States, 131 Fed. Cl. 244 (Fed. Cl. 2017).
“In addition, during the institution phase, the patent owner is not required to respond to the petitioner's allegations, and any factual dispute raised by a patent owner is viewed in a light most favorable to the petitioner. See 37 C.F.R. §§ 42.107 (a), 42.”
Mayne Pharma Int'l Pty v. Merck Sharp & Dohme Corp., 927 F.3d 1232 (Fed. Cir. 2019).
“104(c), which permits amendments for clerical or typographical mistakes, provides the only avenue for amending a petition without impacting its filing date and contests the Board's use of the late action rule in § 42.”
Intel Corp. v. Alacritech, Inc. (Fed. Cir. 2020).
· cites it 3× “6 Instead, the Board held that Appellants failed to propose a construction identifying the structure for the claimed func- tion as required under 37 C.F.R. §§ 42.104 (b)(3)–(4) and therefore failed to prove that claims 31–33 are 5 In view of the Board’s characterization of the…”
Masimo Corp. v. Sotera Wireless, Inc. (Fed. Cir. 2023).
· cites it 3× “B Masimo’s second claim construction argument presents an issue about whether Sotera complied with 37 C.F.R. § 42.104 (b). We review decisions related to compliance with the Board’s procedural requirements for abuse of dis- cretion.”
Samsung Elec. Am. v. Prisua Eng'g Corp. (Fed. Cir. 2020).
· cites it 2× “The Board also concluded that the “digital processing unit” limitation in claim 1 “invoke[d] § 112, sixth paragraph” and that the petition failed to iden- tify any corresponding structure, as required by section 112 and the pertinent PTO regulation, 37 C.F.R. § 42.104 (b)(3).…”
— 37 C.F.R. § 42.104(b)(2) — 1 case
Uusi, LLC v. United States, 131 Fed. Cl. 244 (Fed. Cl. 2017).
“In addition, during the institution phase, the patent owner is not required to respond to the petitioner's allegations, and any factual dispute raised by a patent owner is viewed in a light most favorable to the petitioner. See 37 C.F.R. §§ 42.107 (a), 42.”
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