37 C.F.R. § 42.107
Preliminary response to petition
(a) The patent owner may file a preliminary response to the petition. The response is limited to setting forth the reasons why no inter partes review should be instituted under 35 U.S.C. 314 and can include supporting evidence. The preliminary response is subject to the word count under § 42.24.
(b) Due date. The preliminary response must be filed no later than three months after the date of a notice indicating that the request to institute an inter partes review has been granted a filing date. A patent owner may expedite the proceeding by filing an election to waive the patent owner preliminary response.
(c) [Reserved]
(d) No amendment. The preliminary response shall not include any amendment.
(e) Disclaim Patent Claims. The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.
Notes of Decisions
Cited in 31
cases (12 in the last 5 years), 2013–2025 · leading case: Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018).
Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018). “On July 22, 2016, Arthrex disclaimed claims 1–9 of the ’541 patent as permitted under 37 C.F.R. § 42.107 (e). Arthrex then filed a Preliminary Response, arguing that an IPR should not be instituted because 37 C.”
Ethicon Endo-Surgery, Inc. v. Covidien Lp, 812 F.3d 1023 (Fed. Cir. 2016). “37 C.F.R. § 42.107 (c). Thus the statutory structure favors institution, for the overarching purpose is to provide a forum for early, expeditious review of granted patents.”
Regents of the Univ. of Minn. v. Lsi Corp., 926 F.3d 1327 (Fed. Cir. 2019). “§ 313 ; 37 C.F.R. § 42.107 (a). If the Director of the USPTO, a politically accountable executive officer, 13 determines that the appropriately filed petition "shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims…”
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015). “37 C.F.R. §§ 42.107 (a), 42.120(a). And they allow the petitioner to reply to the patent owner’s post-institution response, but declare that the “reply may only respond to arguments raised in the corresponding opposition or patent owner response.”
Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990 (Fed. Cir. 2023). “See 37 C.F.R. § 42.107 (a). Thereaf- ter, the Board makes a decision whether to institute the requested IPR, based on whether it finds, as a preliminary matter, a reasonable likelihood the petitioner will succeed.”
Nobel Biocare Servs. Ag v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018). “108 (a) ; 37 C.F.R. § 42.107 (e) ("The patent owner may file a statutory disclaimer under 35 U.”
Universal Elec., Inc. v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028 (C.D. Cal. 2013). “§ 313 ; 37 C.F.R. § 42.107 (b). Within three months of the time set for the patent owner’s response, the PTO will grant the inter partes review request if “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in…”
Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021). “See 37 C.F.R. § 42.107 (e). 2 Citations to briefs and the joint appendix refer to submissions in the Apple Inc.”
Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334 (Fed. Cir. 2020). “37 C.F.R. §§ 42.107 (a) (pre-institution, “[t]he patent owner may file a preliminary response to the petition” (emphasis added)), 42.”
Uusi, LLC v. United States, 131 Fed. Cl. 244 (Fed. Cl. 2017). “See 37 C.F.R. §§ 42.107 (a), 42.108 ("The Board’s [institution] decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will…”
Milwaukee Elec. Tool Corp. v. Hilti, Inc., 138 F. Supp. 3d 1032 (E.D. Wis. 2015). “37 C.F.R. § 42.107 (a)-(b). The USPTO must decide whether to institute IPR "within three months of the patent owner’s preliminary response, or, in the event no response is filed, by the last date on which the response could- have been filed.”
Ultratec, Inc. v. Sorenson Commc'ns, Inc., 45 F. Supp. 3d 881 (W.D. Wis. 2014). “§ 313 ; 37 C.F.R. § 42.107 (patentee may but is not required to file preliminary response to petition and can expedite the proceeding by electing to waive preliminary response).”
— 37 C.F.R. § 42.107(b) — 1 case
NST Global, LLC, d/b/a SB Tactical v. SIG Sauer Inc., 2020 DNH 044 (D.N.H. 2019).
Annotations are extracted automatically from the opinions in the
Syfert caselaw corpus and ranked by authority, recency, and
treatment. Dots show Syfertize treatment of the citing case itself.