C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart B—Inter Partes Review

37 C.F.R. § 42.120

Patent owner response

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(a) Scope. A patent owner may file a single response to the petition and/or decision on institution. A patent owner response is filed as an opposition and is subject to the page limits provided in § 42.24.

(b) Due date for response. If no time for filing a patent owner response to a petition is provided in a Board order, the default date for filing a patent owner response is three months from the date the inter partes review was instituted.

[77 FR 48727, Aug. 14, 2012, as amended at 85 FR 79129, Dec. 9, 2020]
Notes of Decisions
Cited in 11 cases (4 in the last 5 years), 2016–2023 · leading case: Cuozzo Speed Tech., LLC v. Lee, 195 L. Ed. 2d 423 (2016).
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Cuozzo Speed Tech., LLC v. Lee, 195 L. Ed. 2d 423 (2016). · cites it 2× “See §316(a)(8); 37 CFR §42.120 . Thus, if a petition fails to state its challenge with particularity—or if the Patent Office institutes review on claims or grounds not raised in the petition—the patent owner is forced to shoot into the dark.”
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). · cites it 2× “§ 316 (a)(8); 37 C.F.R. § 42.120 . In addition, both parties may submit information to supplement the record by taking discovery, submitting affidavits, and by submitting expert declara- tions.”
Dell Inc. v. Acceleron, LLC., 818 F.3d 1293 (Fed. Cir. 2016). “Acceleron submitted its post-institution “patent owner response,’’ as expressly authorized by 37 C.F.R. § 42.120 , arguing the validity of the claims at issue.”
PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815 F.3d 734 (Fed. Cir. 2016). “§ 316 (a)(5); 37 C.F.R. § 42.120 . If the pat-entee files a response, the petitioner is permitted discovery, including depositions.”
Regents of the Univ. of Minn. v. Lsi Corp., 926 F.3d 1327 (Fed. Cir. 2019). “§ 316 (a)(8) (requiring regulation "providing for the filing by the patent owner of a response to the petition"); 37 C.F.R. § 42.120 ("A patent owner may file a response to the petition .”
Pride Mobility Prods. Corp. v. Permobil, Inc., 818 F.3d 1307 (Fed. Cir. 2016). “Pride Mobility filed responses as authorized by 37 C.F.R. § 42.120 , In reliance on a declaration from its expert, Dr.”
In Re Ipr Licensing, Inc., 942 F.3d 1363 (Fed. Cir. 2019). “37 C.F.R. § 42.120 (“A patent owner may file a response to the petition addressing any ground for unpatentability not already denied.”
Rembrandt Diagnostics, Lp v. Alere, Inc., 76 F.4th 1376 (Fed. Cir. 2023). “§ 316 (a)(8); 37 C.F.R. § 42.120 . In reply, the petitioner may “only respond to arguments raised in the corresponding opposition, patent owner pre- liminary response, patent owner response, or decision on institution.”
Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023). “Parus also points out that patent owners are not required to file a response, citing 37 C.F.R. § 42.120 (a). It is true that patent owners have no requirement to respond to petitions.”
Parus Holdings, Inc. v. Google LLC (Fed. Cir. 2023). “Parus also points out that patent owners are not required to file a response, citing 37 C.F.R. § 42.120 (a). It is true that patent owners have no requirement to respond to petitions.”
Rembrandt Diagnostics, Lp v. Alere, Inc. (Fed. Cir. 2023). “§ 316 (a)(8); 37 C.F.R. § 42.120 . In reply, the petitioner may “only respond to arguments raised in the corresponding opposition, patent owner pre- liminary response, patent owner response, or decision on institution.”
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