In two related final written decisions, the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB or Board) invalidated numerous claims across two separate patents after the patent owner decided to not file a preliminary response to the inter partes review (IPR) petitions. Librestream Technologies, Inc. v. Thomason, Case Nos. IPR2014-00368 (Paper 17);-00369 (Paper 18), (PTAB, Jan. 4, 2014) (Droesch, APJ).

The patents at issue relate generally to remote assistance by a technician or technicians of a wireless system. The petitioner filed two petitions for inter partes review of the patents, asserting that several of the patented claims were invalid as obvious over the prior art.

The IPR petitions were initially filed against Wireless Remote Systems LLC, the patent owner prior to October 1, 2014 (the patents were assigned to a third party after institution). Following institution, the parties unsuccessfully attempted to reach a settlement. As a result of the failed negotiations, the patent owner indicated that it would be unable to file a patent owner’s response by the due date. The PTAB extended the date for the patent owner to file, but ultimately counsel for Wireless Remote Systems affirmatively notified the PTAB that they would not file a response. Wireless Remote Systems confirmed this decision in a subsequent conference call with the PTAB.

In its final written decisions, the PTAB stressed that “[t]o prevail on its challenges to the patentability of the claims, Petitioner must prove unpatentability by a preponderance of the evidence.” Given that the patent owner declined to file a response, the PTAB was ultimately left with only the petitioner’s arguments to analyze in determining whether the petitioner had met its burden of proof.

For each claim analysis performed by the PTAB, there were of course no patent owner’s arguments to rebut positions taken by the Petitioner.  Thus, the PTAB predictably determined that “[u]pon consideration of Petitioner’s position and evidence proffered in support of its position,” that the petitioner had shown by a preponderance of the evidence that the challenged claims were unpatentable as obvious over the prior art.

Practice Note:  If a patent owner wants its patent to survive inter partes review, it cannot rely on the PTAB to generate rebuttal arguments to the evidence and arguments presented by the petitioner.