By Mike Lavine and Matt Johnson

On September 6, 2019, a PTAB panel including USPTO Director Andrei Iancu instituted inter partes review (“IPR”) of U.S. Patent No. 9,279,259 (“the ‘259 Patent”).  The ‘259 Patent is directed to a tile lippage removal system and is owned by Russo Trading Company Inc. (“Russo”).

Donnelly Distribution LLC and Raimondi S.P.A. (“Petitioner”) filed an IPR petition challenging two claims of the ‘259 Patent after Russo asserted it against Donnelly in Russo Trading Company, Inc., v. Donnelly Distribution LLC, No. 18-CF-1851-JPS (E.D. Wis.).  Petitioner argued that the two claims were obvious over three combinations of prior art references which, like the ‘259 Patent, were all directed to tile leveling and tile placement systems.  Petitioner also proposed constructions for several claims terms.  Russo did not file a preliminary response to the petition.

In a 32-page decision thoroughly addressing the prior art, the PTAB found that Petitioner had demonstrated a reasonable likelihood that the challenged claims were obvious over the prior art combinations.  The PTAB however declined to construe any claim terms, but informed the parties that they are expected to assert all of their claim construction arguments during trial.

Takeaway: Leaving an IPR petition unchallenged at the preliminary response stage can be detrimental for a Patent Owner.  In addition to increasing the chance of IPR institution, foregoing a Preliminary Response also deprives the Patent Owner of feedback that the PTAB may provide in its institution decision.  This includes feedback on Petitioner arguments that the PTAB may find weak or unpersuasive, which the Patent Owner could leverage in its Patent Owner Response.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.