Inter Partes Review (IPR) Petition

PETITION FOR INTER PARTES REVIEW OF [PATENT NUMBER]

I. INTRODUCTION

[PETITIONER], a [entity type], respectfully requests institution of an inter partes review under 35 U.S.C. § 311 of U.S. Patent No. [PATENT NUMBER] (the "'[NUMBER] Patent"), titled "[PATENT TITLE]," issued on [ISSUE DATE] to [INVENTOR(S)].

There is a reasonable likelihood that Petitioner will prevail with respect to at least one claim of the '[NUMBER] Patent. The challenged claims are unpatentable under 35 U.S.C. § [102 or 103] in view of the prior art references identified herein.

Word Count Certification

This Petition contains [______] words, excluding the Table of Contents, caption, tables, charts, claim charts, and the word count certification itself, as permitted by 37 C.F.R. § 42.24(a)(1)(iii). The Petition does not exceed the 14,000-word limit under 37 C.F.R. § 42.24(b)(1).

II. STANDING AND REAL PARTY IN INTEREST (§ 312(a))

A. Petitioner's Standing

Petitioner is not the owner of the '[NUMBER] Patent and therefore is a person who may file a petition under 35 U.S.C. § 311(a).

B. Real Parties in Interest

Pursuant to 37 C.F.R. § 42.10(b)(1), Petitioner identifies the following real parties in interest (RPIs):

Petitioner confirms that no foreign government, foreign sovereign, or foreign state-owned entity is a petitioner or RPI in this proceeding.

III. TIMELINESS UNDER § 315(b)

A. Nine-Month Requirement (35 U.S.C. § 311(c))

The '[NUMBER] Patent issued on [ISSUE DATE]. This Petition is filed on [FILING DATE], which is [X] days/months after issuance, satisfying the nine-month threshold in 35 U.S.C. § 311(c)(1).

B. One-Year Bar (35 U.S.C. § 315(b))

Petitioner is [a defendant in / not a party to] district court litigation concerning the '[NUMBER] Patent [in [COURT/CASE]]. Service of the complaint [was / was not] made on [DATE OF SERVICE]. This Petition is filed on [FILING DATE], which is [X] days/months before the one-year deadline of [ONE-YEAR DATE], and is therefore timely under 35 U.S.C. § 315(b).

IV. DISCRETIONARY DENIAL CONSIDERATIONS

As of 2025–2026, the PTAB applies discretionary denial under the Fintiv/Sotera framework (restored in February 2025) and new discretionary factors introduced in Director Stewart's March 26, 2025 Workload Memorandum.

A. Parallel Litigation (Fintiv Factors; 35 U.S.C. § 315(b) context)

Petitioner addresses the six Fintiv factors:

1. Court stay or likelihood thereof: [No court stay is likely / The district court has stayed validity issues pending IPR resolution / etc.]
2. Proximity of trial date: The [DISTRICT/COURT] trial is scheduled for [DATE]; the PTAB statutory deadline is [DATE]. [The court trial is more than one year away / The parties have requested a stay pending IPR / etc.]
3. Court and party investment: [The parties have minimal discovery; the case is at the pleading stage / Extensive discovery is underway and trial is imminent / etc.]
4. Overlap of issues: The IPR grounds presented here [do / do not] substantially overlap with the invalidity defenses already being litigated in district court.
5. Identity of parties: [Petitioner is the district court defendant / Petitioner is not a party to the parallel suit / etc.]
6. Other circumstances: [Compelling merit strength; national security; docket management; etc.]

B. Settled Expectations

The '[NUMBER] Patent has been in force for [X] years [as of the filing date / as of issuance]. Patent Owner has [no / substantial] settled expectations in reliance on patent validity given the patent's age and [market presence / licensing history / lack thereof / etc.].

C. Prior Adjudication

[No prior PTAB or court proceeding / A prior IPR/PGR under [case number] / A prior district court validity determination] has addressed the unpatentability grounds or claims presented in this Petition.

D. Strength of Challenge; Reliance on Expert Testimony

The Petition presents [strong / moderate / etc.] unpatentability grounds resting on [documentary prior art alone / prior art plus expert testimony / etc.]. [Petitioner does not rely heavily on expert testimony / Expert testimony is provided in the Declaration of [EXPERT] to explain [technical issue] and the level of ordinary skill in the art.]

E. Compelling Economic, Public Health, or National Security Interests

[Petitioner identifies no compelling public interests / The challenged patent [blocks critical technology / relates to [national security/healthcare] / etc.], warranting institution despite discretionary factors.]

V. CHALLENGED PATENT AND CLAIMS

A. Patent Overview

B. Claim Construction

The claims of the '[NUMBER] Patent shall be construed using the ordinary and customary meaning as understood by one of ordinary skill in the art, consistent with the patent's prosecution history and any prior claim construction determinations in related proceedings, per 37 C.F.R. § 42.100(b).

C. Challenged Claims

Petitioner challenges the following claims of the '[NUMBER] Patent:

Independent Claims: [NUMBER], [NUMBER], [NUMBER]
Dependent Claims: [NUMBER] (depends from [NUMBER]), [NUMBER] (depends from [NUMBER])

Total claims challenged: [X]

VI. LEVEL OF ORDINARY SKILL IN THE ART

The level of ordinary skill in the art of [TECHNOLOGY FIELD] as of the priority/filing date would be [DESCRIPTION]. Such a person would have [EDUCATION/TRAINING/EXPERIENCE] and would understand [KEY CONCEPTS/STANDARD PRACTICES].

Expert Declaration: [EXPERT NAME], a [QUALIFICATIONS], provides expert testimony regarding the level of skill and the state of the art as of the priority date in the Declaration of [EXPERT NAME], filed contemporaneously herewith.

VII. GROUNDS FOR UNPATENTABILITY

Ground 1: Obviousness Under 35 U.S.C. § 103

Challenged Claims: [LIST CLAIMS]
Primary Reference: [REFERENCE CITATION]
Secondary Reference(s): [REFERENCE CITATIONS]

A. Claim Elements and Mapping

B. Motivation to Combine

A person of ordinary skill in the art would have been motivated to combine [PRIMARY REFERENCE] with [SECONDARY REFERENCE] because [ARTICULATED REASON]. [Common sense / market demand / known alternative / design choice / etc.] would lead a PHOSITA to combine the teachings.

C. Reasonable Expectation of Success

Given the state of the art and the level of ordinary skill, there would be a reasonable expectation of success in combining the references to achieve the claimed invention. [The results of combination are predictable / the references teach or suggest the combination leads to the claimed result / etc.]

D. Secondary Considerations (if any)

[Petitioner does not rely on secondary considerations / The following evidence of secondary considerations supports obviousness: [long-felt need / copying / commercial success / etc.]]

Ground 2: Anticipation Under 35 U.S.C. § 102 [if applicable]

Challenged Claims: [LIST CLAIMS]
Reference: [REFERENCE CITATION]

A. Reference Description

[PRIMARY REFERENCE] discloses [DESCRIPTION]. [REFERENCE AUTHOR/SOURCE] published on [DATE] and qualifies as a prior art patent or printed publication under 35 U.S.C. § 311(b).

B. Claim-by-Claim Comparison

[The reference discloses every limitation of claim [NUMBER], including [Element 1], [Element 2], [Element 3], as shown in [pages/figures/paragraphs].

VIII. EVIDENCE

A. Prior Art References

B. Declaration of [EXPERT NAME]

[EXPERT NAME] provides expert testimony addressing:

• Level of ordinary skill in the art as of the priority date
• Scope and content of the prior art
• Motivation to combine
• Reasonable expectation of success
• Differences between claimed invention and prior art

[EXPERT NAME]'s Declaration is attached as Exhibit [####].

C. Technical Evidence

[Petitioner provides educational materials, industry standards, known practices, and technical treatises as supplementary evidence, attached as Exhibits [####]–[####].]

IX. CLAIM AMENDMENTS AND AMENDMENTS PROPOSED BY PATENT OWNER

Petitioner does not propose claim amendments at this stage. Pursuant to 35 U.S.C. § 316(d), Patent Owner may propose amendments during the proceeding if authorized by the Board.

X. PROCEDURAL REQUIREMENTS

A. Fee

[Petitioner has paid / will pay upon acceptance] the inter partes review fee required by 37 C.F.R. § 42.15(a) in the amount of $[FEE AMOUNT] [in the prescribed manner / by wire transfer on [DATE] / etc.].

B. Service

A copy of this Petition, the Declaration(s), and the Exhibits have been served upon [PATENT OWNER / PATENT OWNER'S COUNSEL] at:

[PATENT OWNER/COUNSEL NAME]
[ADDRESS]
[EMAIL ADDRESS]

Service was completed on [DATE] by [method: email / overnight courier / etc.].

C. Certification Under 37 C.F.R. § 11.18(d)

[I / undersigned counsel] certify under 37 C.F.R. § 11.18(d) that this Petition complies with all applicable rules and contains no material misrepresentation or omission of facts required to support institution.

XI. RELIEF REQUESTED

Petitioner respectfully requests that the Patent Trial and Appeal Board:

1. ☐ Institute an inter partes review of the '[NUMBER] Patent;
2. ☐ Issue a Final Written Decision, within the statutory period of one year (extendable to 18 months for good cause), that claims [LIST CLAIMS] are unpatentable under 35 U.S.C. § [102 / 103] in view of the prior art;
3. ☐ Cancel claims [LIST CLAIMS] from the '[NUMBER] Patent.

XII. APPENDICES

• Exhibit 1001: [REFERENCE CITATION] – [Description]
• Exhibit 1002: [REFERENCE CITATION] – [Description]
• Exhibit 1003: [REFERENCE CITATION] – [Description]
• Exhibit 2001: Declaration of [EXPERT NAME]
• [Additional Exhibits]: [As applicable]

XIII. SOURCES AND REFERENCES

• 35 U.S.C. § 311–319 – Inter Partes Review statutory framework
• 37 C.F.R. §§ 42.100–42.123 – PTAB rules for IPR trials
• 37 C.F.R. § 42.24 – Word count and format requirements
• Director Memorandum (October 17, 2025) – Director Squires' consolidated institution authority and summary notices
• Director Memorandum (March 26, 2025) – Acting Director Stewart's bifurcated institution process and discretionary factors
• Apple Inc. v. Fintiv, Inc., IPR2020-00019 (PTAB May 13, 2020) (precedential) – Discretionary denial under parallel litigation
• Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019 (PTAB Dec. 1, 2020) (precedential as to § II.A) – Stipulation to estoppel grounds
• Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) (designated October 2025) – Real party in interest requirement
• Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 2853 (2019) – Foreign governments barred as petitioners/RPIs under sovereign immunity logic
• Tianma Microelectronics Co., Ltd. v. LG Display Co., Ltd., IPR2025-01579, Paper 12 (PTAB March 18, 2026) (precedential) – Foreign government petitioner bar; RPI identification
• Federal Circuit, Apple Inc. v. Squires, Appeal 2024-1864 (Fed. Cir. Feb. 13, 2026) – Fintiv/discretionary denial guidance upheld as policy statement exempt from APA notice-and-comment

SUPPLEMENTAL NOTES FOR DRAFTING

Institution Climate (2025–2026)

The PTAB's institution rate has declined sharply. Key considerations:

1. Director Control: All institution decisions are now made by Director Squires personally or under his close direction, with summary notices for routine cases. Expect minimal explanatory reasoning for denials.

2. Discretionary Gatekeeping: Discretionary denial is now the first hurdle. Merit strength alone does not guarantee institution if discretionary factors weigh against it.

3. RPI Scrutiny: Real party in interest identification is rigorously enforced. Foreign government involvement, opaque investment structures, and coordinated defense arrangements are closely examined.

4. Claim Construction Consistency: Petitioner must articulate claim construction positions and explain consistency across district court and IPR filings. Adopting Patent Owner's construction without explanation is disfavored.

5. Parallel Litigation: The Fintiv factors apply with full force post-rescission. Sotera stipulations are no longer dispositive. Even with a stipulation, discretionary denial is possible if petitioner is pursuing broader invalidity grounds in district court.

6. Settled Expectations: Patents in force 6+ years face higher discretionary denial risk based on "settled expectations," though the doctrine remains controversial and is subject to Federal Circuit oversight.

7. Word Count: The 14,000-word limit is strictly enforced. Charts, claim comparisons, and detailed reference analysis must fit within this limit. Be selective in grounds and references.

8. Proposed Rulemaking (October 2025): The USPTO has proposed rules that would (if adopted):
   - Require petitioners to stipulate not to pursue § 102/103 grounds in other venues
   - Bar IPR of claims previously found valid in litigation or other proceedings
   - Bar IPR if parallel litigation will reach decision first
   - Allow institution only in "extraordinary circumstances" if above bars apply

9. Prior Adjudication: Avoid challenging a patent where claims have already been adjudicated valid (or unpatentable) in other proceedings, as this is both a discretionary factor and a proposed categorical bar.

FOOTER

[Petitioner Name]
By: [Counsel Name, Registration Number]
Address: [Counsel Address]
Email: [Counsel Email]
Phone: [Counsel Phone]

Date: [Filing Date]