In a decision denying the patent owner’s request for rehearing, the Patent Trial and Appeal Board (PTAB or Board) explained that when instituting an inter partes review (IPR) on obviousness grounds, a petitioner must only demonstrate a likelihood that it will prevail based on a preponderance of the evidence, and need not establish prima facie obviousness. Nestlé Purina Petcare Co. v. Oil-Dri Corp. of America, Case IPR2015-00737 (PTAB, Sept. 23, 2015) (DeFranco, APJ).
 
The challenged patent is directed to a clump-forming, clay-based composition that can be used as animal litter. In its request for rehearing, the patent owner asked the Board to reconsider its decision to institute IPR, contending that the Board “misapprehended the ‘reasonable likelihood’ standard for institution.” According to the patent owner, the standard “requires the petitioner to present a prima facie case of unpatentability,” and, as the petitioner failed to demonstrate a prima facie case, the PTAB should not have instituted an IPR.

The Board rejected the patent owner’s argument, noting that while a demonstration of a prima facie case of unpatentability is helpful, it “is not necessarily a prerequisite to the institution” of an IPR. The Board pointed to 35 U.S.C. § 316(e) in noting that, under the statute, the preponderance of the evidence standard does not play a role in Board proceedings until after an IPR has been instituted.

As the Board explained, in its decision to institute, the Board considered the petition and the preliminary response and, using the evidence of record at that time, found that there was a reasonable likelihood that the petitioner would prevail on the instituted grounds. As such, the Board determined that it had applied the correct standard for institution, and denied the patent owner’s request for rehearing.