In Nestlé Purina Petcare Co. v. Oil-Dri Corp. of America, the PTAB held that the “reasonable likelihood” standard for institution of trial does not require that the Petitioner establish a prima facie case of unpatentability. IPR2015-00737, Paper 16 (Sept. 23, 2015).

After a decision instituting trial, the Patent Owner filed a rehearing request arguing that the Board misapprehended the “reasonable likelihood” standard for institution. The Patent Owner argued that the standard requires petitioners to establish a prima facie case of unpatentability, which, Patent Owner argued, the Petitioner failed to do.

The Board held that it applied the appropriate standard in its institution decision. The Board noted that under 37 C.F.R. § 1.56(b), a prima facie case is established when the evidence compels a conclusion of unpatentability under a preponderance of the evidence standard. However, the Board noted, the preponderance-of-the-evidence standard applies in IPRs only after institution. See 35 U.S.C. § 316(e). Until then, the lower “threshold” standard of reasonable likelihood applies. Because it applied the appropriate standard at institution, the Board denied the rehearing request.

This decision shows that patent owners should try to demonstrate in their preliminary responses that the petitioner has not established a reasonable likelihood of prevailing. It may not be enough to show that the petitioner has failed to establish a prima facie case of unpatentability.