Patent Review Processing System (PRPS) | USPTO
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`Patent Review Processing System
`(PRPS)
`
`PRPS (Patent Review Processing System) is the Board's e-filing (EF) and case management (CM) system
`for trial proceedings. Direct Link (https://ptabtrials.uspto.gov/).
`
`• For questions regarding PRPS, please call the Board at (571) 272-7822. Support is provided Monday
`through Friday (except federal holidays) from 8:30 a.m. to 5:00 p.m. Eastern Time.
`
`Notices
`
`• New Maximum Daily Limit for Credit Card Payments, Effective June 1, 2015
`(http://beta.uspto.gov/patent/laws-and-regulations/america-invents-act-aia/new-maximum-daily-
`limit-credit-card-payments)
`
`• Notice Concerning Unavailability to the Public of the Patent Review Processing System on
`December 16-18, 2014 (/sites/default/files/documents/prps_notice_20141216.pdf)
`
`• PRPS change effective October 11, 2014:
`
`PRPS users who have a session that is idle for 25 minutes will receive a pop up warning message
`requesting the user to continue their session by actively clicking on the Ok button. The pop up warning
`message will display a 5 minute countdown informing the user to actively click on the Ok button before
`the countdown ends. If there is no action by the user, then their session will end and if they want to
`continue the session, they will need to close their browser, reopen their browser to access the PRPS site
`and log back in. If you had entered information on the PRPS page without saving, you will lose the
`information. If you have saved your information, then it will be available when you log back in. For
`additional information, see FAQs A15, A16, A17, A18 and A20.
`
`If you have any questions, you can contact the PTAB assistance line at 571-272-7822.
`Suggestion Box
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`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`Teva Pharm. v. Indivior, IPR2016-00280
`INDIVIOR EX. 2006 - 1/23
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`As PRPS is a developing system, suggestions for improvement provide important input into its future
`design. After seeing PRPS work, you may have suggestions for improving it. If you have suggestions,
`please send them to PRPS-Suggestions@uspto.gov (mailto:PRPS-Suggestions@uspto.gov).
`General Information
`• Quick Start Guide (/sites/default/files/ip/boards/bpai/quick_start_guide_02_14_14.pdf)
`• Information related to the Paper Reduction Act
`(/sites/default/files/ip/boards/bpai/information_related_to_paper_reduction_act.pdf)
`• or technical reasons, the size limit for an uploaded document is currently limited to 25 megabytes.
`See FAQ A4 (/patents-application-process/appealing-patent-decisions/trials/patent-review-
`processing-system-prps-0).
`• Internet Explorer 9 should be used for all filings as a petitioner or patent owner. A security question is
`asked at the initial stage (please answer "no") and the finance stage (please answer "yes"). Public
`documents may be viewed, however, using Internet Explorer 9, Firefox 26, Chrome 35, or Safari 6.
`• If you are using Internet Explorer 10 or 11, you will need to add uspto.gov in the compatibility view
`settings.
`◦ To add a site to the Compatibility View list
`1. Open the desktop, and then click the Internet Explorer icon.
`2. Tap or click the Tools button Tools, and then click Compatibility View settings.
`3. Under Add this website, enter the URL of the site (uspto.gov) you want to add to the list, and
`then  click Add.
`4. Click on Close.
`
`• Video
`
`◦ Low Resolution (http://helix-1.uspto.gov/asxgen/PRPSPromo-Helix.wmv)
`◦ High Resolution (http://helix-1.uspto.gov/asxgen/PRPSPromo720p.wmv) (HD)
`Technical Issues
`1. Only PDF and MPEG format files (MPEG, MPG, MP1, MP2, MP3, M1A, M2A, M1V, MPA, MPV) may be
`uploaded in PRPS. Password-protected files will not be accepted. For text documents, such as MS Word®
`documents, users are encouraged to convert the document directly into a text-searchable PDF file, rather
`than printing the document and scanning it in as a PDF file.
`
`2. PRPS sends an automatic email notification to the parties whenever a document is filed in a case. To
`view the document, you must access PRPS, open the applicable case in your docket, and select the
`document.
`
`3. To request a conference call for a particular case (e.g., to request authorization to file a motion),
`contact the Board at Trials@uspto.gov (mailto:Trials@uspto.gov). The email should copy the other party
`or parties to the proceeding, indicate generally the relief being requested or the subject matter of the
`conference call, state whether the opposing party or parties oppose the request, and include times when
`all parties are available. Unless otherwise authorized, do not include attachments in the email and do not
`
`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`Teva Pharm. v. Indivior, IPR2016-00280
`INDIVIOR EX. 2006 - 2/23
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`use the Trials@uspto.gov (mailto:Trials@uspto.gov) email address for substantive communications to the
`Board. Parties may also contact the Board by telephone at (571) 272-7822.
`
`4. Effective March 19, 2013, new fees will be charged for filing a petition for an inter partes review, post-
`grant review, or covered business method patent review. See Setting and Adjusting Patent Fees, 78 Fed.
`Reg. 4212, 4291 (37 C.F.R. § 42.15), available at http://www.gpo.gov/fdsys/pkg/FR-2013-01-
`18/pdf/2013-00819.pdf
` (http://www.gpo.gov/fdsys/pkg/FR-2013-01-18/pdf/2013-00819.pdf); also see
`FAQs E6-E7.
`
`5. Effective March 16, 2013, an applicant for a first inventor-to-file patent may file a derivation petition.
`See FAQs I1-I5.
`
`6. Effective January 14, 2013 (effective date of the AIA Technical Corrections Act), a petitioner may file an
`inter partes review petition challenging a first-to-invent patent or reissue patent upon issuance including
`during the first nine months after issuance.
`
`7. Should you encounter issues with using a particular deposit account in PRPS, please close out of the
`browser completely, clear the cookies in your browser, login to PRPS again, and input the correct deposit
`account number. If you are still unable to use the deposit account, please call the Board at (571) 272-
`7822.
`
`8. PRPS will be undergoing an upgrade on February 15, 2014. Please see the FAQs below for more
`information following the upgrade. Please note updated FAQs A9, B6, F8, F9, and G13 below.
`
`9. Effective October 11, 2014, the first backup counsel will have the same permissions as lead counsel and
`be permitted to upload documents and make changes to the counsel page.
`
`Frequently Asked Questions (FAQs)
`A. System Availability and General Information
`B. Searching and Reviewing Documents
`C. Registering as a PRPS User
`D. Filing a Petition
`E. Fees
`F. Submission of Patent Owner/Respondent Information and Preliminary Response
`G. Filing Other Documents
`H. Joinder and Consolidation
`I. Derivation Proceedings
`
`A. System Availability and General Information
`A1. How do I log on to PRPS?
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`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`INDIVIOR EX. 2006 - 3/23
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`Go to the Patent Trial and Appeal Board (PTAB) Web page at:
`http://www.uspto.gov/ip/boards/bpai/index.jsp (/patents-application-process/appealing-patent-
`decisions/patent-trial-and-appeal-board-old), and then click on "Direct Link" under "Patent Review
`Processing System (PRPS)".
`
`Once you are registered, close out of the browser completely, and then bring the browser back up and
`go to https://ptabtrials.uspto.gov (https://ptabtrials.uspto.gov). You will receive an email containing the
`verification code.
`
`On the PRPS welcoming screen, click on Login and enter your User ID and password. When the screen
`asks for the verification code, copy and paste the verification code from the email.
`
`A2. If PRPS is down during normal business hours or other unscheduled outage periods, may I file a
`petition or other documents via email or mail?
`
`If you have any difficulties with PRPS, please call the Board at (571) 272-7822.
`
`However, if PRPS is unavailable during normal business hours, petitions (and other documents) may be
`submitted to the Board via email: Trials@uspto.gov (mailto:Trials@uspto.gov).
`
`Petitions submitted via email must include:
`
`* name of point of contact;
`
`* email address of point of contact;
`
`* patent number to which the petition corresponds (or application number in the case of a derivation
`proceeding);
`
`* application number of the patent;
`
`* petitioner's application number (in the case of a derivation proceeding);
`
`* number of claims challenged;
`
`* type of trial proceeding;
`
`* power of attorney; and
`
`* fee, e.g., a deposit account authorization.
`
`In addition, a petition or document submitted via email or other means must: (1) be accompanied by a
`motion requesting acceptance of the submission, and (2) identify a date of transmission where a party
`seeks a filing date other than the date of receipt at the Board. 37 C.F.R. § 42.6(b). It is important to note
`that a petition will not be accorded a filing date unless it is accompanied by a payment of the appropriate
`fees (e.g., a deposit account authorization).
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`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`Teva Pharm. v. Indivior, IPR2016-00280
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`Paper filing via EXPRESS MAIL® (or by means at least as fast and reliable as EXPRESS MAIL®) is
`authorized only if both PRPS and the Board's email address (Trials@uspto.gov (mailto:Trials@uspto.gov))
`are unavailable. The mailing address is:
`
`Mail Stop PATENT BOARD
`
`Patent Trial and Appeal Board
`
`United States Patent and Trademark Office
`
`PO Box 1450
`
`Alexandria, Virginia 22313-1450
`
`For hand delivery or delivery via FEDEX, UPS, etc.:
`
`Mail Stop PATENT BOARD
`
`Patent Trial and Appeal Board
`
`United States Patent and Trademark Office
`
`Madison Building (East)
`
`600 Dulany Street
`
`Alexandria, Virginia 22313
`
`A3. Will extensions of time be available?
`
`If PRPS is down during normal business hours, a party may contact the Board and request a one-day
`extension of time for due dates that are set by rule or orders of the Board. 37 C.F.R. § 42.5. In the unlikely
`event that an administrative patent judge is not available to rule on the extension, the Board may grant
`an extension the day after the paper is due. However, no extensions of time will be granted for any
`statutory time period.
`
`A4. What is the megabyte limit for a document upload?
`
`A single uploaded file may not exceed 25 megabytes in size. For technical reasons, PRPS is unable to
`accept files over 25 megabytes at this time. USPTO expects to be able to increase the limit in future
`releases.
`
`If you need to file a document that exceeds 25 megabytes, please call the Board at (571) 272-7822.
`
`Users are encouraged to reduce the file size by:
`
`1. splitting a large file into multiple smaller files; and/or
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`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`INDIVIOR EX. 2006 - 5/23
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`2. converting MS Word® documents into PDF files, rather than printing documents and scanning them
`in as PDF files.
`
`A5. Is there a limit to the number of documents that can be uploaded per filing?
`
`No.
`
`A6. Are there any naming conventions for documents or character restrictions? (revised - Mar. 20, 2014)
`
`There are no special naming conventions for documents, but the number of characters is limited. The
`user will be prompted to provide a name that will appear in the docket listing. This name should be
`simple and descriptive, such as "Jones Motion to Amend" or "Second Declaration of Dr. Smith."
`Document names must be less than 255 characters.
`
`A7. Will the Office provide forms (e.g., power of attorney or IPR transmittal) for filing documents in a
`proceeding?
`
`PRPS provides screens for the parties to enter certain information (e.g., lead and back-up counsel and real
`party in interest). However, the Office does not have forms beyond those PRPS fillable screens. While
`forms may become available with future releases, most filings will be part of motion practice rather than
`pre-defined forms.
`
`A8. How can I check whether I filed a document properly?
`
`After you upload a document in the proper format (i.e., PDF or MPEG for exhibits and PDF for all other
`documents) and click "Submit," you will receive an acknowledgement on the screen in PRPS and a filing
`receipt via email if the document is filed properly. If you did not receive an acknowledgement on the
`screen or a filing receipt via email, the document most likely has not been uploaded properly and you
`should contact the Board at (571) 272-7822. You may also check whether the document is listed in the file
`contents of the proceeding.
`
`A9. If the wrong document is submitted, can it be deleted through the PRPS interface? (revised - February
`14, 2014)
`
`Yes, as long as the document has not yet been submitted. When uploading a document, users should
`ensure that the correct file has been selected before clicking the "Upload File" button. If the wrong
`document is uploaded but the "Submit" button has not yet been clicked, you may delete the document
`by clicking the trash can icon shown on the screen. Once all documents are uploaded, the user must click
`the "Submit" button to complete the submission. Documents uploaded, but not yet submitted, have not
`been filed with the Board.
`
`If the wrong document was uploaded and the "Submit" button was clicked, you should file the correct
`document and a motion to expunge the wrong document as soon as possible. Any motion to expunge
`filed on the same day as the wrong document will generally be granted.
`
`A10. Can more than one person work on a case at the same time?
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`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`INDIVIOR EX. 2006 - 6/23
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`Yes, more than one person may review documents or upload documents in a proceeding at the same
`time, even if they are sharing a user ID.
`
`A11. Will the PAIR record for the challenged patent show whether a petition has been filed or a decision
`on the petition has been granted?
`
`Yes, for example, PAIR will have entries for the following:
`
`Petition Requesting Trial
`
`Request for Trial Granted
`
`Request for Trial Granted in Part
`
`Request for Trial Denied
`
`Request for Trial Dismissed
`
`Trial Termination or Final Written Decision
`
`Trial Review Certificate Issued
`
`A12. Is there any application programming interface (API) access to PRPS?
`
`No, API access to PRPS is not permitted at this time.
`
`A13. Can I download information in bulk from PRPS?
`
`PRPS is intended for use by the general public. Due to limitations of equipment and bandwidth, PRPS is
`not intended to be a source for bulk downloads of USPTO data. Individuals, companies, IP addresses, or
`blocks of IP addresses who, in effect, deny service to the general public by generating unusually high
`numbers of daily PRPS accesses (e.g., searches, pages, document retrievals), whether generated manually
`or in an automated fashion, may be denied access to PRPS without notice.
`
`A14. How do I enter a foreign address in PRPS?
`
`Certain screens in PRPS allow for the entering of address information (e.g., for a petitioner or patent
`owner/respondent's real party in interest). In the case of a foreign address, users should select the
`appropriate country in the "Country" field, select the blank "-" entry in the "State" field, and then input
`the next three lines of the foreign address in the "Address Line 1," "City," and "Postal Code" fields.
`
`A15. If I am idle in PRPS for less than 30 minutes, what will happen? (July 11, 2014)
`
`Nothing as long as you are active-(key strokes, clicks, etc.)--, you can continue to work as you normally
`do.
`
`A16. If I am idle in PRPS for 30 minutes or more, will I lose any of the completed uploads or activities
`from the timed-out session if I clicked on the save button? (July 11, 2014)
`
`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`Teva Pharm. v. Indivior, IPR2016-00280
`INDIVIOR EX. 2006 - 7/23
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`No. If you enter some data fields, then either click on the submit button or the save button to complete
`the activities, all changes will be saved into the PRPS system, and will not be lost from the session time-
`out. All documents are saved when you click on the upload button, so all uploaded documents will not be
`lost when you are timed out.
`
`A17. If I am idle in PRPS for 30 minutes or more, will I lose any of the data entered from the timed-out
`session if I did not click on the save button? (July 11, 2014)
`
`You will lose any data entered on the last screen in which you were active before becoming idle. For
`example, if you were on the counsel page and were entering data for the backup counsel but did not
`finish and your system was idle for 30 minutes or more, the data entered on that page would be lost.
`
`A18. What will happen if I am idle for 30 minutes, how do I get back into my session? (July 11, 2014)
`
`You will have to close your browser and reopen your browser to access the PRPS website. You can open
`the case again from 'My Docket' and locate the hyperlink under 'My Pending Tasks' to continue working
`on the case. Once you have uploaded all your documents, then you can submit them.
`
`A19. What happens if I upload a document but do not click the "Submit" button? (new - August 12, 2014)
`
`Users must click the "Submit" button to complete a submission. Documents uploaded, but not yet
`submitted, have not been filed with the Board and will be deleted automatically after 30 days.
`
`A20. If I am idle in PRPS for 25 minutes, what will happen? (Oct. 9, 2014)
`
`A pop up warning message will appear asking the user to click on the Ok button to continue their
`session. The pop up warning message will include a 5 minute countdown informing the user to click the
`Ok button before the countdown time limit has expired.
`
`B. Searching and Reviewing Documents
`B1. Can I use PRPS to search for a proceeding without registering?
`
`Yes, a non-registered user may search for a proceeding and review documents related to a proceeding.
`However, if you want to file a document or submit a fee payment in a proceeding, you must be a
`registered PRPS user.
`
`B2. Can I search for a proceeding by the patent owner?
`
`No, you may search for a proceeding by the petitioner's name, petition type, patent number, or
`application number (for derivation proceedings).
`
`B3. Will PRPS collect and report statistics on the proceedings?
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`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`INDIVIOR EX. 2006 - 8/23
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`Yes, PRPS will collect and report statistics about the new proceedings. Currently, users may search the
`proceedings based on a particular trial type, party name, petition filing date, institution date, patent
`number, and application number (for derivation proceedings).
`
`B4. Why are there gaps between trial proceeding numbers?
`
`A trial proceeding will be listed in the search results only when the (multi-step) process of submitting a
`petition for instituting a trial proceeding via PRPS has been successfully completed. If the process of filing
`a petition is not yet completed or was never completed, a trial number will be provided but it will not be
`listed in the search results.
`
`B5. Why have the prefixes of trial proceeding numbers changed from "2012" to "2013" (e.g., IPR2012 to
`IPR2013)?
`
`The prefixes of trial proceeding numbers track the fiscal year. Fiscal year 2013 started on October 1, 2012.
`Thus, any petitions filed between October 1, 2012 and September 30, 2013 will receive a trial proceeding
`number with a prefix of "2013" (e.g., IPR2013 or CBM2013).
`
`B6. Why are there gaps between paper numbers in some proceedings? (revised - February 14, 2014)
`
`In some previous versions of PRPS, PRPS assigned a sequential number (Paper 1, 2, 3, etc.) to a paper
`immediately when the paper was uploaded. Thus, if a user uploaded a paper but then deleted it before
`submitting, the assigned number was not reassigned, causing a gap in the numbering of papers in that
`proceeding. In the current version of PRPS, papers are assigned a number only when the submission
`process is completed, so there are no gaps in paper numbers.
`
`C. Registering as a PRPS User
`C1. Who can register?
`
`Anyone can register to use PRPS and obtain a user ID, such as a pro se patent owner or an attorney who
`is not registered to practice before the Office under 37 C.F.R. § 11.6.
`
`C2. What information is required to register?
`
`When you are registering to use PRPS, you have to select a unique user ID and password, and enter your
`name and an email address. If you are a USPTO registered practitioner, you should enter your registration
`number.
`
`C3. Can I share my user ID with my paralegals or other attorneys in my organization?
`
`Yes, a single user ID may be shared among a working group. It is important to keep in mind, however,
`that PRPS docket display is based on the user ID. Therefore, the registered user must ensure that sharing
`his or her user ID would not violate any protective order.
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`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`INDIVIOR EX. 2006 - 9/23
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`D. Filing a Petition
`D1. When will my petition be accorded a filing date?
`
`Once the Office reviews the petition and determines whether the petition is complete and the
`appropriate fees have been paid, the Office will send a notice to the petitioner and patent
`owner/respondent. The submission date of the compliant petition will be accorded as the filing date.
`
`If the petition complies with all of the statutory requirements (see 35 U.S.C. 135, 312, and 322), the
`original submission date of the petition will be accorded as the filing date. Conversely, no filing date will
`be accorded if a statutory requirement is not satisfied. For example, for fee deficiencies, the Office will
`accord the later submission date when all appropriate fees have been paid because the fees are required
`by statute. See, e.g., 35 U.S.C. 312(a)(1).
`
`In the situation where a petition complies with all of the statutory requirements but contains only
`regulatory defects, the Office will accord the filing date of the original submission and notify the
`petitioner of the defects. The regulatory defects must then be corrected within the time period set forth
`in the notice.
`
`D2. Will the Office terminate the proceeding if I filed a complete petition that contains regulatory defects
`and failed to correct the defects within the time period set forth in the notice?
`
`Once the time period for correcting regulatory defects has expired, the petition will be forwarded to a
`Board judge who may initiate a conference call and/or issue an Order to show cause. If the petitioner fails
`to respond to such an Order appropriately, the proceeding may be terminated. It is important to note
`that the petitioner will not be entitled to a refund of any fees paid because the petition was in compliance
`with the statutory requirements for a filing date. For petitions filed on or after March 19, 2013, however,
`the petitioner may file a request for a refund of any post-institution fee paid. See FAQ E7.
`
`D3. How will the Board review petitions for statutory and regulatory compliance? (revised - March 28,
`2014)
`
`Once a petition is submitted via PRPS, a Board paralegal will review the petition for statutory and
`regulatory compliance.
`
`First, there are certain statutory requirements in 35 U.S.C. 135(a), 312(a), and 322(a) that must be met
`for a petition to be accorded a filing date. The following is a list of the "top 5" things the paralegal will be
`looking for in IPR, PGR, and CBM petitions:
`
`• Appropriate fee successfully paid,
`• Identification of the patent and the specific claim(s) being challenged,
`• Identification of the real party in interest,
`• Copies of the patents and printed publications relied upon in the petition, and
`• Evidence (e.g., certificate of service) that a copy of the petition was provided to the patent owner.
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`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`INDIVIOR EX. 2006 - 10/23
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`The following are the "top 4" things the paralegal will be looking for in DER petitions:
`
`• Appropriate fee successfully paid,
`• Identification of the petitioner's pending application,
`• Identification of the respondent's earlier filed patent or application, and
`• Evidence, (e.g., certificate of service) that a copy of the petition was provided to the respondent.
`
`If any statutory requirement is not met, the petition is incomplete.
`
`• The paralegal may call the individual who filed the petition and explain the deficiency.
`• The paralegal will enter a Notice of Incomplete Petition and the individual who filed the petition will
`receive notification by email.
`• The deficiency may be corrected within one month and the petition will be accorded the filing date of
`the NEW submission.
`• If the deficiency is not corrected within one month, the petition will be dismissed. One exception is
`when the petitioner challenges more than 20 claims (15 beginning March 19, 2013) but does not pay
`the excess claims fees - the petitioner will receive notification and can file a request to have the Board
`review just the first 20 challenged claims (15 beginning March 19, 2013).
`
`Second, there are certain regulatory requirements in part 42 of 37 C.F.R. that must be met (e.g., page
`limits, font size, signature, identification of lead and back-up counsel).
`
`If any regulatory requirement is not met, the petition is defective.
`
`• The paralegal may call the individual who filed the petition and explain the defect.
`• The paralegal will enter a Notice of Filing Date Accorded to Petition and the individual who filed the
`petition will receive notification by email.
`• While the petition will be accorded the filing date of the ORIGINAL submission, the defect must be
`corrected within one week.
`• If the defect is not corrected within one week, the petition will be forwarded to a Board judge who
`may initiate a conference call and/or issue an Order to show cause, and terminated if the petitioner
`fails to respond to such an Order.
`
`If there are no statutory or regulatory errors with the petition, the paralegal will enter a Notice of Filing
`Date Accorded to Petition, the petitioner will receive notification by email, and the patent
`owner/respondent will receive a copy via regular mail.
`
`D4. If the correspondence address of record for the subject patent or application is not up to date, can
`the petitioner serve the petition on the patent owner/respondent at a different address?
`
`Yes, the petition and supporting evidence must be served on the patent owner/respondent at the
`correspondence address of record for the subject matter. The petitioner may additionally serve the
`petition and supporting evidence on the patent owner/respondent at any other address known to the
`petitioner as likely to effect service. See §§ 42.105(a), 42.205(a), and 42.406(a).
`
`D5. After I file a petition, how do I file a follow-on document (e.g., a motion to expunge)?
`
`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
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`2/1/2016
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`Teva Pharm. v. Indivior, IPR2016-00280
`INDIVIOR EX. 2006 - 11/23
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`You must use the lead counsel's user ID to submit any document in the proceeding, even when you used
`a different user ID to file the petition. To upload the document, see FAQ G1.
`
`D6. If a petition is incomplete, how much time do I get to complete it?
`
`The Office will provide the petitioner one month from the Notice of Incomplete Petition to correct the
`petition. Please see 37 C.F.R. §§ 42.106(b), 42.206(b), and 42.407(b), and FAQ D3.
`
`D7. Can I present claim charts and arguments in landscape orientation?
`
`No. All documents, other than drawings, must be written in portrait orientation including claim charts and
`arguments. The Board previously accepted a few petitions with claim charts written in landscape
`orientation because the procedure for filing AIA petitions is new.
`
`Switching from portrait orientation to landscape orientation within a document (e.g., a petition) creates
`inefficiency for the reviewing officials at the Board. Therefore, correction is now required when a
`document or portions thereof (e.g., claim charts) are written in landscape orientation. This is consistent
`with the policy set forth in § 42.1(b) and the practice set forth in § 1.52(a)(1)(iii) for filing papers that are to
`become a part of the permanent record in the application or patent files within the USPTO.
`
`D8. Can a petitioner file mandatory notices in a separate document?
`
`No. The petitioner's mandatory notices must be filed as part of the petition itself. See §§ 42.8(a)(1),
`42.104, 42.204, 42.304, and 42.405. The Board previously accepted a few improper mandatory notices
`because the procedure for filing AIA petitions is new. However, correction is now required when a
`petitioner's mandatory notices are not filed as part of the petition.
`
`D9. If I am filing two petitions challenging the same patent, should I use the same exhibit numbers in
`both cases?
`
`No. In the situation where a petitioner files multiple petitions challenging the same patent, the petitioner
`should number its exhibits uniquely for both cases, such as 1001-1099 for case #1 and 1101-1199 for
`case #2. See § 42.63(c). Similarly, the patent owner in such situation should number its exhibits uniquely
`for both cases, such as 2001-2099 for case #1 and 2101-2199 for case #2. Therefore, if the Board decides
`to consolidate the cases, the exhibits would continue to be uniquely numbered in the consolidated
`proceeding.
`
`D10. What are the most common errors found in petitions? (revised - February 11, 2014)
`
`The following are the top 10 common errors:
`
`1. Improper usage of claim charts by including arguments, claim construction, and/or legal analysis in a
`claim chart (see FAQ D12);
`
`2. Failure to set forth claim construction of disputed or important claim terms expressly in a claim
`construction section;
`
`http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-re...
`
`2/1/2016
`
`Teva Pharm. v. Indivior, IPR2016-00280
`INDIVIOR EX. 2006 - 12/23
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`

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`Patent Review Processing System (PRPS) | USPTO
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`Page 13 of 23
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`3. Exhibits do not match the documents listed in the Exhibit List;
`
`4. Failure to identify related matters or provide a statement that there are no related matters;
`
`5. Exhibits are not sequentially numbered in the 1001-1999 range;
`
`6. Failure to identify lead or back-up counsel as required by §§ 42.8 and 42.10;
`
`7. Margins less than 1 inch as required by § 42.06;
`
`8. Failure to certify that the petitioner is not barred or estopped from requesting a review as required by §
`42.104(a) or § 42.204(a);
`
`9. The petition and supporting documents are served on the patent owner at an address that is not the
`correspondence address of record for the subject patent as required by § 42.105(a) or § 42.205(a); and
`
`10. The petition and supporting documents are served on the patent owner later than the filing of the
`petition.
`
`D11. Can I file a petition seeking an inter partes review of a plant patent?
`
`Yes, 35 U.S.C. § 311(a) provides that, subject to certain requirements, "a person who is not the owner of a
`patent may file with the Office a petition to institute an inter partes review of the patent." This provision is
`not limited to utility patents.
`
`D12. Can claim charts include claim constructions, arguments, and explanations as to how the claims are
`unpatentable? (revised - Febru