Document type: Toolkit Practice area: Intellectual Property — Patents Jurisdiction: United States (federal) Last reviewed: 5 September 2026

1. Decision memorandum

PRIVILEGED — ATTORNEY WORK PRODUCT
IPR DECISION MEMORANDUM — U.S. Patent No. __________
Prepared by: __________   Date: __________

1. THE ART
   Printed publications / patents (USABLE AT THE BOARD):
     ______________________________________
   Public use, on-sale, system art (NOT USABLE, NOT ESTOPPED):
     ______________________________________
   Strength of the printed-publication case alone: ______/5

2. ESTOPPEL COST
   District court invalidity grounds we would lose:
     ______________________________________
   District court invalidity grounds that SURVIVE estoppel:
     ______________________________________
   **If we lose the IPR, what invalidity defense remains?**
     ______________________________________

3. WHAT THE BOARD CANNOT DECIDE
   [ ] Non-infringement — is this our primary defense? ______
   [ ] § 101 eligibility
   [ ] § 112 written description / enablement / indefiniteness
   [ ] Inequitable conduct
   [ ] Damages

4. TIMING AND BARS
   Date served (client): ______
   Real parties / privies and their service dates: ______
   **One-year bar date: ______**
   Prior civil action challenging validity? [ ] Yes [ ] No
   District court trial date: ______
   Projected final written decision: ______

5. DISCRETION
   Current Office guidance checked on: ______
   Filing month relative to complaint: ______
   Stipulation offered: [ ] None [ ] Narrow [ ] Broad
   Art before the examiner? [ ] Yes — § 325(d) answer: ______
   Stay likelihood: ______

6. ECONOMICS
   IPR cost through FWD: $________
   District court invalidity cost: $________
   Probability of a stay: ______%
   Co-petitioners available: ______

7. RECOMMENDATION
   [ ] File  [ ] Do not file  [ ] File on [subset]
   Reasoning: ______________________________

Drafting notes.

Section 2's bolded question is the decision. A defendant left with nothing after estoppel is making a forum choice with no fallback, which is a different decision than one with system art in reserve.

Section 4's bar date is computed from service on every real party and privy, not just the client.

Section 5's guidance-checked line matters because this area has moved more than once, and a memorandum relying on a superseded framework is worse than none.

2. Real party in interest worksheet

REAL PARTY IN INTEREST / PRIVITY ANALYSIS
Patent: __________  Petitioner: __________

| Entity | Relationship | Served? | Date | Funds? | Directs? |
  Right to control? | Indemnity? | Benefits? | RPI/Privy? |

ENTITIES TO CONSIDER
[ ] Petitioner's parent and subsidiaries
[ ] Suppliers (especially those with indemnity obligations)
[ ] Customers and distributors
[ ] Indemnitors and indemnitees
[ ] Joint defense group members
[ ] Insurers funding the defense
[ ] Trade associations or funders
[ ] Any entity that requested this petition

FOR EACH CANDIDATE
Funding: does it pay any part of the petition cost? ______
Control: does it select counsel, approve strategy, or review
  drafts? ______
Right to control (even if unexercised): ______
Indemnity: what does the agreement entitle it to? ______
Pre-existing relationship suggesting privity: ______
Would it be bound by a judgment in the district court case?

BAR ANALYSIS
Earliest service date among all RPIs and privies: ______
**ONE-YEAR BAR DATE: ______**
Days remaining: ______

DECISION
Entities named in the petition: ______________________
Entities not named, with reasoning: __________________
[REMEMBER: the Board's determination is UNREVIEWABLE after
Thryv. Err toward disclosure.]
Prepared by: ______  Reviewed by: ______  Date: ______

Drafting notes.

The insurer row surprises people. An insurer funding the defense and controlling counsel selection can be a real party in interest.

"Right to control, even if unexercised" is the formulation that catches indemnitors. An indemnity agreement giving the indemnitor a right to assume the defense may establish the right regardless of whether it was used.

Keep this document. If the identification is challenged, the contemporaneous analysis is what you have.

3. Prior art development log

PRIOR ART LOG — U.S. Patent No. __________

CATEGORY A — PRINTED PUBLICATIONS AND PATENTS
(Usable at the Board; ESTOPPED after a final written decision)
| Ref | Type | Date | Public accessibility evidence | Claims
  addressed | In petition? |

CATEGORY B — SYSTEM ART, PUBLIC USE, ON-SALE
(NOT usable at the Board; NOT estopped — THIS IS THE
POST-IPR DEFENSE)
| Item | Type | Date | Evidence held | Witness | Claims
  addressed | PRESERVE SEPARATELY |

PUBLIC ACCESSIBILITY (Category A only)
For each non-patent reference:
  How was it indexed? ______________________
  Where was it available? __________________
  To whom? ________________________________
  Evidence: [librarian declaration / catalog record /
  distribution list / conference proceedings / web archive]

SEARCH RECORD
Searcher: ______  Databases: ______  Date: ______
Search strategy documented: [ ] Yes
[NOTE: the estoppel standard reaches what a DILIGENT search
would find. This record defines exposure as well as the case.]

COMBINATION ANALYSIS
| Combination | Problem addressed | Why one would look to the
  other | Expectation of success | Evidence |

Drafting notes.

Category B is the most important part of this log and the part most often neglected. It is the defense that survives estoppel, and it should be developed in parallel with the petition and not mentioned in it.

Public accessibility evidence is where non-patent references fail. A manual, a thesis, a standards draft, or a conference paper requires proof of how it was indexed and available before the critical date. Gather it when you find the reference, not when the patent owner challenges it.

The search record cuts both ways. A thorough documented search produces a better petition and defines a broader estoppel. Do it anyway; the alternative is a petition on incomplete art.

4. Petition outline and claim chart format

PETITION FOR INTER PARTES REVIEW
U.S. Patent No. [___]

I.    MANDATORY NOTICES (37 C.F.R. § 42.8)
      A. Real parties in interest [LIST ALL]
      B. Related matters [every district court case, ITC
         investigation, and prior Office proceeding]
      C. Lead and back-up counsel
      D. Service information

II.   GROUNDS FOR STANDING
      Petitioner is not the patent owner, is not barred, and
      has not filed a civil action challenging validity.
      [State the service date and the bar computation.]

III.  RELIEF REQUESTED AND GROUNDS
      Ground 1: Claims __ are obvious over A in view of B
      Ground 2: Claims __ are anticipated by C
      [FEW GROUNDS, FULLY DEVELOPED — institution is all or
      none after SAS.]

IV.   THE '___ PATENT
      A. Overview of the disclosure
      B. The challenged claims
      C. Prosecution history [including any § 101 or § 103
         rejections and the arguments used]
      D. Level of ordinary skill in the art

V.    CLAIM CONSTRUCTION
      [Only terms that matter. Note the district court
      positions and confirm consistency.]

VI.   GROUND 1 — CLAIMS __ ARE OBVIOUS OVER A IN VIEW OF B
      A. Overview of A
      B. Overview of B
      C. MOTIVATION TO COMBINE
         [THE SECTION THAT DECIDES THE PETITION — see below]
      D. Claim charts
      E. Objective indicia do not compel a different result

VII.  GROUND 2 — [same structure]

VIII. DISCRETION SHOULD NOT BE EXERCISED TO DENY
      A. This petition was filed [__] months after the
         complaint
      B. Petitioner stipulates [quote the stipulation]
      C. A stay motion is pending / has been granted
      D. § 325(d): the Office did not appreciate [specific]

IX.   CONCLUSION

Claim chart format:

| Claim 1 limitation | Reference disclosure |
| [1.a] A method of calibrating a sensor, comprising: |
  A discloses "a method for calibrating the transducer" at
  3:14-22. Ex. 1003 ¶ 41. |
| [1.b] measuring an output signal during a first interval; |
  A discloses "sampling the output during the acquisition
  window" at 4:8-15, Fig. 3. Ex. 1003 ¶¶ 44-47. |
| [1.c] adjusting a gain coefficient based on the measured
  output; | A does not disclose this. B discloses "modifying
  the amplification factor in response to the sampled value"
  at 7:22-31. Ex. 1003 ¶¶ 52-58. |

Motivation to combine — the format that works:

C. A PERSON OF ORDINARY SKILL WOULD HAVE COMBINED A AND B

1. The problem. At the priority date, practitioners in [field]
   faced [specific technical problem]. See Ex. 1005 at __;
   Ex. 1006 at __; Ex. 1003 ¶¶ __.

2. What A teaches about the problem. A addresses [__] and
   expressly states that [quote]. A at __:__.

3. What B teaches. B discloses [__] and states that this
   approach [benefit]. B at __:__.

4. Why a skilled artisan would look from A to B. [The
   references are in the same field; A expressly identifies
   the deficiency B addresses; both are directed to the same
   problem; the combination is the application of a known
   technique to a known device ready for improvement.]
   Ex. 1003 ¶¶ __.

5. Reasonable expectation of success. [Why the combination
   would have worked, with technical support — not a
   conclusion.] Ex. 1003 ¶¶ __.

6. No teaching away. [Address any statement in either
   reference that could be read as discouraging.]

Drafting notes.

Section VI.C is where petitions are won and lost, and the six-part structure above is what a persuasive one looks like. A section that says "a skilled artisan would have been motivated to combine A and B to improve accuracy" is a conclusion, and panels say so.

Every chart entry cites both the reference and the declaration paragraph. A chart that cites only the reference leaves the expert testimony unanchored; one that cites only the declaration is circular.

Section VIII belongs in the petition, not in a reply. Address discretion before the patent owner frames it.

Watch the word limit. It is the reason to have few grounds.

5. Stipulation language

Narrow form:

Petitioner stipulates that, if inter partes review is
instituted, Petitioner will not pursue in [the district court
action] the specific grounds of invalidity asserted in this
Petition — namely, [Ground 1: claims __ obvious over A in view
of B] and [Ground 2: claims __ anticipated by C].

Broad form (recommended):

Petitioner stipulates that, if inter partes review is
instituted, Petitioner will not pursue in [the district court
action] any ground of invalidity that it raised or reasonably
could have raised in this Petition — that is, any ground under
35 U.S.C. §§ 102 or 103 based on patents or printed
publications. Petitioner reserves invalidity grounds that could
not have been raised in this proceeding, including grounds
based on prior public use, on-sale activity, or system prior
art, and grounds under 35 U.S.C. §§ 101 and 112.

Drafting notes.

The broad form is substantially more persuasive and it costs less than it appears: 35 U.S.C. § 315(e) estoppel would attach on a final written decision anyway. What you give up is the ability to withdraw and preserve those grounds.

The reservation sentence in the broad form is essential. Without it, a court may read the stipulation as broader than intended and foreclose your system art defense.

Put it in three places: the petition, the stay motion, and any reply on discretion. It is the most-cited fact in both decisions.

6. Stay motion outline

MOTION TO STAY PENDING INTER PARTES REVIEW

I.   INTRODUCTION
     The petition was filed [__] months after the complaint;
     [institution was granted on __ / the institution decision
     is due __]; Petitioner has stipulated [quote]; a stay will
     simplify the case and impose no prejudice.

II.  BACKGROUND
     The asserted patents and claims; the petition and the
     claims challenged; the procedural posture of both.

III. LEGAL STANDARD
     [The three (or four) factors in this district.]

IV.  A STAY WILL SIMPLIFY THE ISSUES
     A. All [__] of the [__] asserted claims are challenged
     B. If cancelled, this case ends / narrows to [__]
     C. THE STIPULATION eliminates duplicative invalidity
        litigation
     D. Even if claims survive, the Board's record and any
        prosecution history estoppel will narrow the case

V.   THIS CASE IS AT AN EARLY STAGE
     [Discovery status, no trial date or a distant one, no
     claim construction ruling, limited investment.]

VI.  DEFENDANT WILL SUFFER NO UNDUE PREJUDICE
     A. Plaintiff does not compete with Defendant / does not
        practice the patent
     B. Money damages are an adequate remedy
     C. Plaintiff delayed [__] before filing suit
     D. Defendant sought review promptly

VII. [FOURTH FACTOR, WHERE APPLICABLE] A STAY REDUCES THE
     BURDEN ON THE PARTIES AND THE COURT

VIII.CONCLUSION

Drafting notes.

Section IV.C is the strongest paragraph in the motion. Quote the stipulation in full.

Section VI.A is fact-dependent and must be honest. A patent owner that competes has a real prejudice argument, and overstating this point costs credibility on everything else.

File promptly. A motion filed after the close of fact discovery loses on factor two regardless of the rest.

7. Preliminary response outline

PATENT OWNER PRELIMINARY RESPONSE

I.   INTRODUCTION
     [Lead with the strongest ground for denial — usually
     procedural, not merits.]

II.  THE PETITION IS TIME-BARRED UNDER § 315(b)
     A. [Entity] was served on [date], more than one year
        before this Petition
     B. [Entity] is a real party in interest
        [Funding; control; right to control; indemnity;
        benefit from cancellation]
     C. Alternatively, [Entity] is in privity with Petitioner
     D. Request for additional discovery on RPI, if the facts
        are within Petitioner's control

III. THE BOARD SHOULD EXERCISE DISCRETION TO DENY
     A. Parallel district court litigation
        [Trial date; investment; overlap; stay denied or not
        sought; the inadequacy of any stipulation]
     B. § 325(d): the same art and arguments were before the
        Office
        [What the examiner considered; why no material error
        is shown]

IV.  THE PETITION FAILS TO SHOW A REASONABLE LIKELIHOOD
     A. Ground 1 fails because [reference] does not disclose
        [limitation]
     B. Ground 1 fails because there is no adequate motivation
        to combine
        [Different problems; teaching away; no expectation of
        success; the declaration is conclusory]
     C. Ground 2 fails because [__]

V.   THE PETITION IS PROCEDURALLY DEFICIENT
     [Incomplete charts; unexplained expert testimony;
     redundant grounds; inadequate construction. Because
     institution is all-or-nothing after SAS, a defect in any
     ground supports denial of the Petition.]

VI.  CONCLUSION

Drafting notes.

The order matters. Panels reach the procedural grounds first, and a response that leads with a technical merits argument buries its best point.

Section II.D is underused. Where the funding and control facts are in the petitioner's hands, the Board grants targeted additional discovery in appropriate cases.

Section V exists because of SAS. A defect in one ground is now an argument against the whole petition.

On declarations: a factual dispute is resolved for the petitioner at institution, so use a declaration to establish a fact the petitioner cannot dispute — what a reference literally says, what a term meant in the art — rather than to argue.

8. Cross-examination plan

CROSS-EXAMINATION PLAN — [Declarant], [Party]

OBJECTIVE 1 — WHAT THE REFERENCE DOES NOT SAY
[ ] Have the witness read the passage relied on
[ ] Confirm the words that are NOT there
[ ] Confirm the limitation is not expressly disclosed
[ ] Confirm the opinion rests on inherency or on what the
    witness believes a skilled artisan would understand

OBJECTIVE 2 — THE GAP IN THE COMBINATION
[ ] What problem was the artisan solving?
[ ] Does Reference A address that problem? Does B?
[ ] What in A points toward B?
[ ] What is the evidence, other than the witness's opinion?
[ ] What would have to be modified in A to accommodate B?
[ ] Would that modification affect A's stated purpose?

OBJECTIVE 3 — WHAT THE WITNESS DID NOT DO
[ ] Documents not reviewed
[ ] References not considered
[ ] Tests not performed
[ ] Time spent
[ ] Who drafted the declaration

OBJECTIVE 4 — INCONSISTENCY
[ ] Prior testimony in this or other matters
[ ] Publications by the witness
[ ] Positions taken in the parallel district court case
[ ] The other side's district court expert positions

EXHIBITS TO USE: ______________________
LINES NOT TO PURSUE: __________________

Drafting notes.

Objective 2 produces the most valuable testimony. A declarant who concedes that nothing in the primary reference points to the secondary one has given the patent owner its case.

Objective 4's parallel-case line is why the consistency log below matters to both sides.

Keep it short. Board cross-examination is time-limited and a focused two-hour deposition on three objectives beats a wandering seven-hour one.

9. Motion to amend worksheet

MOTION TO AMEND ANALYSIS — U.S. Patent No. __________

1. IS THERE A BETTER ALTERNATIVE?
   [ ] Pending continuation in the family? Application No. ___
       [If yes, NEW CLAIMS THERE AVOID INTERVENING RIGHTS and
       the compressed schedule. This is usually the better
       tool.]
   [ ] Reissue available?

2. INTERVENING RIGHTS MODEL
   Are the substitute claims "substantially identical" to the
   originals? [ ] Yes [ ] No
   If NO:
     Past damages at risk: $__________
     Accrual period lost: ______ months
     Remaining damages if amended: $__________
   **Compare: value of the amended patent vs. value of the
   original patent if upheld × probability of being upheld.**

3. REQUIREMENTS
   [ ] Reasonable number of substitute claims (presumptively
       one per challenged claim)
   [ ] No broadening — confirm scope against every original
       claim
   [ ] Written description support identified by column and
       line for EVERY added limitation
   [ ] Responsive to a ground of unpatentability
   [ ] Duty of candor: address the prior art of record

4. PRELIMINARY GUIDANCE
   [ ] Use the Board's preliminary guidance procedure
   [ ] Plan for a revised motion in response

5. PATENTABILITY OF THE SUBSTITUTE CLAIMS
   Over the instituted art: ______________________
   Over other known art: ______________________
   [The petitioner may raise art not in the petition.]

6. DECISION
   [ ] File the motion
   [ ] File a continuation instead
   [ ] Neither

Drafting notes.

Section 2 is the analysis most patent owners skip. Winning the amendment and losing all past damages is a real outcome and it should be modeled in dollars before the motion is filed.

Section 1's continuation option is usually better where a family is still pending, and it argues for keeping continuations on file as a matter of portfolio hygiene.

Section 3's written description requirement is where motions fail on the papers. Identify support for every added word.

10. Dual-track consistency log

CONSISTENCY LOG — [Patent] — Owner: __________

| Date | Forum | Filing | Position taken | Term/issue |
  Consistent with prior positions? | Reviewed by |

POSITIONS TO TRACK
Claim construction — every term:
| Term | Position at the Board | Position in district court |
  Consistent? |

Expert statements:
| Expert | Statement | Where made | Any tension? |

Prior art characterizations:
| Reference | What we said it teaches | Where | Consistent? |

Accused product statements:
| Statement | Where | Consistent with our infringement
  position? |

REVIEW PROTOCOL
[ ] Every filing in either forum reviewed before service
[ ] One named owner: ______________
[ ] Escalation: any inconsistency to [lead counsel, both
    forums] before filing

Drafting notes.

This document exists because the failure is systematic, not occasional. Over eighteen months and fifteen filings across two tribunals with two teams, positions drift unless somebody's job is to prevent it.

The claim construction table is the critical one. A narrow construction at the Board to avoid art, and a broad one in court to capture the product, is the classic and fatal inconsistency.

11. Oral hearing preparation sheet

ORAL HEARING PREPARATION — [Proceeding No.]
Date: ______  Time per side: ______  Panel: ______

THE THREE POINTS I MUST MAKE
1. ______________________________________
2. ______________________________________
3. ______________________________________

THE HARDEST QUESTION IN THE CASE
Question: ______________________________
My two-minute answer: __________________
Record support: Ex. ____ at ____

RECORD MAP (by exhibit and paragraph)
Key reference passages: ______________________
Key declaration paragraphs (ours): __________
Key declaration paragraphs (theirs): ________
Key cross-examination admissions: ____________

DEMONSTRATIVES
[ ] Served [__] days in advance per the scheduling order
[ ] Contain NO new evidence or argument
[ ] Objections received and resolved

WHAT I WILL CONCEDE
______________________________________

WHAT I WILL NOT ARGUE
[ ] Facts outside the record
[ ] New grounds
[ ] Matters raised for the first time in a reply

12. Settlement provisions addressing the IPR

[In the settlement agreement:]

__. PTAB PROCEEDING. Within [five] business days of the
Effective Date, the Parties shall jointly file a request to
terminate IPR2___-_____ under 35 U.S.C. § 317, together with a
copy of this Agreement and any collateral agreements, as
required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74.

__. ACKNOWLEDGMENT. The Parties acknowledge that termination is
within the Board's discretion, that the Board may proceed to a
final written decision notwithstanding settlement, and that
this Agreement is not conditioned on termination.

__. IF THE BOARD PROCEEDS. If the Board declines to terminate
and issues a final written decision, [allocate the consequences:
does the license survive cancellation? does any payment
obligation change? who bears the cost of continued
participation?].

__. CONFIDENTIALITY OF THE FILED AGREEMENT. The Parties shall
jointly request that the Agreement be treated as business
confidential information and kept separate from the file under
37 C.F.R. § 42.74(c).

Drafting notes.

Termination after institution is not automatic. The Board may proceed in the public interest, particularly where the record is developed. The acknowledgment paragraph prevents a dispute about whether the settlement failed.

The "if the Board proceeds" paragraph is the one most often omitted and the one that matters if it happens. Decide in advance whether a license survives cancellation of the claims.

Filing the agreement is mandatory, including collateral agreements. The confidentiality request is routinely granted.

13. Quick reference

Question Answer Authority
Grounds available in an IPR §§ 102, 103 on patents and printed publications 35 U.S.C. § 311
Institution threshold Reasonable likelihood on at least one claim § 314(a)
Institution appealable? No Cuozzo; Thryv
Partial institution? No — all claims and grounds, or none SAS
One-year bar From service on any RPI or privy § 315(b)
Estoppel Raised or reasonably could have raised § 315(e)
When estoppel attaches Final written decision § 315(e)
Decision deadline 12 months from institution, +6 for cause § 316(a)(11)
Burden Preponderance § 316(e)
PGR window 9 months from issuance; post-March 2013 filings § 321
Appeal standard De novo on law; substantial evidence on facts § 319
Director Review Discretionary Arthrex

Related documents

This toolkit is general information, not legal advice, and does not create an attorney-client relationship. Templates require adaptation by counsel to the patent, the art, and the current state of Board practice.