POST-ISSUANCE INTER PARTES REVIEW

An inter partes review (IPR) is a quasi-litigation process before the United States Patent and Trademark Office (USPTO) forum designed to streamline patent challenges.  Reviews are held before a panel of administrative patent law judges with the Patent Trial and Appeal Board (PTAB) at the USPTO.   The Inter partes review was designed to be a more effective alternative to Federal district court patent litigation and is intended to end litigation by invalidating the certain claims quickly. For instance, the burden for proving invalidity in an IPR reexamination is  a “preponderance of the evidence” standard; however, Federal district court judges are bound by the “clear and convincing” standard to invalidate a patent.  Those same judges required to afford the patent a presumption of validity is something that the USPTO is not required to do in an inter partes review.   For an overview of the inter partes review process timeline, see our Inter Partes Review Timeline web page.

Inter partes review is often used in the context of litigation, and given a defendant is facing patent litigation in district court, he or she can file a petition with the USPTO for inter partes review within twelve months of the initial filing of that litigation. However, for the Inter partes petitioner to be successful, a district court judge must first be convinced to stay the pending litigation. Certain district court judges have been reluctant to stay litigation for concurrent reexamination proceedings, particularly in jurisdictions with a fast-paced docket, due to the concern that reexamination may take too long; however, an Inter partes review has accelerated time frames, and often it is more logical for a judge to stay a case pending the outcome of the IPR. 

Inter Partes Review Without Litigation 

Any petitioner wishing to challenge the validity of another’s patent has the opportunity to do so through an IPR petition proceeding regardless of whether they are faced with a patent infringement suit. Thus, even if a company does not have the standing to bring a declaratory judgment action in Federal district court, a company that feels threatened by a competitor’s patent can bring an inter partes review in this quasi-litigation setting that includes limited discovery and motions – all the attributes of having a litigation-type proceeding to vet the issues thoroughly and an important consideration in any high-stakes invalidity contest.  Further, any petitioner who files an inter partes review petition may only request to cancel one or more claims of an issued patent on the grounds of anticipation and/or obviousness using patents or printed publications (35 U.S.C. §§ 102 or 103).

Dallas Inter Partes Review Lawyers

Our Dallas Inter Partes Review attorneys have earned a reputation for aggressive, responsive, efficient, and most importantly, successful litigation. While we are prepared to take every case to trial, we know from our clients' perspective that often, the best litigation is the one that settles in mediation. Our straight forward unbiased guidance can help you avoid litigation whenever possible. However, if needed, our litigators are skilled in negotiation techniques and have a reputation for achieving very favorable results for our clients both in-court and out-of-court.  Our IP lawyers can prepare and file inter partes review petitions and prepare your for crucial aspects of an IPR:

1. Purpose: IPR is a procedure conducted by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). Its primary purpose is to provide a mechanism for challenging the validity of an issued patent based on prior art, typically prior patents or publications.
2. Grounds for Review: IPR can be initiated based on prior art that raises questions about the validity of one or more claims of a patent. The petitioner must demonstrate a reasonable likelihood of prevailing on at least one claim of unpatentability.
3. Procedure: The procedure for IPR involves filing a petition with the PTAB, followed by a review process that includes briefing, discovery, and possibly oral hearings. Both the petitioner and the patent owner have opportunities to present evidence and arguments.
4. Timing: There are strict timing requirements for filing an IPR petition. Generally, it must be filed within nine months of the patent grant or the termination of any post-grant review proceedings, whichever is later.
5. Effects: If the PTAB determines that one or more claims of the patent are unpatentable, those claims may be cancelled or amended. IPR provides a faster and more cost-effective alternative to traditional litigation for challenging patent validity.
6. Estoppel: One important aspect of IPR is that it can have estoppel effects on the petitioner. This means that if certain issues were raised or reasonably could have been raised during the IPR proceeding, the petitioner may be estopped from raising those issues in subsequent litigation.