The America Invents Act (AIA) created several new administrative trial procedures for reviewing the validity of issued patents before the Patent Trial and Appeal Board (PTAB). Inter partes review (IPR) is a procedure that allows third parties (i.e., not the patent owner) to challenge the validity of a patent based on prior art patents and printed publications. Generally, an IPR may be filed at any time, but an IPR cannot be initiated if either of the following are true: (1) the petitioner filed a declaratory judgment action challenging the validity of the patent, or (2) more than one year has passed since “petitioner, real party-in-interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”
IPR is similar to inter partes reexamination in that the petitioner maintains a role in the proceeding (as opposed to ex parte reexamination), but IPR has additional advantages for the petitioner. The IPR proceeding culminates in a bench trial before the PTAB. The evidence presented is drawn from both the record and limited discovery prior to the hearing. The time to final resolution is also shorter because appeals are direct to the Court of Appeals for the Federal Circuit.
Why are IPRs important? Because they provide a favorable forum to determine patent validity, before—and often in lieu of—more costly patent litigation. These proceedings have been highly successful for defendants, and must be considered an integral part of any litigation strategy.
IPRs are adversarial judicial proceedings, involving experts, depositions, and a bench trial. As such, they demand trial litigation experience. The best IPR lawyers are trial lawyers with a technological background and U.S. Patent and Trademark Office(PTO) experience – Akin Gump IP lawyers fit both categories. Nearly 80% of our IP lawyers hold technical degrees and 50% of our IP lawyers are admitted to the PTO. Our PTO lawyers are also litigators with adversarial experience that is essential for effective advocacy in IPR proceedings. Our intricate knowledge of the patenting process enables us to navigate the complex IPR procedures at the USPTO, which differ significantly from those in district court; our trial court expertise enables us to effectively present our clients’ positions to the PTAB. Our IP lawyers have handled IPR proceedings involving a range of complex technologies such as surgical and medical devices, biotechnology drugs, microprocessors, image processing and computer graphics, among others.
Further, our litigation experience also provides our IPR clients with a strategic advantage when the circumstances of a patent challenge involve parallel district court litigation. The interaction between the estoppel, real party-in-interest and stay provisions of the AIA, among others, have a substantial impact on the strategic concerns in parallel district court litigation. Our lawyers are well-versed in navigating these concerns and preparing optimal strategies at every stage of parallel district court litigation.
Source: Patent Trial Practice Guide, Vol. 77, No. 157 Fed. Reg. 48756, at 48757 (August 14, 2012)