What is an Inter-Partes Review (IPR)?
Inter-partes review (IPR) is an adversarial proceeding before the Patent Trial & Appeals Board (PTAB) of the United States Patent & Trademark Office (USPTO), in which a petitioner challenges the patentability of one or more claims in an issued US patent.
Other types of post-grant proceedings before the USPTO include ex-parte reexamination, post-grant review (PGR), and covered business method (CBM) patent review.
Who Can File an Inter-Partes Review?
Anyone can file a petition for inter-partes review, unless that person has already challenged the validity of the patent in a civil suit, or is also the patent owner.
Potential Consequences; Should You Petition for Inter-Partes Review?
Inter-Partes Review Advantages to Petitioner
No Presumption of Validity: Unlike in patent litigation proceedings before a district court, the patent is not presumed valid by the PTAB in an IPR proceeding.
Lower Evidentiary Burden: An IPR petitioner need only prove that the challenged patent claims are not patentable by a preponderance of the evidence, whereas in invalidity proceedings before a federal district court proof of patent claim invalidity must be made by the higher evidentiary standard of clear and convincing evidence.
Lower Cost: The cost of legal representation through trial in an IPR proceeding typically sums to only a fraction of that of invalidity proceedings before a federal district court.
Faster Result: The PTAB is statutorily required to reach a final decision in IPR proceedings within 12 months of institution, whereas invalidity procedings in federal district court can take far longer to reach a conclusion.
Two Bites at the Apple: By filing an IPR petition, a litigant accused of patent infringement can get two different judicial forums to consider revoking the asserted patent claims. The litigant can first prompt the PTAB to consider unpatentability over prior art publications, via the IPR petition. The litigant can later prompt a federal district court to consider invalidity of the same patent claims over prior products, indefiniteness, non-enablement, and/or inequitable conduct (depending on the facts).
Settlement Leverage: The risk of patent loss introduced by an instituted IPR proceeding can create alternative dispute resolution (ADR) settlement leverage against a licensing entity that may not be not vulnerable other types of litigation counter-claims.
Inter-Partes Review Disadvantages to Petitioner
Scope: An IPR petitioner may challenge patentability of patent claims as allegedly anticipated or obvious over prior printed publications and patents (i.e. under 35 U.S.C. §§ 102 or 103). However, if the primary evidence of invalidity of the patent claims is anticipation or obviousness over prior products, indefiniteness, non-enablement, or unenforceability due to inequitable conduct, then the broader scope of invalidity proceedings in federal district court would be required, as such grounds for challenge cannot be raised in an IPR proceeding.
IPR Estoppel: Upon conclusion of the IPR trial, which results in a final written decision from the PTAB, the petitioner is subsequently estopped from raising any grounds of invalidity in district court that the petitioner raised or could have raised in the IPR. Often this can practically prevent the petitioner from later alleging invalidity over prior art printed publications in district court or in other post grant proceedings before the PTAB. The prospect of this estoppel can be of high strategic importance to both parties from the outset, and so is nearly always an initial consideration in the decision of whether to petition for IPR.
Inter-Partes Reveiw Procedural Steps and Timeline
Deadline to Petition: An IPR petition may be filed as early as nine months after the subject patent’s issue date, and cannot be filed later than 12 months after the petitioner has been served with a complaint of patent infringement.
IPR Petition Content: The petition must identify all real parties in interest, state the petitioner’s grounds for standing, name the statutory basis for alleged unpatentability of each challenged claim, include the evidence to be relied upon and any supporting expert declaration, describe how each of the challenge claims should be construed, explain how the construed claims are unpatentable over the printed prior art according to the evidenced relied upon (this can be in the form of a claim chart), and be accompanied by payment of the USPTO petition fees. The petitioner must serve the IPR petition and accompanying exhibits upon the patent owner at the correspondence address of record for the subject patent
Importance of Pre-petition Prior Art Search: It is very important that a thorough search of printed prior art publications be performed prior to drafting and filing an IPR petition, in view of the potential scope of IPR estoppel. If the IPR concludes with a final decision by the PTAB, thereafter the petitioner will likely be estopped from raising prior art printed publications to invalidate the asserted patent claims in any federal district court or in other post-grant proceedings before the PTAB.
Patent Owner’s Preliminary Response
Optional: The patent owner may respond initially to the petition by optionally filing a preliminary response to persuade the PTAB to not institute the inter-partes review. The PTAB has discretion under 35 U.S.C. § 314 whether or not to institute an inter-partes review in response to a petition.
Purpose and Focus: The arguments in a patent owner’s preliminary response, and therefore its supporting evidence, should be selected and focused on non-institution. For example, alleging redundancy of the prior art with that previously considered by the USPTO examiner (when originally allowing the challenged patent claims), may be an argument relevant to non-institution. Later, if the inter-partes review is instituted, such an argument may be less persuasive to show why the patent owner should win.
Institution of Inter-Partes Review
Standard: An IPR should be instituted if the PTAB considers the petition to have demonstrated that there is a reasonable likelihood that at least one challenged claim will be found unpatentable at trial.
New Rule: The Supreme Court recently ruled in SAS Institute v. Iancu that the PTAB must institute on all claims challenged in the petition, or none. The PTAB previously employed partial institutions to reduce the workload to consider allegedly-redundant grounds presented in the petition. There was then a risk that stronger grounds may get ignored, if the petition included weaker grounds.
Same Best Practice: A petitioner still should limit the petition to only solid grounds for challenge on the strongest prior art, to guard against the possibility that the PTAB may avoid consideration of redundant or weak grounds by using its discretion under 35 U.S.C. § 314 to decline to institute on all grounds.
Patent Owner’s Motion to Amend
Optional: After IPR institution, a patent owner has an opportunity to optionally move to amend the challenged claims in response to the petition.
Rarely Used: Motions to amend are rarely utilized by patent owners, perhaps because amending a claim may preclude seeking monetary damages for past infringement (prior to amendment).
Patent Owner’s Response
Purpose and Focus: If the PTAB institutes the IPR, then the patent owner has an opportunity to prepare and file a response to the petition. The arguments in a patent owner’s response, and therefore its supporting evidence, should be selected and focused on why the patent owner should ultimately prevail despite institution.
Common Arguments: For example, common arguments in the patent owner response may point out specifically how the prior art fails to disclose or suggest the claim requirements as properly construed. The patent owner’s response may also allege omissions or evidentiary shortcomings in the petition as originally filed.
Leveraging Preliminary Response: Normally there will be substantial overlap in the content of the patent owner’s preliminary response, relative to the later-filed patent owner’s response, but because the former is focused on non-institution while the latter assumes institution, these responses are typically not identical.
Purpose: After the patent owner has filed the response to the petition, the petitioner is given an opportunity to prepare and file a reply to the patent owner’s response.
Scope Limitation: The scope of the petitioner’s reply and its supporting evidence is limited to rebutting the patent owner’s response. The petitioner cannot introduce new arguments and evidence in the reply merely to correct omissions in the original petition (or circumvent its page limits), but can introduce new evidence as required to rebut arguments raised in the patent owner’s response.
The parties to an inter-partes review can request oral argument before the PTAB administrative judges.
Demonstrative exhibits are usually served on the opposing party prior to oral argument, to provide opposing parties the opportunity to object to content therein. For example, it would be objectionable for either party to introduce new evidence or arguments at the oral argument via the demonstrative exhibits, since the opposing party would not have had a prior procedural opportunity to respond to such new evidence or arguments.
Discovery, Depositions, and Motion Practice in Inter-Partes Review
Typically, an IPR petitioner and the patent owner each employ expert witnesses to provide factual declarations and interpret evidence, for example in support of the petition, the patent owner response(s), or the petitioner’s reply. Each party is afforded an opportunity to cross-examine the opposing party’s declarants via deposition. IPRs have special rules limiting the opportunities for defending attorneys to coach declarants during deposition.
Objections to Evidence
Each party in an IPR proceeding can object to the admissibility of evidence relied upon by the other party, and the party proffering the evidence may then file supplemental evidence in support of admissibility.
Motions to Exclude
Each party in an IPR proceeding may move to exclude evidence relied upon by the other party, after which the party proffering the evidence may file an opposition to the motion(s) to exclude.
BHW IPR Services
BHW attorneys are experienced and competent in representing petitioners and patent owners in several inter-partes review proceedings, and in defending favorable PTAB decisions in subsequent appeals. We can knowledgeably and effectively handle all aspects of client representation in IPR proceedings, including petitions, patent owner responses, expert declarations and depositions, replies, evidentiary disputes, and oral arguments.