Inter Partes Review (IPR)
Inter partes review (IPR) is an adversarial proceeding before the Patent Trial & Appeal 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 U.S. patent. Unlike traditional patent litigation in federal district court, IPR is conducted as an administrative trial and is limited to challenges based on prior art patents and printed publications.
Other types of post-grant proceedings before the USPTO include ex parte reexamination, post-grant review (PGR), and covered business method (CBM) patent review.
At Barceló, Harrison & Walker, LLP, we have extensive experience representing both petitioners and patent owners in inter partes review proceedings. Our attorneys understand not only the legal standards governing IPR practice, but also the technical details that often determine whether a challenged patent claim survives. We represent clients across a wide range of technologies and have experience handling IPR proceedings through institution, trial, oral hearing, and appeal.
Inter partes review proceedings are often initiated in parallel with district court patent litigation, and frequently play a major role in shaping litigation strategy, settlement leverage, and the ultimate enforceability of patent claims. Because IPR estoppel can have significant long-term consequences, a decision to file an IPR petition should be made only after careful evaluation of the prior art, the asserted patent claims, and the broader litigation or licensing context.
Who Can File an Inter Partes Review?
In general, any person or entity may file a petition for inter partes review, unless that party is the patent owner or has already filed a civil action challenging the validity of the patent.
Because IPR is often used strategically by accused infringers, petitioners frequently file IPR petitions after being accused of infringement or after being served with a complaint in federal district court. However, IPR petitions are also filed by companies seeking to clear the field before launching products or entering markets where patent enforcement risk is high.
Potential Consequences: Should You Petition for Inter Partes Review?
Inter partes review can be a powerful mechanism for challenging patent claims, but it is not always the best approach depending on the nature of the prior art and the defenses available. The decision to petition should consider both the potential benefits and disadvantages.
Inter Partes Review Advantages to Petitioner
No Presumption of Validity
Unlike invalidity defenses in federal district court, where issued patent claims are presumed valid, an IPR proceeding does not apply the same presumption of validity in the PTAB’s analysis.
Lower Evidentiary Burden
An IPR petitioner must prove unpatentability only by a preponderance of the evidence. In contrast, a party challenging patent validity in district court must prove invalidity by clear and convincing evidence.
Lower Cost
The cost of legal representation through trial in an IPR proceeding is often significantly lower than the cost of full-scale district court litigation.
Faster Result
The PTAB is statutorily required to issue a final written decision within 12 months after institution. By comparison, patent litigation in district court often takes multiple years to reach trial and final judgment.
Two Bites at the Apple
By filing an IPR petition, an accused infringer may obtain a ruling from the PTAB on unpatentability over printed prior art, while still preserving the ability to litigate other invalidity defenses in district court such as indefiniteness, lack of enablement, inequitable conduct, or invalidity based on prior products (depending on estoppel and case-specific facts).
Settlement Leverage
The risk of patent claim cancellation introduced by an instituted IPR can create significant settlement leverage, particularly where a patent owner may not be vulnerable to other litigation counterclaims.
Inter Partes Review Disadvantages to Petitioner
Limited Scope of Challenge
An IPR petition may challenge patent claims only under 35 U.S.C. §§ 102 and 103, and only based on prior patents and printed publications. If the strongest invalidity defenses involve prior products, lack of enablement, indefiniteness, or inequitable conduct, those issues cannot be raised in an IPR proceeding.
IPR Estoppel
After a final written decision, the petitioner is estopped from raising in district court any grounds of invalidity that were raised or reasonably could have been raised in the IPR. This can significantly limit later defenses, particularly those based on prior art patents and printed publications. Estoppel is often one of the most strategically important considerations from the outset of an IPR proceeding.
Inter Partes Review Procedural Steps and Timeline
Inter partes review proceedings are governed by strict procedural rules and accelerated deadlines. These deadlines and requirements require careful preparation and early strategic planning.
Petition
- Deadline to Petition: An IPR petition may be filed as early as nine months after the subject patent issues. However, if the petitioner has been served with a complaint for patent infringement, the petition must be filed within 12 months of service.
- IPR Petition Content: An IPR petition must identify all real parties in interest, state the grounds for standing, identify the statutory basis for unpatentability, include supporting evidence such as patents and printed publications, and often include expert declarations. The petition must explain how each challenged claim should be construed and how the prior art renders each challenged claim unpatentable. This analysis is often supported through detailed claim charts. The petition must be accompanied by payment of USPTO petition fees and must be served upon the patent owner at the correspondence address of record.
- Importance of Pre-Petition Prior Art Search: A thorough printed prior art search is critical before filing an IPR petition. Because IPR estoppel may prevent later reliance on printed publications in other proceedings, petitioners should ensure that the petition is based on the strongest prior art available and that key prior art is not overlooked.
Patent Owner’s Preliminary Response
- Optional: A patent owner may file a preliminary response to the petition before the PTAB decides whether to institute trial.
- Purpose and Focus: The preliminary response is typically focused on persuading the PTAB to deny institution. For example, a patent owner may argue that the petition fails to meet the statutory standard, that the prior art is redundant of prior art previously considered during examination, or that the petitioner has not shown a reasonable likelihood of success.
Institution of Inter Partes Review
- Standard: The PTAB may institute an IPR trial if it determines that the petition demonstrates a reasonable likelihood that at least one challenged claim is unpatentable.
- SAS Institute v. Iancu: Under the Supreme Court’s decision in SAS Institute v. Iancu, the PTAB must institute review on all challenged claims or none. The PTAB previously used partial institution to narrow issues. Although partial institution is no longer permitted, petitioners should still limit petitions to strong and well-supported grounds to avoid institution denial based on weak or redundant arguments.
Patent Owner’s Motion to Amend
- Optional: After institution, the patent owner may file a motion to amend the challenged claims.
- Rarely Used: Motions to amend are relatively uncommon, often because amending claims may affect the ability to recover monetary damages for past infringement and because the PTAB applies strict standards to amended claims.
Patent Owner’s Response
- Purpose and Focus: If the PTAB institutes trial, the patent owner may file a response addressing the merits of the unpatentability challenges. The response is typically supported by expert testimony and evidence.
- Common Arguments: Patent owners frequently argue that the prior art does not disclose one or more claim limitations, that the petition misinterprets claim language, or that the petition lacks sufficient evidentiary support.
Petitioner’s Reply
- Purpose: After the patent owner response, the petitioner may file a reply addressing the arguments raised by the patent owner.
- Scope Limitation: The petitioner’s reply is limited to rebuttal and cannot introduce entirely new theories or evidence that should have been included in the petition.
Oral Argument
- Either party may request oral argument before the PTAB administrative judges. Demonstrative exhibits are typically exchanged in advance and may be challenged if they improperly introduce new evidence or arguments not previously presented in briefing.
Discovery, Depositions, and Motion Practice in Inter Partes Review
Although IPR proceedings are streamlined compared to district court litigation, discovery and motion practice are still critical components of the trial process.
Depositions
Expert declarations are often central evidence in IPR proceedings. Each party may depose the opposing party’s declarants. IPR depositions are governed by PTAB rules, including limitations on attorney coaching and other deposition conduct.
Objections to Evidence
Parties may object to evidence relied upon by the opposing party. The party submitting the evidence may respond with supplemental materials to support admissibility.
Motions to Exclude
After briefing is complete, parties may file motions to exclude evidence. Oppositions and replies follow, and evidentiary disputes may be resolved as part of the PTAB’s final written decision.
BHW IP Law IPR Services
Barceló, Harrison & Walker, LLP attorneys are experienced and competent in representing both petitioners and patent owners in inter partes review proceedings, including proceedings that proceed to oral hearing and appeal.
We can knowledgeably and effectively handle all aspects of representation in IPR proceedings, including preparation and filing of petitions, patent owner responses, expert declarations and depositions, petitioner replies, evidentiary disputes, oral argument preparation, and defense of favorable PTAB outcomes on appeal.
Get Guidance from Intellectual Property Experts
If you are in need of advice or services related to inter partes review proceedings or post-grant patent challenges, please feel free to contact us.
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