one-year time restriction if the joinder
does not conflict with the interests of a
speedy and just proceeding. Filing for
joinder later in the proceedings (more
than one month after institution of the
IPR) may result in the denial of the
request for joinder.
not be able to use joinder to fix errors by
filing a new petition after the one-year
time limit has expired.
over two years ago, these proceedings,
particularly IPR, have become popular
tools for invalidating patent claims
before or after the initiation of a lawsuit
in federal court. The rate of IPR petitions
filed has steadily increased, reaching
an average of six per day in December
2014. As of January 1, 2015, a total
of 2,299 requests for IPR have been
filed.
invalidation tool by such companies as
Apple, Samsung, Google, Medtronic,
Microsoft and Ford.
cost when compared to civil litigation
makes IPR attractive to many. Plus,
a stay of concurrent litigation may be
available, especially if an IPR request
has been granted. The current rate of
granted stay requests is 82 percent.
The results of IPR proceedings also
make IPR attractive to many patent
challengers. According to a recent study,
the Board has granted 84 percent of
requests for IPR. Strikingly, of those
IPRs that have reached a final decision
on the merits, more than 77 percent
of the time all claims under review
have been invalidated or disclaimed.
IPR a significant weapon for patent
challengers.
Proceedings
however, procedurally complicated.
They are administrative proceedings,
and thus, subject to different procedural
rules, standards of review, and pleading
standards, than those applied in
traditional patent litigation. For example,
to institute an IPR, the requester must
show a reasonable likelihood that they
will prevail with respect to at least one of
the challenged claims.
standard of review is the same as that
applied during patent prosecution i.e.,
the broadest reasonable construction
of the terms of the claim which
substantially differs from the standard
used in litigation.
toward facilitating the Board's statutory
mandate for speed and efficiency.
Length limitations of briefs are strict,
discovery is extremely limited, and the
Board must give permission before any
motion may be filed. Early indications
are that the Board will strictly adhere
to its procedural rules regarding IPR,
and reject requests and filings that fail
to comply with its rules. For example,
the Board has denied requests for IPR
on purely procedural grounds, such as
poor drafting of the request. In light of
these procedural hurdles, it is important
to retain counsel familiar with post-grant
proceedings.
Post-grant proceedings are not
without risks or consequences. For
example, prior art references used in an
IPR that reaches a final determination
cannot be used by the requester in
later civil litigation of the same patent.
patent claims may be amended during
the proceedings (though with some
holds the challenged claims valid, this
may have an impact on concurrent civil
litigation.
Since these patent post-grant
proceedings are still relatively new,
procedures and interpretations by the
Board continue to change as cases
make their way through the USPTO and
the Federal Circuit Court of Appeals.
Although the Board has begun to issue
informative opinions, at the time of this
writing, it has not issued precedential
opinions regarding many key issues
surrounding IPR.
In light of the continuing gains
in popularity of patent post-grant
proceedings, it is important to take
the time to prepare for the use of,
and defense against, this new patent
invalidity strategy.
Reg. 48,756 (Aug. 14, 2012) (codified at 37 CFR Part
42); Rules of Practice for Trials Before the Patent Trial
and Appeal Board and Judicial Review of Patent Trial
and Appeal Board Decisions, 77 Fed. Reg. 48,612
(Aug. 14, 2012) (codified at 37 CFR Parts 1, 42,
90); and Changes to Implement Inter Partes Review
Proceedings, Post-Grant Review Proceedings, and
Transitional Program for Covered Business Method
Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012) (codified
at 37 CFR Part 42).
Transitional Program for Covered Business Method
Patents, 77 Fed. Reg. 48,680, 48,688 (Aug. 14, 2012)
(codified at 37 CFR Part 42).
4. Available from the USPTO at http://www.uspto.gov/ip/
Covered Business Method Review," Published July 3,
2014, available at http://interpartesreviewblog.com/
ptab-warriors-top-10-petitioners-inter-partes-covered-
business-method-review/.
Rev Dialogue 93 (2014) [Essay].
8. Changes to Implement Inter Partes Review
Transitional Program for Covered Business Method
Patents, 77 Fed. Reg. 48,680, 48,688 (Aug. 14, 2012)
(codified at 37 CFR Part 42).