IP Essentials: Q&A Series

Q Why would a person consider IPR if they can make the same arguments in court? A The burden of proof for invalidating a patent is lower in IPR relative to district

the prior art. And PTAB will only consider prior art evidence in the form of patents and printed publications. In district courts, an accused infringer can challenge the patent under any ground recognized by law, including grounds that attack the sufficiency of the specification, or that allege that the patent claims things that could never be entitled to patent protection. Q Are there any advantages to IPR for petitioners? A Yes. The lower burden of proof can make it easier to invalidate a patent in IPR compared to litigation. The PTAB may also have a better understanding of patent law and many types of technology than some district court judges, which can be advantageous to challengers of weak patents. IPR can also cost significantly less than litigation in court. And, because IPR is solely focused on the validity of the challenged patent, whether or not the petitioner infringes the patent is not something the PTAB can consider. Where a petitioner has good reason to believe that a patent is invalid, it is usually in their interest to petition for IPR. Q Are there any advantages to IPR for patent owners? A IPR provides some advantages to patent owners. The patent owner can try to amend their claims once in IPR, which cannot be done at all in litigation. The PTAB may also have a better understanding of patent law and many types of technology than some district court judges, which can be advantageous to the owners of strong patents. A final written decision in favor of the patent owner in IPR will also prevent

“The lower burden of proof can make

courts. A claim in IPR will be invalidated if the challenger proves it is unpatentable by a preponderance of the evidence . Preponderance of the evidence means the patent is more likely invalid than not. The burden of proof is higher in district courts because courts presume that the USPTO did its job correctly when it issued a patent. A patent challenged in district court will only be invalidated based on clear and convincing evidence . Clear and convincing evidence means proof that the patent is substantially more likely to be invalid than not. Q Are there limitations to filing for IPR compared to challenging validity of a patent in court? A IPR is more limited than the courts in terms of the evidence that can be presented. A petitioner can only challenge a claim in IPR by arguing that it is anticipated or obvious over it easier to inval- idate a patent in IPR compared to litigation...Where a petitioner has good reason to believe that a patent is invalid, it is usually in their interest to petition for IPR.”

IP ESSENTIALS: INTER PARTES REVIEW

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