IP Essentials: Q&A Series

Q Is there any risk to patent owners in IPR? A Yes. A final written decision against the patent owner in IPR can invalidate a challenged patent claim, or even all the

the petitioner from making the same arguments to a district court. However, it is usually in the patent owner’s interest to not find itself in IPR under most circumstances. Q What can a patent owner do to avoid IPR? A The best way for a patent owner to avoid IPR is to have a strong patent that is not invalid over the prior art. If a petition for IPR has been filed against a patent, a patent owner may be able to avoid having the PTAB institute review by filing a strong preliminary response to the petition. Because the PTAB has discretion to refuse even meritorious IPR petitions, a patent owner should carefully weigh the factors the PTAB relies on in exercising that discretion. In general, the more advanced district court litigation is by the time a petition is filed, the less likely a judge is to stay , or pause, litigation in court in favor of IPR, and the weaker the arguments in the petition are for invalidating the patent, the less likely it will be for the PTAB to institute IPR. Q Is there any risk to a defendant in district court litigation if the defendant petitions for IPR? A There is some risk. Congress did not want IPR to simply be a second opportunity for defendants who have challenged the validity of a patent in district court. If the PTAB issues a final written decision that does not invalidate a patent claim, then the petitioner is barred from challenging that same claim in district court litigation on any ground that reasonably could have been raised in IPR. A party can mitigate their risk by arguing grounds of invalidity in the litigation that could not have been raised in IPR.

“Neither party can appeal the PTAB’s institution decision, or any decision that is closely related to the institution decision.”

claims of a patent. Subject to any right to appeal, a patent that is invalidated by the PTAB will be invalid for all purposes. It cannot be asserted against any alleged infringer again.

Q How expensive is IPR

compared to district court litigation? A IPR was designed to be a less expensive alternative to district court litigation. Under normal circumstances, IPR may only cost a small fraction of what it would cost to litigate a patent infringement case through trial. However, the costs of IPR are front-loaded for petitioners. The petition must contain complete arguments, with full evidentiary support, which requires a large investment of time and energy that might otherwise be developed over a longer period in litigation. The fee for filing a petition also costs many thousands of dollars. Although, a portion of the filing fee can be refunded if the petition is denied.

IP ESSENTIALS: INTER PARTES REVIEW

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