IP Essentials: Q&A Series

Q Under what circumstances will the PTAB institute IPR? A The PTAB is allowed to institute IPR if it determines that there is a reasonable likelihood that the petitioner would show

Q How can a patent owner amend its claims in IPR? A A patent owner can attempt to amend its claims by filing a motion at the time it files its patent owner’s response to the petition. Any proposed amendment must be narrower in scope than the unamended claims. Amended claims also cannot introduce new matter , meaning any amended claim must be fully supported by the written description of the originally-filed patent. The amendment must also be related to the challenges raised against the patent in the petition for review. And the patent owner must prove that the amended claims would be patentable over the prior art. Q Can a patent owner get damages or an injunction if they win an IPR? A No. IPR is solely focused on adjudicating the validity of the challenged patent. A petitioner cannot be found liable for infringement through IPR, and the patent owner cannot receive money damages or an injunction. In certain circumstances, if the patent owner goes on to win any related district court litigation, and the judge of that case decides to award the patent owner its attorneys’ fees, the court may consider the fees spent by the patent owner in IPR as part of that award. The award of attorneys’ fees in patent litigation is reserved only for exceptional cases, and should never be presumed.

"The PTAB’s au- thority to in- stitute IPR is discretionary, meaning it is never required to institute IPR even for peti- tions that meet the legal criteria for institution."

that at least one of the claims it has challenged would be unpatentable. A reasonable likelihood is a lower standard than preponderance of the evidence , but still requires a significant amount of proof.

Q Under what circumstances will the PTAB refuse to institute IPR? A The PTAB’s authority to institute IPR is discretionary, meaning it is never required to institute IPR even for petitions that meet the legal criteria for institution. The PTAB will exercise its discretionary authority to deny petitions for several reasons. If related district court litigation is very advanced, and concerns the same parties and the same issues, or if the petition meets the bare legal threshold for institution but is not very strong, then the PTAB may deny the petition. The PTAB will always deny a petition for IPR if it fails to meet the reasonable likelihood burden of proving that at least one challenged claim is unpatentable.




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