IP Essentials: Q&A Series

Q Can a petitioner 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 victorious petitioner can invalidate some or all of the challenged patent and may obtain the benefit of avoiding some litigation costs and reducing or eliminating the risk of being found liable for infringing the challenged patent. But, the PTAB does not have the authority to grant other relief. In certain circumstances, if the petitioner goes on to win any related district court litigation, and the judge of that case decides to award the petitioner its attorneys’ fees, the court may consider the fees spent by the petitioner 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. Q If a party is unhappy with the PTAB’s institution decision, can they appeal? A No. Neither party can appeal the PTAB’s institution decision, or any decision that is closely related to the institution decision.

Q If a party is unhappy with the PTAB’s final written decision, can they appeal? A Yes. A party may appeal the PTAB’s final written decision. The appeal is made to the Court of Appeals for the Federal Circuit, which is the court designated to hear all appeals of patent-related matters. The appeal of an IPR decision proceeds in much the same way as an appeal from a decision by a court in litigation. Q Can parties settle an IPR? A Yes, with certain caveats. If the parties in IPR agree to settle their dispute, the PTAB will terminate the petitioner from the proceedings. If there are no petitioners left, then the PTAB may terminate the IPR. However, the PTAB can choose to continue the IPR even without the participation of any petitioner. This is unusual, because the PTAB has limited time. Q Can a person participate in an IPR filed by another person? A There is a limited right for third parties to join an IPR filed by another petitioner that has already been instituted by the PTAB. Joinder is accomplished by filing a separate petition for IPR, along with a motion for joinder. Such a motion cannot be used to raise new issues that were not part of the original IPR.

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