Patent Counsel

Arent Fox's patent law blog examines the latest news, trends, and legal developments in the patent world.

Patent Counsel

Inter-Partes Review

The new Inter-Partes Review (IPR) procedure went into effect on September 16, 2012 and replaces the previous inter-partes reexamination practice. An IPR can be filed for any currently issued patent. For patents that have an effective filing date of March 16, 2013 or thereafter, IPR can be initiated after nine (9) months after the grant of a patent or after completion of PGR of the patent. If used to challenge a patent after litigation has commenced against a party, an IPR must be filed within twelve (12) months of the complaint being served against the petitioner or the real party of interest. To successfully petition for an IPR the challenger must show in a petition for the IPR that there is a “reasonable likelihood” that at least one claim of the challenged patent is invalid.

An IPR will be unavailable if the petitioner or real party of interest has filed a civil action challenging the validity of the patent before filing the petition for IPR. Unlike PGR, an IPR can only be brought only on grounds that a patent is invalid as being anticipated (Section 102) or obvious (Section 103) based on patents and printed publications. Like PGRs, the PTAB must issue a final written decision within one (1) year of a decision on the petition, which can be extended up to six (6) months for good cause. A major difference between IPR and the previous inter-partes reexamination is that the PTAB sets a case schedule to permit limited discovery and allow for depositions of witnesses who submit affidavits. The estoppel effect of IPR is more limited than PGR since the petitioner, privy or real party of interest can only raise patents and printed publications, but will be estopped in future proceedings based on any ground the “petitioner raised or reasonably could have raised during the inter-partes review.”

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Recent PTAB Decisions on Motions for Additional Discovery

On a motion for additional discovery, various factors inform the Board’s determination of whether the discovery requested meets the standard of “necessary in the interest of justice” under 35 U.S.C. § 316(a)(5), including the factors set forth in Garmin Int’l., Inc. v. Patent of Cuozzo Speed Techs, LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper No. 26) slip. op.

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Joinder Decisions

An inter partes review challenging the validity of a patent is normally barred after one year from service of a complaint. However, 35 USC § 315(b) indicates that the time limit doesn’t apply to a motion to join, which has been interpreted to allow filing an IPR after one year with a motion to join the other IPR. The window for doing this is within one month of institution of the IPR to be joined (37 CFR § 42.122(b)). This situation often occurs in multicase, multidefendant litigation.

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USPTO’s Decision to Not Institute Inter Partes Review of a Patent is Final and Nonappealable

Addressing 35 U.S.C. § 314(d), the US Court of Appeals for the Federal Circuit (the Federal Circuit) determined that, in recent precedential orders in inter partes review proceedings, the Federal Circuit does not have authority to hear appeals of the United States Patent & Trademark Office (USPTO) decisions to not institute inter partes review of an issued patent. St. Jude Medical v. Volcano Corporation (Fed. Cir. Order, April 22, 2014) (Prost, O’Malley, Taranto, J.).

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