Is IPR (Inter Partes Review) a Better Way to Defend a Patent Infringement Lawsuit?

Inter Partes Review, or IPR, is a mini-trial held before the USPTO’s Patent and Trial Appeal Board (PTAB) to cancel specific claims of a patent on the grounds of invalidity – i.e., that the patent claims nothing new in view of the prior art. The timeframe, scope of discovery and costs of an IPR are significantly lesser than those of a patent infringement lawsuit in federal court, due to a combination of strict regulations and a sole focus on the (in)validity of the patent. Think of IPR as USPTO litigation to strike down some or all of a patent’s claims based on prior art.

If an accused infringer succeeds in canceling patent claims through an IPR, there may be little to nothing left to litigate in federal court. Even a partial IPR victory can significantly impact the corresponding federal court litigation as a result of fewer claims and/or legal positions taken during the IPR which may prevent a subsequent flip-flop by the patent owner in the federal case. In the vast majority of patent cases in district court, federal judges have willingly granted stays of the patent lawsuit pending the outcome of the IPR. It makes sense – why force the parties to expend significant resources to litigate in federal court a patent that may ultimately be invalidated?

A IPR petition may be filed by any person who is not the patent owner and who has not filed a civil lawsuit challenging the validity of the patent. As we’ll discuss separately, the key to a successful IPR petition lies in good prior art which results from an early and significant investment in thorough prior art searching.

IPR proceedings are available 9 months after the grant date for patents issued under the AIA first-to-file rules, and for all patents filed before the first-to-file rule took effect. A petition for IPR must be filed within one year from the date of service of a patent infringement complaint. The USPTO will take up to 6 months to decide whether or not to grant the IPR petition. If granted, the IPR proceeding will conclude in one year from the institution decision.

The final decision is rendered by three administrative PTAB judges with technical expertise.

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