After an accused infringer files its IPR petition, it takes about six months for the PTAB—the government entity that evaluates IPRs—to grant or deny the petition.
The PTAB’s standard for institution is the “reasonable likelihood that [the] petitioner would prevail.” 35 U.
In contrast, the standard for an reexamination is whether a “substantial new question of patentability” has been shown.
., AIA Progress Statistics, aia_statistics_1_1_2015(87% in FY13 declining to 75% in FY14).
The PTAB initially granted most of the petitions it received, but lately it has become more selective and has rejected a growing number of petitions. Once the PTAB renders a final decision, however, the accused infringer is estopped from asserting in the pending litigation the prior art alleged in the IPR or art that the accused infringer “raised or reasonably could have raised” in the IPR.
The final decision may invalidate some or all of the claims, subject to appeal to the Federal Circuit.
Review (“IPR”) procedure for challenging the validity of patents. Indeed, recent reports indicate that district courts are granting or granting-in-part stays of cases pending the completion of an IPR at a rate of over 72%. But while the benefits of filing an IPR in a district court litigation are clear, in the ITC the benefits are less apparent. Preparation of an IPR will usually take a few months as the accused infringer will need to identify the best prior art and prepare the petition, including one or more expert declarations. The ITC, however, has never granted a stay of an ITC investigation based on an IPR petition.
IPRs allow an accused infringer in a pending litigation to separately challenge the validity of a patent to the Patent Trial and Appeal Board (“PTAB”), a division of the United States Patent and Trademark Office (“PTO”). Operating under a mandate that ITC investigations conclude “at the earliest practicable time” after an investigation is filed, patent litigation in the ITC typically runs less than two years. The cost of an IPR is not insubstantial—in many ways it’s a “mini-litigation” of its own, with its own hearing, and the combination of attorneys’ fees and expert fees can approach seven figures. The timeline for an IPR “start to finish” is approximately two years.
IPRs are an appealing alternative, in part because the standard for invalidating a patent in an IPR—preponderance of the evidence—is lower than the clear and convincing standard applied in district court actions. And the ITC has never stayed a case pending an IPR. An accused infringer often seeks a stay of pending litigation upon filing an IPR, at least for district court actions. Moreover, district court judges are often willing to stay the district court action until the IPR is complete. Thus, an ITC case will likely conclude before an IPR is resolved. The IPR validity challenge must be based on prior art patent(s) or printed publication(s); it cannot be based on a commercial device or system. Courts have granted or granted-in-part more than 72% of such stay requests. This article will consider the potential benefits and risks of filing an IPR concurrent with an ITC action. The Interplay Between An IPR is initiated by an accused infringer in a patent infringement action. The purpose is to challenge the validity of the asserted patent or patents. If considering an IPR, an accused infringer must file an IPR petition within one year of the filing date of the patent infringement action.