Inter Partes Review: The Year in Review

January 8, 2014

In this webinar, the co-chairs of Fish & Richardson’s post-grant practice discussed significant developments in IPR practice that took place during 2013. They addressed questions such as: What have we learned about this tool? What can we expect going forward?

The discussion included a review of significant PTAB rulings, as well as practice tips and pointers.

Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
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Webinar Summary

  • Timeline of Proceedings
    • PTAB appears to be completing trials in less than 1 year statutory limit for trial (from date of institution decision)
    • Achieved by compressing schedule relative to standard 18 month timeline (e.g., 15-17 months from filing of petition)
      • Accelerated speed arguably makes it even more likely that a litigation defendant / IPR petitioner can obtain a stay of counterpart infringement litigation
  • Institution Standard – Reasonable Likelihood of Success
    • Seems to be a low threshold – reason for most petitions being granted
    • “Newness” requirement of reexamination does not exist in AIA post grant proceedings (Macauto USA v. Bos GmbH)
    • PTAB appears to be digging down into the nitty gritty details of references and evidence in rendering decisions
  • Redundancy
    • PTAB has established a frame-work in which it is almost assured that if petition asserts multiple grounds of rejection on the same claim, that at least one of them will be denied as redundant
      • Burden is on petitioner to show why such rejections should not be denied as redundant (e.g., different claim constructions may make one ground superior to the other and vice versa)
      • Two types of redundancy
        • Vertical:  Claim 1 is anticipated by Ref A, and Claim 1 is obvious in view of A+B
        • Horizontal: Claim 1 is anticipated by Ref A, and Claim 1 is anticipated by B
    • Result: Almost every institution decision denies at least some proposed grounds as redundant
    • Takeaway: Whittle down your asserted grounds only to the very best ones (or one) and use your limited number of pages (60 for IPR; 80 for CBM) to make the best possible arguments on those limited grounds.
    • Open issue whether petitioner will be estopped on grounds denied as redundant
  • Discovery
    • Well-advised to read leading case: Garmin Int’l v. Cuozzo Speed Tech., IPR2011-00001 (PTAB Mar. 5, 2013)
    • By design, discovery is very limited relative to civil litigation discovery
      • Rationale is to keep proceedings streamlined, relatively inexpensive, and on track to stay within 1 year time limit
    • Types of discovery
      • Routine – essentially just the ability to depose the other party’s declarants.
      • By agreement of the parties
      • Additional – only on a showing that additional discovery sought is “in the interests of justice”
        • fishing expeditions not allowed – need to already know what  & where information is
        • Rarely granted
  • Claim Amendments
    • Well advised to read leading case:  Idle Free Systems v. Bergstrom, IPR2012-00027 (PTAB June 11, 2013)
    • Very limited ability to amend relative to regular prosecution, reissue, or reexam
    • One-to-one substitution of claims only
    • Patent Owner has burden to explain how amended claim is patentable over all prior art known to patent owner (not just the prior art of record in the proceeding)
    • 15 page limit makes it challenging to fit in all that Idle Free decision requires
    • Contingent motions to amend are allowed (i.e., motion will be decided only if original claim is found to be unpatentable)
  • Update on Post Grant Statistics
    • 794 IPRs filed through December 2013
    • 104 CBMs filed through December 2013
    • IPR / CBM instituted in almost all cases but almost always with (significantly) pared down grounds and/or claims
      • Institution decision usually turns on claim construction
    • Technology Breakdown
      • 71% electrical / computer
      • 14% mechanical
      • 8% chemical
      • 6% bio / pharma
      • 1% design
  • Bio / pharma filings likely to grow in 2014
  • Stays in related district court proceedings
    • Granted ~72% ; Denied ~28%
      • Many of the denials are without prejudice because request for stay was  filed prematurely (i.e., before PTAB’s institution decision)
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