Effective 9-16-12, replacing inter partes re-exam; more user-friendly to parties
Eligibility: Any issued patent (both pre-AIA and post-AIA patents)
Filed by 3P (not patent owner) who has not previously filed a civil action challenging the validity of a claim in the patent
Grounds: ONLY PATENTS & PRINTED PUBLICATIONS – only 102 or 103 issues (e.g., not inventorship, etc.)
More narrow than post-grant review, but same threshold to initiate
Timing – filed after the later of:
(1) 9 mos. after patent grant or reissue, OR (2) if PGR, date of PGR termination
and NOT later than 1 year after served with an infringement lawsuit complaint
AIA patent – IPR only after 9 mos (after PGR period) (you can file PGR during 1st 9 mos)
PETITION must include:
Fee
ID all real parties-in-interest
ID, in writing, and with a particularity:
Each claim challenged & the Grounds for each claim’s challenge
Evidence supporting each challenge, including copies of patents/printed publications and affidavits/declarations (e.g., expert opinions) and translations
Claim constructions
Any other info the Director requires
Provide copies of all docs to the patent owner or his rep
PTO will make IPR petition available to the public (unless sealed by motion)
Preliminary Response – patent owner argues why IPR should not be instituted
Must be filed within 3 mos. of Notice of IPR
It’s optional; the owner can waive this
No new testimony, unless authorized by Board or if to rebut petitioner’s statement of “no estoppel”
Documentary evidence permitted
Testimonial evidence permitted where interests of justice so require, e.g., to demonstrate estoppel
THRESHOLD: IPR instituted if “reasonable likelihood petition would prevail” w.r.t. at least 1 challenged claim – higher than SNQ (reexam) but lower than preponderance (PGR)
Decides whether or not to institute within 2 mos of receiving preliminary response
Claim-by-claim and ground-by-ground analysis
Final and non-appealable decision
Each side has right to oral hearing
Estoppel provisions – woulda coulda shoulda
if you raise issue at PTO & it’s dealt with, you can’t raise again in: court, ITC, or later IPR
Amendments by a patent owner during IPR – can file 1 motion to:
Cancel challenged claims,
Propose a reasonable number of substitute claims for each challenged one,
But NO NEW MATTER and CANNOT BROADEN the claims
Both parties can agree to change claims to materially advance settlement
Intervening rights for amended claims
An additional motion may be authorized for a good cause, e.g., where supplemental information is belatedly submitted
Patent Owner Response
Address any ground for unpatentability not already denied by the Board
File, through affidavits or declarations, any additional factual evidence and expert opinions
Due 3 months from the institution (or whatever deadline PTAB gives you)
generally one to the public unless a party motions for privacy
limited discovery may be allowed
The burden on merits – petitioner must prove unpatentability by a preponderance of the evidence
Final determination issued within 1 year (extendable by 6 mos for good cause)
IPR may be settled (in writing) before PTAB reaches a decision
PTO will likely accept it (re-exam is different)
If settled, no estoppel attaches to that petitioner
Either party may appeal the PTAB’s final decision to the Federal Circuit (but no intermediate appeals)
Thresholds for various USPTO proceedings
A preponderance of evidence – standard for a decision once proceeding instituted (e.g., allow claim)
The substantial new question of patentability (middle) – re-exam standard
Reasonable likelihood petitioner will prevail (high) – IPR standard; > re-exam but < federal court
Clear and convincing (even higher) – standard to invalidate in a federal court
Timing w.r.t. other proceedings: PICK A LANE!
PTO will look at relevant litigation proceedings going on
Court action must be stayed if filed on or after IPR is filed (so if same day, stay court)
Counterclaim challenging validity is still allowed in court proceeding
If file court claim first, then IPR, court has discretionto stay case until IPR is over
