Inter Partes Review

An inter partes review is a litigation proceeding brought before the Patent Trial and Appeal Board (“PTAB”) to challenge the patentability of claims in a patent. A successful inter partes review can cause cancellation of the patent claims so as to prevent future assertion of these claims, wiping out any pending verdict related to these claims and preventing the patent owner from seeking additional claims that are not patentably distinct from those claims found to be unpatentable. The challenge to patentability in an inter partes review can be based only on the theory that the claims are anticipated or rendered obvious by one or more prior art patents or printed publications.

Availability – Unlike the limits placed on the old inter partes reexamination procedure, an inter partes review may be brought against any patent. Parties in litigation charged with patent infringement have a time limit that must be taken into account when planning litigation strategy: an inter partes review must be filed within one year after being served with the complaint.

Certain circumstances may allow for a defendant to bring an inter partes review even after one year. If another party brings an inter partes review, it can be possible to file a petition for an inter partes review beyond the one-year time limit. If the PTAB agrees to institute a first inter partes review, the PTAB is authorized to join a second inter partes review with the first one without regard to the one-year limit.

An inter partes review petition cannot be filed after filing a declaratory judgment action asserting invalidity of the patent. Nevertheless, such a declaratory judgment can be filed the same day or any day after the inter partes review has been filed. Although an inter partes review petition has the effect of automatically staying the declaratory judgment action, nevertheless by filing the declaratory judgment action, the patent challenger has achieved the goal of making a choice of forum, perhaps in the challenger’s home court. If the patent owner pursues its patent infringement claim in court, the automatic stay is lifted. An alternative approach to getting into court and filing an inter partes review is for the challenger to lead off with a declaratory judgment action that is limited in scope to asserting non-infringement of the patent, leaving invalidity to the inter partes review proceeding or for later assertion in answer to a counterclaim.

For patents subject to the first-to-file provisions of the America Invents Act, the first nine months after issuance the patent may be subjected to a post-grant review. An inter partes review may not be filed until after these first nine months and only if a post-grant review has not been instituted. If a post-grant review has been requested but not yet instituted, the petition for inter partes review can be filed in the short period between the end of the nine months and the decision from the PTAB instituting the post-grant review.

Estoppel – A successful inter partes review can invalidate one or more claims of a patent. Once all appeals are exhausted a certificate issues canceling any claim determined to be unpatentable. Current case law suggests that the inter partes review certificate will impact any litigation still pending involving the patent claims that are canceled or amended, regardless of the stage of the litigation, potentially undoing jury verdicts and court awards, even those approved on appeal. In the US Patent and Trademark Office, the adverse decision can take effect sooner. Upon issuance of a final written decision from the PTAB, 37 C.F.R. §42.73(d)(3) provides that the patent owner may not obtain “a claim that is not patentably distinct from a finally refused or canceled claim.” Thus, the final written decision can have an immediate effect on patent owner’s continuation strategies in the USPTO.

An unsuccessful inter partes review has estoppel effect upon issuance of the final written decision of the PTAB confirming the patentability of one or more challenged patent claims. The estoppel effect is on a claim-by-claim basis. A petitioner may not thereafter challenge a surviving patent claim on any ground that was raised or reasonably could have been raised during the inter partes review. A great deal of uncertainty surrounds the meaning of “reasonably could have been raised,” and practitioners anxiously await the involvement of the courts in setting forth a predictable meaning for this term. The unsuccessful petitioner’s recourse is to appeal the PTAB decision to the Federal Circuit Court of Appeals in hopes of getting a reversal that lifts the estoppel. (More)