June 2013

What are the odds of getting a stay of co-pending litigation after filing an inter partes review (“IPR”) involving all or some of the same patents?  The answer is not a simple one.  While there has been some data suggesting that, purely statistically, the odds are in favor of getting a stay (e.g., http://www.aiablog.com/post-grant-proceedings/will-an-ipr-result-in-a-stay-of-co-pending-litigation/), ultimately the grant of a stay is highly fact-dependent and discretionary with the court handling the litigation.  A recent decision out of the District of Delaware, Davol, Inc., v. Atrium Medical Corporation, Civ. Action No. 12-958-GMS (D.Del., June 17, 2013), provides valuable guidance in gauging whether a litigation stay in view of an IPR is likely.
Continue Reading IPR and Stays of Co-Pending Litigation

In a number of IPR requests, the PTAB has relied on its authority to “deny some or all grounds for unpatentability for some or all of the challenged claims” to refuse to institute IPR based on certain invalidity grounds put forth by a challenger that the PTAB considered as cumulative relative to other grounds for which the review was instituted. 37 C.F.R. 42.108(b). The PTAB has reasoned that its denial for review of redundant invalidity grounds comports with the policy that the rules for conducting IPR proceedings be “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.  42.1(b).
Continue Reading Too Much of a Good Thing: The Challenge of Being Comprehensive and Yet not Redundant

Once a petition for inter partes review is filed, the patent owner has 3 months under the PTO rules (Rule 42-107) to file an optional preliminary response –  before the PTAB decides whether or not to institute proceedings.  Considering that the petitioner has typically spent many months preparing the petition, including preparing detailed claim charts and expert declarant testimony, the patent owner is usually at a disadvantage in mounting a rapid rebuttal.
Continue Reading To Respond or Not To Respond? – The Patent Owner’s Dilemma of a Preliminary Response

A review of recently issued PTAB decisions in which an Inter Partes Review (IPR) petition has been granted (i.e., orders initiating an IPR proceeding) confirms that the standard for granting a petition to review an issued patent is indeed more stringent then prior reexamination practice.  Ex parte reexamination still only requires a “substantial new question of patentability” while IPR requires a demonstration that there is a reasonable likelihood that the petitioner will prevail on the asserted grounds for nonpatentability.
Continue Reading What Not To Say in Your IPR Petition

To date, university-owned patents have been challenged in IPR proceedings only when the university has thrown the first punch.  Of the over 300 inter partes review petitions filed during the past nine months since this provision of the AIA became effective in September 2012, only 9 of the petitions have challenged patents owned by American institutions of higher education.  Despite their fears of “patent assassins,” the patents obtained by institutions of higher education do not appear to have been maliciously targeted for challenge.  In each of the nine instances where a university patent has been challenged, the petition has been filed in response to litigation commenced by the university owner or its licensee.
Continue Reading Live by the Sword: Challenges to University-owned Patents