This document discusses inter partes review (IPR) of patents. It begins with an overview of traditional options for challenging patents such as litigation and reexamination. It then provides details on IPR, including that it allows review of patent validity based on prior art under 102 and 103, has a faster timeline than litigation, and has resulted in over 1,000 claims being found unpatentable so far. However, it also notes risks such as claims being amended and estoppel preventing the same invalidity grounds from being raised again.

1. Inter Partes Review of Patents:
The Case So Far
Presented by John Hintz

2. Agenda
Traditional Options for 1 Challenging Patents
2 New Option = Inter Partes Review (“IPR”)
Data and Trends
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What is it?

3. Traditional Options

4. Traditional Options
District Court
Litigation
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International Trade
Commission
Reexaminations
• Inter Partes
• Ex Parte

5. Traditional Options – Reexam
Reexam
• Defense only
• Request made to U.S. Patent
and Trademark Office
• Inter partes reexam or
ex parte reexam
• Standard = substantial new
question of patentability
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NOTE: AIA eliminated Inter Partes
reexam as of Sept. 16, 2012.

6. Court
• Offense and Defense
• Venue
− Local Rules
− Speed
− “Pro-Plaintiff”?
• Discovery (Fact and Expert) = $$
• “Markman” Hearing
• Summary Judgment
• Pre-Trial and Trial
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Traditional Options – Court

7. ITC
• Defense only
• Investigate allegations that IP infringement
will impact a “domestic industry”
• Like litigation, but U.S. participates
• Decided by ALJ; Commission reviews
• President can veto (rare)
• Remedy = exclusion order; no damages
• Very fast; intensive discovery
• Can be devastating result
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Traditional Options – ITC

8. New Options

9. “New” Options
• Review validity under 102 & 103 (patents & printed publ’ns only)
• All patents eligible
• If sued, petitioner must file within 1 year of filing of lawsuit
Inter Partes
Review
• Review validity under 101, 102 & 103 (any prior art), & 112
• Only for “first to file” patents filed after 3/16/2013
Post-Grant
Review
CBM Post-
Grant Review
• Review validity under 101, 102 & 103 (any prior art), & 112
• Available only for “covered business method” patents
• Petitioner must have been charged with infringement
• Replaces interferences for “first-to-file” patents filed Derivation after 3/16/2013
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10. IPR – What is it?
Begins with
a petition
Ends with
a “trial”
Patent Trial and
Appeal Board
Anyone other than patent
owner may request:
must identify “all real
parties in interest”
must identify claims and
grounds for review
Petitioner’s burden
=
preponderance
Available as
to all patents
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11. IPR – Cost?
Up to 20
claims:
$9,000
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Filing fee depends on
number of claims:
If petition granted, also pay:
Each
additional
claim:
$400
Up to 15
claims:
$14,000
Each
additional
claim:
$200 IPR

12. IPR – Petition
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Higher standard
than old inter
partes reexam
OLD: “substantial
new question of
patentability”
NEW: “there is a
reasonable likelihood
that the petitioner
would prevail with
respect to at least 1 of
the claims challenged
in the petition”
Patent owner
can file
preliminary
response
(and do so 80%
of the time)
Decision to
conduct IPR
must be made
within 6
months

13. 112397
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Code

14. Limitations
• Challenge only under § 102 and § 103 with patents or printed
publications
• Timing = later of 9 months after grant of patent or termination of
Post-Grant Review
• Cannot file > 1 year after served with complaint
• Later, cannot assert in a lawsuit or at PTO same grounds or ones
petitioner “reasonably could have raised”
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IPR – Petition

15. IPR – Timing
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Final decision
in 12-18
months
Can appeal
to Federal
Circuit
Parties can settle
IPR terminated upon joint
request unless PTO has
decided the merits
Must file agreement; can
ask to be kept secret

16. IPR – Timing
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Filing of Petition
Patent Owner
Preliminary Response
Decision on Petition
Initial Conference
Patent Owner Response & Motion
to Amend Claims (DUE DATE)
Petitioner Reply (DUE DATE 2)
Patent Owner Reply (DUE DATE 3)
Discovery Motions (DUE DATES 4-6)
Oral Argument (DUE DATE 7)
Final Writen Decision
Patent Owner Discovery
(3 months)
Petitioner Discovery
(3 months)
Patent Owner Discovery
(1 month)
Trial
(12 months)

17. IPR – Worth It?
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Factors
FOR
• Evidentiary standard
• Good prior art
• Highly technical
• Stay possible
• Additional intrinsic
evidence desired
• Apply pressure
• Unfavorable District
Court venue
Factors
AGAINST
• May take invalidity out of
the trial (estoppel)
• “Poor” prior art
• Low damages exposure
• Possibility of claim
amendments
• Discovery
• Limited noninfringement
defenses

18. IPR vs. PGR
Inter Partes Review Post-Grant Review
Effective date Sept. 16, 2012 Sept. 16, 2012
Patent date All patents Filed > Mar. 16, 2013
Grounds Only 102/103 All
Prior art Patents/publ’ns Any type
Deadline > 9 mos. after issue or after PGR ≤ 9 mos. after issue
Anonymous? No No
Standard Reasonable likelihood More likely than not
Cost $23,000 + $30,000 +
Speed Same Same
Estoppel Same Same
Settle? Same Same
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19. IPR vs. Inter Partes Reexam
17
514
1,360
2012 2013 2014
(as of 10/9)
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Sources: USPTO (as of Oct. 9, 2014); www.ManagingIP.com, Sept. 2014
2010 2011 19-year
total
281 374
1,919
IPR Petitions Filed:
1,891
(3-year total)
Inter Partes Reexams:
1,919
(19-year total)

20. IPRs by the Numbers
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Source: USPTO (as of Oct. 9, 2014)

21. IPRs by the Numbers
[PERCENTAGE]
[PERCENTAGE]
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Source: USPTO (as of Oct. 9, 2014)
[PERCENTAGE]
[PERCENTAGE]
[PERCENTAGE]
Electrical/Computer (1,527)
Mechanical (325)
Chemical (157)
Bio/Pharma (121)
Design (8)
All Petitions by Technology

22. IPRs by the Numbers
Compared to grants of requests for inter partes reexam = about 95%
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Source: USPTO (as of Oct. 9, 2014)

23. IPRs by the Numbers
Settlements in 2013 = 23%
Settlements in 2014 = 39%
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Source: USPTO (as of Oct. 9, 2014)

24. IPRs by the Numbers
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Source: USPTO
Inter Partes Review Petitions
Terminated to Date (as of 9/4/2014)
11,046 claims in 348 petitions
6,001 5,045 claims challenged claims not challenged
(348 petitions)
3,344 claims
instituted
(66% of claims challenged)
(237 petitions)
1,701 claims
challenged but
not instituted
(34% of claims
challenged)
606 claims cancelled or disclaimed (non-PTAB)
(18% of claims instituted, 12% of claims challenged)
1,739 claims patentable
(52% of claims instituted, 34% of claims challenged)
999 claims found
unpatentable
(30% of claims instituted,
20% of claims challenged)
(91 petitions)

25. IPRs – Effects/Results
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IPR
Eliminate patents/claims
Encourage settlement
Less expensive than litigation
• Obtain a stay of District Court litigation?
• 70% of disputed motions to stay are granted

26. IPRs – Risks
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Claims can be
amended
Expense
Added expense
if litigation not
stayed
Estoppel effect

27. Thank You
John M. Hintz
john.hintz@rimonlaw.com
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