one-year time restriction if the joinder does not conflict with the interests of a speedy and just proceeding. Filing for joinder later in the proceedings (more than one month after institution of the IPR) may result in the denial of the request for joinder. not be able to use joinder to fix errors by filing a new petition after the one-year time limit has expired. over two years ago, these proceedings, particularly IPR, have become popular tools for invalidating patent claims before or after the initiation of a lawsuit in federal court. The rate of IPR petitions filed has steadily increased, reaching an average of six per day in December 2014. As of January 1, 2015, a total of 2,299 requests for IPR have been filed. invalidation tool by such companies as Apple, Samsung, Google, Medtronic, Microsoft and Ford. cost when compared to civil litigation makes IPR attractive to many. Plus, a stay of concurrent litigation may be available, especially if an IPR request has been granted. The current rate of granted stay requests is 82 percent. The results of IPR proceedings also make IPR attractive to many patent challengers. According to a recent study, the Board has granted 84 percent of requests for IPR. Strikingly, of those IPRs that have reached a final decision on the merits, more than 77 percent of the time all claims under review have been invalidated or disclaimed. IPR a significant weapon for patent challengers. Proceedings however, procedurally complicated. They are administrative proceedings, and thus, subject to different procedural rules, standards of review, and pleading standards, than those applied in traditional patent litigation. For example, to institute an IPR, the requester must show a reasonable likelihood that they will prevail with respect to at least one of the challenged claims. standard of review is the same as that applied during patent prosecution i.e., the broadest reasonable construction of the terms of the claim which substantially differs from the standard used in litigation. toward facilitating the Board's statutory mandate for speed and efficiency. Length limitations of briefs are strict, discovery is extremely limited, and the Board must give permission before any motion may be filed. Early indications are that the Board will strictly adhere to its procedural rules regarding IPR, and reject requests and filings that fail to comply with its rules. For example, the Board has denied requests for IPR on purely procedural grounds, such as poor drafting of the request. In light of these procedural hurdles, it is important to retain counsel familiar with post-grant proceedings. Post-grant proceedings are not without risks or consequences. For example, prior art references used in an IPR that reaches a final determination cannot be used by the requester in later civil litigation of the same patent. patent claims may be amended during the proceedings (though with some holds the challenged claims valid, this may have an impact on concurrent civil litigation. Since these patent post-grant proceedings are still relatively new, procedures and interpretations by the Board continue to change as cases make their way through the USPTO and the Federal Circuit Court of Appeals. Although the Board has begun to issue informative opinions, at the time of this writing, it has not issued precedential opinions regarding many key issues surrounding IPR. In light of the continuing gains in popularity of patent post-grant proceedings, it is important to take the time to prepare for the use of, and defense against, this new patent invalidity strategy. Reg. 48,756 (Aug. 14, 2012) (codified at 37 CFR Part 42); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48,612 (Aug. 14, 2012) (codified at 37 CFR Parts 1, 42, 90); and Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012) (codified at 37 CFR Part 42). Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48,680, 48,688 (Aug. 14, 2012) (codified at 37 CFR Part 42). 4. Available from the USPTO at http://www.uspto.gov/ip/ Covered Business Method Review," Published July 3, 2014, available at http://interpartesreviewblog.com/ ptab-warriors-top-10-petitioners-inter-partes-covered- business-method-review/. Rev Dialogue 93 (2014) [Essay]. 8. Changes to Implement Inter Partes Review Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48,680, 48,688 (Aug. 14, 2012) (codified at 37 CFR Part 42). |