10 Reasons Every Defendant in Patent Litigation Should Consider Inter Partes Review

Numerous articles and practitioners are touting inter partes review (IPR) proceedings, and for good reason. Here is a quick breakdown of why these proceedings are considered pro-petitioner and why every patent infringement defendant should give IPR serious consideration. 1. Presumption of Validity Does Not Exist: Unlike in district court, patents are not assumed to be valid at the Patent Trial and Appeal Board ("PTAB"). See 35 U.S.C. § 282 ("[a] patent shall be presumed valid"). In IPR, patentability of the claims is being challenged, rather than validity. 2. Burden for Finding Unpatentability is Lower: The burden is lower for the petitioner to challenge patentability in front of the PTAB than for a defendant to challenge the patent's validity in district court. In district court, a defendant must prove invalidity by clear and convincing evidence. See Microsoft Corp. v. i4i Partnership, 131 S. Ct. 2238, 2242 (2011). In contrast, at the PTAB, the petitioner must prove unpatentability by a mere "preponderance of the evidence" standard. See 35 U.S.C. § 316(e). 3. Claim Construction is Broader: The PTAB sets forth that claims will be granted their "broadest reasonable construction in light of the specification of the patent in which it appears." 37 C.F.R. § 42.100(b). This is broader than the "ordinary and customary meaning" to a person of ordinary skill in the art at the time of the invention, as applied at the district court under Philips v. AWH Corp., 415 F.3d 1303, 1312-1313 (Fed. Cir. 2005). The broader the claim, the more likely prior art exists that will render the patent anticipated or obvious. 4. Time-Sensitive Ability to Terminate Pressures Settlement: The petitioner and the patent owner can reach settlement and request that the PTAB terminate the IPR proceeding under 35 U.S.C. § 317. If the merits are yet to be decided, the PTAB must dismiss the petitioner from the proceeding, but retains discretion as to whether to dismiss the proceeding with respect to the patent owner. 37 C.F.R. 42.74(a). When deciding whether to terminate, the PTAB primarily considers how far along the trial has proceeded. The longer the patent owner waits to settle, the greater the risk that the PTAB will not terminate the proceeding, and may cancel the claims despite a request to terminate. Petitioners can use this time crunch to pressure the patent owner into earlier settlement in order to save the patent from IPR. 5. Statistics Show the PTAB is...

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