Among the changes to the US patent law from the 2011 America Invents Act (AIA) is the inter partes review (IPR) proceeding. An IPR allows a third party, who has not previously filed a civil action challenging the validity of a claim of the patent, to petition for a review of the patentability of claims under 35 U.S.C. §§ 102, 103 on the basis of prior art patents or printed publications. The IPR is conducted before a panel of three Administrative Patent Judges on the Patent Trial and Appeals Board (PTAB ). 1 This article explores four important strategic considerations for IPRs: (1) Claim Construction, (2) Discovery, (3) Cumulative Grounds for Institution, and (4) Real Parties-in-Interest and Privies. While this list is in no way exhaustive, our hope is to share some helpful insights on IPR practice.
David L. Cavanaugh is a partner and Christopher R. O'Brien, Heather Schafroth, and Michael H. Smith are senior associates at WilmerHale in Washington, DC. Vic Souto is a special counsel at WilmerHale in New York, NY. Michael J. Twomey is a partner at WilmerHale in Boston, MA.
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Originally published by Wolters Kluwer, May/June 2014, Volume 20, Number 3 edition of the IP Litigator
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.