The New Way to Challenge A Patent When Threatened: The America Invents Act Creates the Inter Partes Review

The America Invents Act (AIA) creates new administrative trial procedures to challenge patentability outside litigation before a district court venue. These trial procedures are namely (1) Post Grant Review (PGR), (2) Inter Partes Review (IPR) and (3) a transitional program for covered business method patents. These laws went into effect on September 16, 2012. This article covers the basics of the Inter Partes Review.  

	Post Grant Review (PGR)	Inter Partes Review (IPR)
Standard for Initiation	“More likely than not” that petitioner would prevail, on at least one claim being challenged, or a significant novel or unsettled legal question.	“Reasonable likelihood” that petitioner would prevail” on at least one claim being challenged.
Grounds for Review	Any related to patent invalidity under 35 U.S.C. § 282 (except best mode).	Related to patent invalidity under 35 U.S.C. §§ 102 and 103 on the basis of patents or printed publications.
Time Frame for Filing by Petitioner	Within 9 months of grant.	Later of 9 months after grant or the date of the termination of the PGR.
Deadline for Completion	One year from filing, extendable by 6 months with establishment of good cause.	One year from filing, extendable by 6 months with establishment of good cause.
Prior Art	Any prior art related to patent invalidity under 35 U.S.C. § 282.	Prior art comprising solely patents or printed publications rendering invalidity under 35 U.S.C. § 102 (novelty) or § 103 (obviousness).
Caveats	May not be instituted if petition is filed after the petitioner filed a declaratory judgment action challenging the validity of a claim of the patent. However, counterclaims of invalidity brought in an action filed by patent owner is permissible.	May not be instituted if petition is filed after the petitioner filed a declaratory judgment action challenging the validity of a claim of the patent. However, counterclaims of invalidity brought in an action filed by patent owner is permissible.
Must Real Parties in Interest be Identified?	Yes	Yes
Estoppel	Estoppel effective upon a written PTAB decision upon any grounds that were raised or reasonably could have been raised.	Estoppel effective upon a written PTAB decision upon any grounds that were raised or reasonably could have been raised.
Authority	Patent Trial and Appeal Board (PTAB)	Patent Trial and Appeal Board (PTAB)
Scope of Discovery	Directly related to factual assertions advanced by either party in the proceedings.	Deposition of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice.
Appellate Authority	Directly to Court of Appeals for the Federal Circuit (either party).	Directly to Court of Appeals for the Federal Circuit (either party).

IPR allows a party to petition the U.S. Patent and Trademark Office (USPTO) to invalidate a patent based on prior art after the 9 month deadline for PGR has passed. While both are post-grant review proceedings that avoid district court litigation, IPR was introduced as a counterpart to PGR, once the latter’s period has ended. In comparison to a PGR, IPR narrows the types of prior art permitted. Specifically, PGR permits use of any type of prior art under 35 U.S.C. § 282 to establish grounds for invalidity, including grounds that could have been raised under 35 U.S.C. § 102, challenging that a claim is novel, under § 103, challenging that the claim is obvious (typically in view of multiple references), challenges to prior art patents based on defective specifications (except best mode), and such non-reference prior art as public uses, sales and offers for sale. On the other hand, IPR permits use of only two categories of prior art, namely patents or printed publications, under the above novelty or obviousness criteria. Petitions for IPR may be filed by any party who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent. IPR petitions are filed either 9 months after the grant of a patent or the date of termination of any PGR of the same patent. Patent owners have three months to file a preliminary response to the petition to provide reasons why the IPR should not be instituted. There are additional caveats to filing the IPR petition as well. IPR is prohibited if the petition is filed after the petitioner or real party interest files a declaratory judgment action challenging the validity of a claim of the patent. In fact, filing the IPR petition under these circumstances automatically stays the declaratory judgment action, and the stay may be lifted only under certain circumstances, namely if the patent owner moves to lift the stay, the patent owner files an infringement suit or counterclaim for infringement, or if the petitioner moves to dismiss the civil action. Notably, counterclaims of invalidity typically brought by defendants, where the infringement claims are brought by the patent owner (i.e., a typical patent infringement suit) have no bearing on the defendant’s ability to file an IPR. In order to institute an IPR, the petitioner must demonstrate that there is a reasonable likelihood that he or she would prevail as to at least one of the claims challenged. Unlike reexaminations, the initial decision-maker is not the examining corps of the U.S. Patent and Trademark Office, but its prestigious administrative tribunal, the newly-designated Patent Trial and Appeal Board (PTAB), which conducts any ensuing reviews. Appeals from Board decisions go directly to the U.S. Court of Appeals for the Federal Circuit, the highest authority for U.S. patent cases aside from the Supreme Court, itself. IPR proceedings also permit broader discovery than PGR proceedings. In the former, discovery includes deposition of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice.