Inter partes review (IPR) is an administrative trial proceeding conducted at the Patent Trial and Appeal Board (PTAB). The PTAB reviews the patentability of one or more claims in a patent. However, the only permissible ground is under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. The PTAB conducts trials, that include inter partes, post-grant, and covered business method patent reviews and derivation proceedings. In addition, the PTAB also hears appeals from adverse examiner decisions in patent applications and reexamination proceedings, and renders decisions in interferences.
The IPR Process
The IPR process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review.
After a petition is filed, the patent owner may file a preliminary response to the petition. The Board will then decide whether to institute the IPR. An IPR may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. Accordingly, proceedings instituted and not dismissed result in a final determination by the Board and issued within 1 year. However, this time-frame is extendable for good cause by 6 months.
In conclusion, Smith & Hopen has substantial experience in IPR proceedings including defending patents against Apple, Samsung, Google and other petitioners. For example, the firm was the first in history to obtain a denial of institution in a related proceeding call the Covered Business Method Review (CBM2 013-00047).
Inter Partes Review (IPR) Successes
CBM2013-00047, David W. Gillman v. StoneEagle Services, Inc. Outcome: Non-institution–validity of the patent preserved. First patent to have every claim survive a CBM review.
IPR 2015-00569 & IPR2016-01414, Pay-Plus Solutions, Inc. v. StoneEagle Services, Inc. Outcome: Full non-institution in Inter Partes Review IPR2015-00569 and non-institution with respect to all claims asserted in litigation in IPR2016-01414. As a result of this win, a Court awarded StoneEagle a multi-million dollar verdict in the underlying litigation.
IPR 2016-00539, Vista Outdoor Operations, LLC v. Liberty Ammunition, Inc. Outcome: Non-institution of Inter Partes Review –validity of the patent preserved. In the underlying litigation, U.S. Court of Claims awarded a patent infringement verdict amounting to approximately $70 million over the life of the patent. Consequently, the verdict constitutes the largest known patent infringement award in the history of the U.S. Court of Claims.
IPR2014-01030, Taiwan Semiconductor Manufacturing Company, Ltd. v. DSS Technology Management, Inc. Outcome: Non-institution of Inter Partes Review with respect to several claims. Consequently, this case settled during pendency of the Federal Circuit appeal.
IPR2014-01493, Samsung Electronics Co., LTD v. DSS Technology Management, Inc. Outcome: Non-institution of Inter Partes Review with respect to several claims. Consequently, this case settled during pendency of the Federal Circuit appeal. Joined with IPR2014-01030.
IPR2018-00504, Blasters, Inc. v. Waterblasting, LLC Outcome: Successfully invalidated claims 1-4 and 10. Consequently, this case settled during pendency of the Federal Circuit appeal.