Inter Partes ReviewPatent litigation frequently causes the accused infringer to file inter partes review (IPR) petitions that challenge the validity of the patent or patents asserted in the litigation at the United States Patent and Trademark Office. IPR proceedings were introduced in 2012 by the America Invents Act and present significant risk to patent owners. IPR proceedings share certain characteristics with patent prosecution because they are conducted at the United States Patent and Trademark Office before the Patent Trial and Appeal Board (PTAB) and use the PTAB’s procedural rules. However, like litigation, the PTAB adjudicates IPR petitions in an adversarial process in which a petitioner (often the alleged infringer in litigation) and not the PTAB presents the case for invalidity. Patent owners who prevail in IPR challenges in a final written decision can seek to enforce estoppel provisions to limit an alleged infringer’s invalidity defenses in litigation.
DiNovo Price attorneys have extensive experience handling complex, multi-party IPR proceedings. DiNovo Price customizes its approach to IPR proceedings to meet the needs of the client and maximize the chances for a successful result in not only the IPR but also the underlying litigation.
Examples of DiNovo Price’s experience in navigating serial, multi-party IPR proceedings include:
- Navigated the filing of twenty (20) IPRs of camera phone technology patents by seven (7) accused infringers and a non-practicing entity, securing non-institution of several petitions and resulting in survival of patentable claims asserted in litigation.
- Navigated the filing of eleven (11) IPRs of wireless technology patents by three (3) accused infringers, resulting in survival of patentable claims asserted in litigation. No IPR invalidated all of its challenged claims.
- Navigated the filing of twenty-three (23) IPRs of data transfer technology patents by nine (9) accused infringers, securing non-institution of many petitions and resulting in survival of patentable claims asserted in litigation.
DiNovo Price works with startup companies, small businesses, inventors, and others to develop flexible and creative options to navigate these proceedings effectively and efficiently. DiNovo Price’s approach to IPR proceedings also enhances its ability to achieve a business resolution, such as a negotiated settlement, of the underlying litigation related to an IPR.
Contact us to provide information about your inter partes review.