Two Questions about Inter Partes Review and How it Works

The Supreme Court validated Inter Partes Review in Cuozzo Speed Technologies v. LeeCuozzo presented the Supreme Court with two questions.  First, the case questioned whether patent holders can seek judicial review of the Patent and Trademark Office’s decision to institute a review.  Second, the case questioned the standard involved for evaluating patent claims in challenged patents.

Sticking to the "Broadest Reasonable Interpretation" Standard - Inter Partes Review

The Patent and Trademark Office had earlier published regulations that called for the use of the “broadest reasonable interpretation” (“BRI”) standard, which the Supreme Court validated in its Cuozzo holding.  While the Court noted that there was indeed good reason to also use the “ordinary meaning” standard, it deferred to the Patent and Trademark Office’s preference for the BRI standard.  It cited Congress’s decision to give the Patent and Trademark Office discretion in deciding its own standards and delineating how the inter partes review process should work.

Many experts conclude that this holding has resulted in broader claim construction.  Similarly, many attorneys believe that many patent claims may now be easier to invalidate via inter partes review proceedings as it may force patentees to take initial positions that may be used against them later in ligation due to the limited discovery process available during inter partes review proceedings.  Also noteworthy for plaintiffs is the fact that the presumption of validity does not apply in inter partes review proceedings.  The Patent and Trademark Office prefers to use the preponderance standard rather than the higher “clear and convincing evidence” standard that is applied in civil actions.

Statutory Requirements Allow for Quicker Resolutions

Lastly, inter partes review proceedings tend to have faster resolution because they have time limits set by statutory requirements.  As such, inter partes review proceedings may favor highly prepared petitioners.  Statutes provide that the inter partes review proceeding must be instituted within six months of the petition.  It also requires that the proceeding be resolved within twelve months after initiation, although it does provide for a six-month extension for good cause when necessary.  As such, the total time for an inter partes review proceeding to last ranges from approximately eighteen to twenty-four months.  Due to the speedy resolution of such proceedings, many find that inter partes review proceedings cost significantly less than traditional patent litigation.

About the firm:

Klemchuk LLP is an Intellectual Property, Litigation, and Transactions law firm located in Dallas, Texas.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  

The firm publishes the following blogs: Intellectual Property Law, Conversations with Innovators (interviews with thought leaders), Leaders in Law (discussions on timely law topics), and Culture Counts (thoughts on law firm culture and the business of the practice of law).