Congress Takes Steps To Help Patent Owners Prevail

In 2011, Congress passed the America Invents Act, which established, among other things, a process by which a party could petition the Patent Trial and Appeal Board (PTAB) to review the validity of a challenged patent based on prior art publications. In the process, known as inter partes review, or IPR, a three-judge panel of the PTAB first determines whether "there is a reasonable likelihood that the petitioner would prevail." If so, it institutes a review and conducts a minitrial between the patent challenger and the patent owner to determine the validity of the challenged patent claims. See 35 U.S.C. §§ 311–319. The idea was to give patent challengers, most often those who had been sued for patent infringement, a quicker and less expensive vehicle for challenging the validity of the asserted patents. In many cases, a district court litigation is stayed pending the outcome of the IPR, thus allowing the parties to avoid those litigation costs while the IPR plays out.