Four Important Strategic Considerations For Inter Partes Review Proceedings

Among the changes to the US patent law from the 2011 America Invents Act (AIA) is the inter partes review (IPR) proceeding. An IPR allows a third party, who has not previously filed a civil action challenging the validity of a claim of the patent, to petition for a review of the patentability of claims under 35 U.S.C. §§ 102, 103 on the basis of prior art patents or printed publications. The IPR is conducted before a panel of three Administrative Patent Judges on the Patent Trial and Appeals Board (PTAB ). 1 This article explores four important strategic considerations for IPRs: (1) Claim Construction, (2) Discovery, (3) Cumulative Grounds for Institution, and (4) Real Parties-in-Interest and Privies. While this list is in no way exhaustive, our hope is to share some helpful insights on IPR practice.