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ARTICLE · 21 MAY 2013

IPR/PGR Proceedings: Litigation Or Prosecution?

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Like other traditional trial proceedings, a challenger in an IPR/PGR proceeding is required to bear the burden of showing unpatentability.

United StatesIntellectual Property
Mita Chatterjee
Mita Chatterjee
Joseph Palys
Joseph Palys
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IPR/PGR proceedings share many similarities with other trial proceedings, such as district court proceedings. Like other traditional trial proceedings, a challenger in an IPR/PGR proceeding is required to bear the burden of showing unpatentability. See 35 U.S.C. §§ 316(e) and 326(e).  Also, petitioners and patent owners in an IPR/PGR proceeding are afforded many trial-like procedural mechanisms including opportunities for limited document discovery, protective orders, motion practice, and direct examination (via declaration) and cross examination (via deposition of declarants), with the same Federal Rules of Evidence applicable in district court litigation. See 37 C.F.R. §§ 42.51 (discovery), 42.54 (protective orders), 42.20-25 (motions practice), 42.53 (taking testimony), and 42.62 (applicability of the Federal Rules of Evidence).   

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