Will Your Patent Survive the PTAB during an IPR?

The biggest change that happened in the America Invents Act during the Obama administration was the creation of the Inter Partes Review (IPR) process. Your patent will be reviewed by a group of administrative law judges in a slimmed-down version of a court proceeding. (For the uninitiated, the American Invents Act is when the patent law changed from “first to invent” to mis-labeled “first to file.” The far more important feature of AIA is the IPR procedure.)

IPRs were designed to be a quick and (relatively) low cost way to challenge a patent. The benefit is that the challenges are heard by administrative law judges who were typically patent attorneys with deep knowledge of patent law and the technical background to understand the technical and legal issues.

IPRs are “low cost” in that a typically challenge “only” costs on the order of $300-600K, but that pales in comparison to as much as $4M for the lawsuit in Federal Court.

The USPTO provides a graphic that shows the outcome of the patent claims that went through the IPR process. This graph is from FY2019:

An IPR proceeding has several phases, the first is where the request is instituted, and typically only some of the claims in a patent are challenged (these are the ones that a defendant is accused of infringing). When the IPR is taken up by the PTAB (here, called “instituted”), about a third of the cases are settled. Of the claim that go forward through the trial, only 34% of those claims survive.

Insurance for IPRs

Our patent enforcement and patent defense policies cover Inter Partes Review. In our patent enforcement policies cover the cost of defending against an IPR. This occurs when you assert your patent against a competitor, and the competitor counter-sues by challenging your patent using the IPR process.

Similarly, our patent defense policies cover IPRs when someone sues you, and you institute an IPR in response to their lawsuit.

IPRs have a risk/reward tradeoff. When a patent is killed off by an IPR, it can no longer be a threat to you. However, when a patent survives an IPR, that patent is “gold plated” and is extremely difficult to challenge.