IPR Timeline

IPR follows a strict statutory timeline set by 35 U.S.C. § 316 and 37 C.F.R. Part 42: FILING THE PETITION: petitioner files the IPR petition at the USPTO PTAB; petition must include: (a) identification of the real parties in interest (RPIs); (b) identification of claims challenged; (c) specific prior art references with detailed claim charts; (d) the grounds for challenge (§ 102 or § 103 only); (e) supporting expert declaration (typically filed with petition); filing fee: $19,000 (base) + $400 per claim for first 15 claims beyond 10 claims in the petition; PRELIMINARY RESPONSE (PPR): the patent owner has 3 months from the notice of filing to file a preliminary response; the PPR argues why the PTAB should not institute; Cuozzo Speed Technologies ruling: patent owner can submit new testimonial evidence in the PPR; INSTITUTION DECISION: PTAB must decide within 3 MONTHS of the patent owner's PPR (or 3 months after the period to file PPR expires if no PPR filed); standard: 'reasonable likelihood that petitioner would prevail on at least one challenged claim' (§ 314(a)); PTAB may institute on fewer claims than petitioned; TRIAL SCHEDULE AFTER INSTITUTION: PTAB issues scheduling order setting deadlines; typically: months 3–6: patent owner response (POR) to the petition; months 7–8: petitioner reply; months 8–9: patent owner sur-reply; month 10: oral argument (optional, either side may request); months 10–12: PTAB deliberation; FINAL WRITTEN DECISION: issued within 12 MONTHS of institution (§ 316(a)(11)); total from petition to FWD: approximately 18–20 months; TOTAL TIMELINE: petition filing → institution decision: ~6 months; institution → FWD: 12 months; total: ~18 months.

The PTAB's decision whether to institute IPR is one of the most critical junctures in the proceedings: INSTITUTION STANDARD: § 314(a): PTAB 'may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition'; REASONABLE LIKELIHOOD: lower than a preponderance but more than a mere possibility; requires genuine question of patentability; CLAIM-BY-CLAIM INSTITUTION: PTAB may institute IPR on only some of the challenged claims; SAS Institute v. Iancu (S.Ct. 2018): PTAB must institute on ALL claims challenged or not institute at all; cannot cherry-pick; PTAB DISCRETION — FINTIV (NHK-FINTIV FRAMEWORK): PTAB has discretion to deny institution even if the petition would otherwise meet the standard; discretion exercised based on: (a) whether a stay has been granted in district court litigation; (b) proximity of district court trial date; (c) investment in the parallel proceeding; (d) overlap of issues; (e) identity of petitioner and defendant; (f) other circumstances; SOTERA STIPULATION: if the petitioner stipulates not to pursue in district court any ground raised or reasonably could be raised in IPR, PTAB is more likely to institute despite Fintiv concerns; TIME BAR (§ 315(b)): petition must be filed within 1 year of service of a complaint alleging infringement; time bar is jurisdictional; PTAB lacks authority to institute a time-barred petition; PRIOR-ART ONLY: PTAB can only institute on §§ 102 and 103 prior art grounds; cannot institute on § 101, § 112, or § 115 grounds.

The trial phase after institution is an adversarial proceeding with strict deadlines and limited discovery: PATENT OWNER RESPONSE (POR): filed 3 months after institution; patent owner can: (a) argue the petition fails to establish a prima facie case; (b) submit expert declarations rebutting the petitioner's technical expert; (c) file a MOTION TO AMEND claims (propose substitute claims); Motion to amend is allowed only if: substitute claims don't broaden scope; claims are fully supported by original disclosure; no new matter; PTAB grants motions to amend in <20% of cases historically; PETITIONER REPLY: filed within 1 month of POR; limited to responding to arguments in the POR; cannot introduce new grounds or new evidence (only respond to POR evidence); PATENT OWNER SUR-REPLY: brief reply to petitioner's reply; limited to new arguments raised in petitioner's reply; DISCOVERY: IPR discovery is extremely limited compared to district court; automatic discovery: exhibits cited by the other party, cross-examination of declarants; additional discovery: granted only for 'good cause' or in interests of justice (Garmin standard); very narrow compared to district court discovery; no depositions of fact witnesses (only expert witnesses); EXPERT CROSS-EXAMINATION: critical part of IPR; each side can cross-examine the other's experts at deposition; depositions typically 4-7 hours; deposition testimony may be cited in sur-reply; ORAL ARGUMENT: optional; either side may request; 30-60 minutes (15-30 per side); panel of 3 APJs asks questions; APJs have typically already formed their view at oral argument; FINAL WRITTEN DECISION: PTAB applies preponderance of the evidence standard (lower than clear and convincing in district court); claims cancelled, amended, or confirmed as patentable.

The IPR and district court timelines interact in several important ways that drive litigation strategy: THE PARALLEL TRACK: filing an IPR petition does NOT automatically stay the district court case; both proceedings can run simultaneously; MOTION TO STAY: defendant/petitioner files a motion to stay the district court case pending IPR; court applies 3-factor test: (1) stage of litigation (early = favor stay); (2) prejudice to patent owner (injunction not available to NPEs, so less prejudice); (3) simplification of issues (IPR may cancel claims or simplify the case); stay grants are highly discretionary — EDTX historically denied stays; WDTX and NDCA grant more readily; FINTIV TIMING IMPACT: PTAB looks at the district court trial date when deciding whether to institute; if trial is set within ~7 months of the IPR institution decision, PTAB may deny institution under Fintiv; file IPR early (ideally within 3-4 months of complaint) to maximize the period before trial; ESTOPPEL AFTER FWD: after FWD, petitioner/RPI/privies estopped from asserting in district court: any ground raised in IPR; any ground petitioner reasonably could have raised (objective test: all prior art a skilled searcher would have found); strategic: only challenge claims and prior art you need; don't file IPR if you need to preserve all invalidity arguments for district court; PARALLEL PTAB AND DISTRICT COURT OUTCOMES: PTAB cancelled all challenged claims → district court case likely dismissed (no remaining claims to assert); PTAB cancelled some claims → damages calculation changes; petitioner may have won invalidity on key claims, leaving only narrow valid claims; PTAB confirms all claims → district court case continues; prior-art-based invalidity arguments are estopped; COORDINATION: coordinate the IPR petition with district court invalidity contentions; avoid inconsistencies between the two proceedings.

Both parties can appeal an adverse IPR final written decision to the Federal Circuit: APPEAL ROUTE: appeal from PTAB FWD goes directly to the United States Court of Appeals for the Federal Circuit (not through district courts); any party to the IPR (petitioner or patent owner) may appeal an adverse FWD; STANDING FOR PETITIONER TO APPEAL: Apple Inc. v. Windy City Innovations (Fed. Cir. 2021) and related cases: a petitioner must have Article III standing to appeal a FWD upholding patent claims; a petitioner who is not currently being sued for infringing the confirmed claims may lack standing; the petitioner must have a concrete stake in the outcome; GROUNDS FOR APPEAL: errors of law (reviewed de novo); findings of fact (reviewed for substantial evidence); procedural issues; claim construction errors; STANDARD OF REVIEW: PTAB claim construction: de novo for pure legal questions; PTAB factual findings: substantial evidence (deferential); PTAB institution decision: not reviewable on appeal (§ 314(d) statute bars review of institution decisions); TIMELINE: Federal Circuit appeals from IPR FWDs typically take 12–18 months to decision after briefing is complete; total time from petition to Federal Circuit decision: approximately 3–4 years; REMAND: Federal Circuit may reverse and render decision; OR remand to PTAB for further proceedings consistent with the court's opinion; remands add 6–12 months; CERT PETITION: losing party may petition for certiorari to the Supreme Court; rare in IPR cases; PRACTICAL SIGNIFICANCE: after FWD, the district court case often proceeds to trial while the appeal is pending; district court may stay pending the Federal Circuit appeal, but this is uncommon.