IPR Petition

An Inter Partes Review (IPR) petition is a request filed with the Patent Trial and Appeal Board (PTAB) asking for a review of the validity of an issued patent based on prior art. An IPR is initiated by filing a petition — any person who is not the patent owner can file, subject to standing restrictions. WHO CAN FILE: any person or entity who is not the patent owner, including: companies being sued for infringement; competitors seeking to clear a patent; defendants in ITC proceedings; patent challengers not currently in litigation. WHO IS BARRED: (1) THE PATENT OWNER — cannot petition to review their own patent via IPR; (2) PARTIES WHO FILED A CIVIL ACTION ON THE PATENT — a person who has filed a civil action (in district court) challenging the validity of the patent cannot later file an IPR petition on the same patent; (3) ONE-YEAR BAR under § 315(b) — a person who has been SERVED WITH A COMPLAINT alleging infringement of the patent cannot file an IPR petition more than one year after that service date; this is the most critical timing constraint; even if the lawsuit is later dismissed, the bar still applies once service occurs; REAL PARTY IN INTEREST (RPI): all real parties in interest and privies must be identified in the petition; failure to identify an RPI can invalidate the IPR; companies that control, direct, or fund the litigation must be disclosed; upstream investors and controlling shareholders may be RPIs depending on their involvement.

IPR is limited to specific categories of prior art: PATENTS AND PRINTED PUBLICATIONS ONLY: Under 35 U.S.C. § 311(b), IPR grounds are limited to prior art patents or printed publications under § 102 (anticipation) or § 103 (obviousness). WHAT CAN BE CITED: (1) Issued U.S. patents (any publication date); (2) Published U.S. patent applications; (3) Foreign patents; (4) Academic papers, books, textbooks, manuals, conference papers (printed publications); (5) Websites and online publications that meet the 'publicly accessible' standard for printed publications — requires evidence of public accessibility (indexed, widely disseminated, or otherwise available to interested artisans). WHAT CANNOT BE CITED IN IPR: (1) Prior public use, prior public knowledge, or prior sale events (§ 102(a)(1) on-sale/public-use bar) — these grounds can be raised in ex parte reexamination or district court but NOT in IPR; (2) Prior invention date, diligence, or conception-based arguments; (3) § 101 subject matter eligibility — IPR cannot be used to challenge eligibility; only § 102 and § 103. IMPLICATION: for products sold before the patent's priority date that aren't documented in printed publications, IPR is not the right vehicle — district court invalidity is needed. The prior art must also be prior to the patent's effective filing date (or priority date) to be relevant.

After an IPR petition is filed, the patent owner has 3 months to file a Patent Owner Preliminary Response (POPR) — this is optional but strategically important. After the POPR, PTAB decides whether to institute (start) the IPR trial. INSTITUTION STANDARD: under 35 U.S.C. § 314(a), PTAB must determine that there is a 'reasonable likelihood' that the petitioner would prevail with respect to at least one of the challenged claims; this is a LOW threshold but not automatic — PTAB denies institution in a significant percentage of petitions. INSTITUTION DECISION TIMELINE: PTAB must make the institution decision within 3 months of the POPR or the expiration of the period for filing the POPR. DISCRETIONARY DENIAL: even if the petitioner meets the 'reasonable likelihood' threshold, PTAB has discretion to deny institution for various reasons: NHK Spring / Fintiv Framework (Apple v. Fintiv) — PTAB may deny if parallel district court litigation is advanced (trial date is close, significant investment has been made in litigation); excessive distance between the PTAB trial date and the district court trial date has reduced the efficiency justification; GENERAL PLASTIC factors — serial petitions from the same petitioner on the same patent; Sotera waiver — petitioner can moot Fintiv by filing a broad § 315(e) estoppel waiver agreeing to be estopped from raising ANY ground that reasonably could have been raised in the IPR (even if IPR is ultimately not instituted).

An IPR petition must comply with 37 C.F.R. § 42.104 and contain: (1) IDENTIFICATION — the patent number to be challenged; all claims to be challenged; the specific grounds (§ 102 or § 103) for each claim; (2) REAL PARTY IN INTEREST — all RPIs and privies of the petitioner; (3) STANDING CERTIFICATION — certification that the petition is not time-barred under § 315(b) (filed within 1 year of service of a complaint); (4) CLAIM CONSTRUCTIONS — how the petitioner proposes to construe disputed claim terms (under the Phillips standard for issued claims); (5) PRIOR ART CITATIONS — identification of each prior art reference with a complete description of where it was publicly available (for printed publications); (6) GROUNDS AND ELEMENT MAPPING — for EACH challenged claim, EACH ground must be fully mapped: the petition must show exactly where each claim element appears in the cited prior art reference(s); for obviousness grounds, must articulate a motivation to combine the references and why a POSITA would have been motivated; (7) EXPERT DECLARATION — typically accompanied by a declaration from a technical expert (§ 1.68 declaration) supporting the petition's positions on claim construction, prior art teachings, and POSITA knowledge; (8) PAGE LIMIT — petitions are limited to 60 pages (excluding exhibits, declarations, and mandatory notices); (9) FILING FEE — $19,000 for up to 20 claims; $475 per claim over 20.

PETITIONER STRATEGIC CONSIDERATIONS: (1) TIMING — file as early as possible, ideally before receiving a complaint to avoid the § 315(b) one-year bar; once served with a complaint, the clock starts immediately; (2) CLAIM SELECTION — challenge every claim that is relevant to the accused product or process; if the patent owner amends to survive, the amended claims may be narrower than what was originally asserted; (3) GROUND SELECTION — choose the strongest grounds with highest-quality prior art; weak grounds that fail institution add cost without benefit; (4) EXPERT — select an expert with credibility in the field who can clearly explain why a POSITA would combine references; (5) PARALLEL LITIGATION COORDINATION — if district court litigation is pending, coordinate IPR strategy with litigation strategy; § 315(e)(1) estoppel: after a final IPR decision, the petitioner is estopped from raising in any later proceeding ANY ground that was raised or reasonably could have been raised in the IPR; (6) FINTIV MITIGATION — if parallel litigation is advanced, consider filing a Sotera waiver to avoid discretionary denial; OR front-load IPR arguments so a § 314 institution decision can be made before the district court trial date. PATENT OWNER STRATEGIC CONSIDERATIONS: (1) FILE A STRONG POPR — patent owners have been increasingly successful with well-argued PPRs, particularly when arguing claim construction or Fintiv/NHK grounds for discretionary denial; (2) CLAIM AMENDMENTS — in rare cases, a motion to amend claims in IPR may be appropriate if broader original claims are at risk; (3) SETTLEMENT — IPRs can often be settled after institution; the terms of settlement are confidential but the settlement must be filed with PTAB.