Inter Partes Review Is Fast-Paced

The America Invents Act created new administrative trials for litigating patent invalidity issues before the USPTO’s Patent Trial and Appeal Board by inter partes review. IPR trials can be initiated by any person who is not the patent owner and not otherwise barred from filing an IPR petition on a given patent.

The U.S. International Trade Commission has yet to rule on a motion to stay based on a filed inter partes review petition or instituted IPR trial. It must decide whether or not to institute an investigation within 30 days after a complaint is filed. The ITC’s statutory mandate is to render decisions at the earliest practicable time to “promote expeditious adjudication” of investigations.

A patent owner may file a preliminary response to an IPR petition before the requested trial and may file a response to the petition and claim amendments after trial is instituted. The patent owner’s statements become a part of the record relevant to the construction of the claim terms at the ITC.

The cost of an IPR may not entirely represent additional cost to the respondent. The contents of an IPR petition and work product related to its preparation can be used in several submissions that must be drafted to litigate the ITC proceeding.

If patent claims are narrowed by amendment during the IPR trial, then the doctrine of intervening rights can be applied at the ITC to seek modification or rescission of an ITC remedial order.