Successful IPRs – Lessons from the Trenches on Several Key Implementation Factors

By Bruce Rubinger and Brendan Sever November 30, 2020 Introduction Inter-partes reviews (IPRs) have transformed patent strategy, providing a low-risk and (relatively) low-cost way to challenge the validity of patents. As of Sep 30, 2020 nearly 12,000 IPRs have been petitioned before the PTAB since the AIA went into effect. Of those, roughly 9,500 IPRs completed the Petition Phase to an institution ruling on the merits (excluding pending cases, settled cases, and cases dismissed or canceled), with nearly 2/3 being instituted in whole or in part by the PTAB (see Figure 1, courtesy of the USPTO). Based on data from RPX Insight, of the cases instituted on the merits and reaching final written decision, 53% were found unpatentable on all patent claims with another 28% found partially unpatentable (ie., “mixed”). While these statistics suggest great petitioner success, they also suggest many thousand unsuccessful IPRs. Figure 1. Post-grant Institution Rates, courtesy USPTO It is legally and financially beneficial for a defendant in a patent infringement dispute to utilize the IPR process to attempt to invalidate the asserted patent claims. According [...]

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