Jackson Walker partner Chris Rourk was quoted in the most recent issue of Asia IP on the use of inter partes reviews and ex partes reexaminations in settling patent disputes out of court.
In the article, Chris explained how the inter partes review (IPR) process has evolved since it was implemented five years ago. He explained that “the IPR process has been used to a greater extent than was anticipated, primarily because the initial decisions by the PTAB over the first several years generally invalidated the challenged patents. Because the IPR process was so effective at invalidating patents, the PTAB developed a reputation of being a patent death squad. The PTAB proceedings were a contributing factor to the decrease in 2016 of the number of patent infringement lawsuits filed in the US to the lowest level in many years.”
Despite this, several of these decisions have been reversed by the Court of Appeals for the Federal Circuit (CAFC). In explaining this, Chris recalled the decision In re Magnum Oil Tools, which established important boundaries on the boards’ authority in inter partes reviews.
“In part, these CAFC decisions were the result of improper practices that were implemented by the PTAB, such as in the case In re Magnum Oil Tools, which I briefed on appeal to the CAFC.
The CAFC corrected certain improper evidentiary practices that were being used by the PTAB as a result of that appeal, which made it more difficult for the PTAB to place the burden on patent owners to prove the validity of their patent – the IPR legislation specified that the burden of proving patent invalidity should remain on the challenger,” Chris explained.
Further, Chris explained that much fewer inter partes reviews are being instituted now because of the CAFC’s rulings as well as the fact that these reviews are costly and time-consuming to institute.
“As such, while IPRs remain an effective tool for third parties to challenge patents that are being asserted against them, they require increased attention to the facts and law to be successful.”
Though inter partes reviews have become less popular over the years, Chris suggests alternative strategies to avoid intellectual property lawsuits. Companies should respond promptly to infringement complaints and maintain detailed retention of documents. According to Chris, “any cease and desist letter that is received from a third party should be taken seriously, and might also trigger certain document retention requirements to avoid sanctions that can be imposed in response to the destruction of relevant evidence after receiving notice of a claim.”
He also recommends thorough research of patent and litigation records in order to avoid infringement threats before they become an issue. “For example, it is often possible to modify the design of a product to avoid the claims of a patent, and such modifications can often improve the functionality of the product,” Chris said.
Ex partes reviews (EPRs) can be a valuable solution to patent issues, as Chris explained “an EPR can be used to anonymously challenge a patent, costs substantially less than an IPR, and results in a decision ordering EPR usually within several months of filing. The EPR process also does not create estoppel for the challenger, and the same prior art that is used for an EPR can subsequently be used in litigation against the same patent.”
Finally, Chris suggested that companies attempt to purchase patents that can be asserted against a potential challenger. “There are a number of patent brokerages or US patents, and it is often possible to acquire such patents for licensing or litigation purposes,” Chris explained.