By Anant Saraswat and David Cavanaugh of WilmerHale
Since the Inter Partes Review (“IPR”) procedure under the America Invents Act (“AIA”) became available in September 2012, the PTO has provided a new procedure to adjudicate the validity of a patent claim. As evidenced by the early and rapid adoption of IPRs, companies are seeing advantages to using these proceedings. Because most of the patents that are involved in an IPR are also asserted in district court litigation, both plaintiffs and defendants have had to factor IPR proceedings into their district court litigation strategies. This article reviews circumstances where parties have had both a district court litigation and an IPR proceeding(s) involving the same patent or patents, and describes some early trends with respect to the impact of an IPR on resolution of disputes.
Evaluation of Claim Construction and Invalidity
Many parties consider one of the advantages of IPRs to be the reasonably quick and efficient nature of the proceedings. The Board must issue a decision on institution of the IPR within approximately six months from the filing date of the petition. See 35 U.S.C. § 314(b). When the Board issues its decision on institution, it also typically addresses claim construction issues.1
The claim construction standards applied by the Patent Office and by the district court in litigation are di...