Quick check of the state of inter partes review

On behalf of Kaufhold & Dix Patent Law posted in Patent Law on Tuesday, August 28, 2018.

If anything in patent law triggers a love-hate reaction it is likely the processes related to inter partes review (IPR).

For those unfamiliar with it, inter partes review is a form of in-house review the U.S. Patent and Trademark Office has used since 2012 to adjudicate certain challenges to patent rights. Until this year, it had garnered little attention from mainstream media. But two cases decided recently by the U.S. Supreme Court, and one that is coming up for consideration have sparked interest across business and the intellectual property law arena. For good reason.

What happened?

The two rulings this year came in separate cases on the same day. At issue in the first was the claim that IPR violates the Constitution because it amounts to a potential government taking of property without federal court relief, the property in such cases being granted patents. However, in a 7-2 ruling, the high court effectively said patents aren’t property, but a government grant that protects a holder’s exclusive right to monetize an invention. And since the USPTO has the authority to grant the right, it has authority to use IPR to review those rights.

IPR advocates, who find it a speedier and less expensive way to resolve patent infringement claims than the courts, are seen as lovers of the decision. On the hate side might be brand name pharmaceutical companies who say IPR erodes patent security on blockbuster drugs. Generic drug producers often use IPR to facilitate getting their competitive products to market.

The second ruling amounts to an admonition of the Patent Trial and Appeal Board. In a 5-4 decision, the justices told the PTAB that if it takes on a review, it must examine all the claims a challenger raises, not just some of them, as has occurred in some cases.

What could happen?

The third case generating buzz is due for a hearing before the Supreme Court in the coming session. The question centers on differing opinions on what constitutes prior art for patent purposes, and whether the America Invent Acts, which took effect in 2012, changed how that should be defined.

Obviously, it’s impossible to tell which way the court might rule, but as one legal observer puts it, “The AIA “prior art” waters are murky” already. And he hopes the justices don’t muddy them further.

You can be sure that we will be watching to see what develops.