PTAB is less expensive and allows venue-advantage

If your company has been sued recently for patent infringement, then you have undoubtedly investigated the possibility of challenging the asserted patents in an inter partes review (IPR). IPR is one of several new procedures available in the U.S. Patent and Trademark Office (USPTO), which allow for a "post-grant" attack on the validity of an issued U.S. patent. It provides defendants in district court litigation with an opportunity to switch from defense to offense and potentially bring victory without the significant expense of litigation. IPRs have proven to be so popular that the USPTO is now overwhelmed with cases. In fact, the number of IPRs filed to date has exceeded the USPTO's estimates by more than three-fold. Without a reduction in the number of IPRs instituted and/or changes in how judges handle them, the USPTO will likely have difficulty in meeting its statutory mandate to issue a final decision within one year of instituting an IPR. Below we discuss the advantages of IPR proceedings that have made them a routine tactic for defendants. We also address the possible impact of new regulations recently proposed by the USPTO on the chances of success in pursuing an IPR._ Defending a district court litigation is expensive, time consuming, and until Congress passes further patent reforms, an unfortunate reality for most every company doing business in the United States. The good news is that if you move quickly enough after a litigation is filed against you, there is a good chance that a district court judge will grant a motion to stay that litigation pending resolution of an IPR, which can help postpone the burdens and costs of litigation. Since 2011, district courts have granted over 60 percent of motions to stay cases pending resolution of an IPR. Another advantage of IPR is the ability to select the venue, i.e., the USPTO, where the burden of proof for invalidity is a mere preponderance of the evidence as opposed to the clear and convincing evidence that is required in a federal district court. Moreover, barring a successful motion to dismiss or transfer, you will be left to defend the infringement suit in a venue selected by your opponent, usually their home turf or a venue with local rules favorable to plaintiffs. Also consider the chance of victory at the USPTO versus a district court. To date, IPR petitioners have won on all challenged claims in about 15 percent of the time. Since 2008, defendants in district court litigations have a similar track record for invalidity defenses tried to verdict or final opinion. However, the district court successes includes all statutory bases of patent validity, whereas an IPR can only be based on prior art consisting of patents or printed publications. Thus, an accused infringer faces an uphill battle regardless of whether the invalidity challenge is in district court or before the USPTO, but taken as a whole, a prior art challenge has a better chance of success at the USPTO. Possible cost savings and timeliness also weigh in favor of IPR over a district court challenge to patent validity over prior art. As one might expect, IPR has most often been used in the computer and electronics technologies, where it is generally easier to find relevant prior art that was not considered during prosecution. This is because the USPTO is likely to revoke an issued patent only if there is highly-relevant, newly-discovered, prior art, or failing that, an expert who can convincingly establish that the USPTO wrongly issued a patent over prior art that was considered during prosecution. Indeed, the USPTO's recent statistics show that 63 percent of challenges to issued patents, including IPRs, post-grant proceedings, and covered business methods petitions, have been filed against patents in the electronics and computer arts. By contrast, only 9 percent of all IPRs have been filed in the pharmaceutical/biotech fields, and only 5 percent in the chemical arts.