Inter partes review is a key mechanism to defend against patent trolls.
Parker et al. ’18 [Aaron L. Parker is a lawyer who focuses his practice on patent and trade secret litigation before U.S. district courts, client counseling on global patent litigation strategies, and patent and trade secret portfolio analysis and management. Much of Aaron’s work relates to counseling clients in the sports, fitness, and outdoor industries on all aspects of intellectual property. Matthew M. Karas is a lawyer who focuses on a wide range of intellectual property matters such as patent prosecution, patent application drafting, district court litigation, and U.S. Patent and Trademark Office (USPTO) proceedings. He works primarily with companies developing electrical and computer technologies, including automobile networking devices, machine learning (ML) software, user application software, and digital health products. He has extensive experience with patent prosecution and has orchestrated strategies leading to the granting of hundreds of patents. Justin N. Mullen is a reporter for Finnegan; 7-27-2018; Sport Techie; “How Sports Tech Companies Can Fight Back Against Patent Trolls”; https://www.finnegan.com/en/insights/articles/how-sports-tech-companies-can-fight-back-against-patent-trolls.html; accessed 7-6-2024]//cephas
The Sportbrain case illustrates how IPR proceedings can form a powerful and efficient tool for defendants. They serve as a unique means for parties to challenge the validity of a patent. In an IPR, the petitioner, or patent challenger, argues that the court should invalidate a granted patent based on references that precede the filing of the patent at issue. The PTAB will then issue a decision listing which parts of the patent may be contested during trial. Assuming the parties do not settle after that decision, they will proceed to a trial in front of a panel of three PTAB judges, and that panel will determine which portions of the patent, if any, are invalid.
IPRs have many aspects that can favor those challenging patents. First, they (currently) use a broader claim construction standard than regular district court proceedings. This means a PTAB panel is more likely to interpret any claims in a favorable light for invalidity purposes. Second, the PTAB applies a lower burden of proof in IPRs. The petitioner only has to prove its case by a “preponderance of the evidence” standard, a noticeably lower burden than the standard of “clear and convincing evidence” that district courts follow. Last, unlike in district court proceedings, patents are not presumed valid before the PTAB.
The USPTO receives a significant number of IPR requests every month, as many defendants use these proceedings to invalidate NPE patents before a related district court case concludes. If a party files an IPR petition at the early stages of a district court litigation, the court will often stay, or pause, its case until the IPR concludes.