Many parties will wait until the 12-month deadline approaches, hoping to use a patentee's broad claim-construction proposals against it at PTAB. Other parties will request review earlier to maximize their chances of staying the simultaneous district court litigation. Each strategy will make sense in an appropriate case depending on the patent, the venue and the aggressiveness of the patent-holder's infringement positions.
• Experts: One issue for legal departments on both sides to consider is whether to rely on expert declarations. The PTAB does not require expert testimony, but failure to employ an expert may be a mistake.
The U.S. Court of Appeals for the Federal Circuit held in Invitrogen Corp. v. Clontech Labs Inc. (2005) that "unsubstantiated attorney argument regarding the meaning of technical evidence is no substitute for competent, substantiated expert testimony." Thus, for the foreseeable future, parties considering PTAB review should plan on engaging expert witnesses. Otherwise, they run the risk that their arguments will not receive their due weight during the proceeding.
• Planning costs: Inter partes review is designed to be substantially less expensive than district court litigation. Firsthand experience will provide better estimates in the future, but for now a crude estimate would be to expect the total cost of inter partes review to be about 15 percent of the cost of corresponding litigation through trial.
A petitioner for inter partes review bears much of the cost up front: the prior art search, preparation of the petition, expert evaluation and the filing fees. Some of these costs would arise in the litigation anyway as part of preparing an invalidity defense. Shifting these expenditures to an earlier stage of the case is a consideration for companies that frequently find themselves to be patent defendants. Such businesses likely will use PTAB review as a way to resolve cases early and reduce litigation expenses overall.
The new regime of PTAB review appears to offer an efficient approach to resolving validity in patent disputes. Early adopters of inter partes review, as indicated by the public records, tend to be entities with experience in re-examination that are willing to undertake diligent, early investigation of patents to perhaps minimize their total spend on patent assertions.
David L. McCombs is partner in Haynes and Boone in Dallas and chairs the firm's technology law practice. Theodore Foster and Thomas B. King are associates with the firm in Dallas and Orange County, Calif., respectively.
