Inter partes review (IPR) is an extremely effective alternative or supplement to litigation, and there are appreciable benefits to challenging an issued patent in an IPR rather than before a federal district court. In an IPR, unlike a patent lawsuit, a challenged patent is not presumed to be valid, nor is clear and convincing evidence required to demonstrate invalidity. Rather, the challenger (petitioner) need only demonstrate invalidity by a preponderance of the evidence.
A petitioner may not, however, avail itself of all the defenses available in district court litigation. Rather, IPRs are statutorily limited to challenges “only on a ground that could be raised under Section 102 [novelty] or 103 [obviousness]” and based on only patents and printed publications, according to 35 U.S.C. Section 311(b). Thus, at first glance, it would seem to follow that invalidity defenses, such as indefiniteness under 35 U.S.C. Section 112, can play no role in an IPR.
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