In 2011, Congress responded to an increasing chorus of voices seeking reform of the patent system by passing the Leahy-Smith America Invents Act (AIA). One of the primary drivers of the AIA was the perception that the U.S. Patent and Trademark Office (the Patent Office) was issuing too many invalid patents and thereby stifling innovation. To address these concerns, the AIA created “inter partes review” (IPR), an administrative process that allows third parties to petition the Patent Trial and Appeal Board (the Board) of the Patent Office to review claims of an already-issued patent and cancel claims found to be unpatentable based on certain types of printed prior art.
The benefits of IPR proceedings for parties wishing to challenge the validity of a patent are well-documented. IPRs afford petitioners the opportunity to seek a review of the validity of a patent in a forum that is both faster, due to statutory deadlines, and cheaper, due to limitations on discovery, than a district court. See 37 C.F.R. §42.100(c) (requiring the PTAB to limit the pendency of an IPR to one year from the date of institution); 37 C.F.R. §42.51 (limiting discovery to only those documents that fall within certain narrow categories). IPRs also provide petitioners a less rigorous standard of review than is applicable in district court, as the Board is not bound by a presumption that a patent is valid. In re Baxter Int’l, 678 F.3d 1357, 1364 (Fed. Cir. 2012) (“There is no presumption of validity in reexamination proceedings.”). Moreover, IPR proceedings are conducted before panels comprised of three administrative law judges with technical backgrounds and deep experience addressing issues of validity.
