Inter Partes Review

Inter Partes


Opportunities for Patent Holders and Challengers Alike

In 2012, the Leahy-Smith America Invents Act (AIA) created new procedures for addressing patent invalidity disputes and potential inequitable conduct issues before the USPTO’s Patent Trial and Review Board (PTAB).  The procedures provide opportunities and benefits for:

Patent Holders – Patent holders benefit from provisions that (1) heighten the standard of review in inter partes review proceedings; (2) diminish the best mode requirement; (3) restrict standing for bringing false marking actions; and allow (4) new supplemental examination to correct inadvertent or negligent errors in prosecution.

Patent Challengers – Third parties who challenge patents gain from the (1) expanded defense of prior commercial use; (2) pre-issuance prior art submissions; (3) modified joinder rules; (4) limits to evidentiary basis for willful infringement; and (5) post grant review.

At Lee & Hayes, we are particularly adept at cost-effectively handling patent appeals and post-allowance proceedings before the PTAB.  Our deep litigation experience, finely honed patent prosecution skills and broad technical capabilities make us highly effective advocates for our clients – whether challenging the patentability of a patent or defending it.  Our experience extends to proceedings including:

Inter Partes Reviews

Transitional Program for Covered Business Method Patents

Derivation Proceedings

Appeals in Ex Parte and Inter Partes Reexaminations

These “mini bench trials” before the PTAB provide a good vehicle for resolving validity claims by streamlining all activities (discovery, timeline of proceeding, lower costs), but require a strategic decision by business owners working with knowledgeable legal counsel given once filed with the AIA, a decision cannot be contested in District Court.


The Lee & Hayes Experience

We represent one of the largest telecommunications companies in the world in several inter partes reviews.  These cases were filed after our client obtained a favorable judgment of infringement on these patents.  The cases are still pending.

We were successful in getting a petition for inter partes review that asserted 52 independent grounds of invalidity dismissed in its entirety.

We represent another patent owner in an inter partes review that was filed during a patent infringement lawsuit.  That case has been stayed pending the outcome of the IPR and is still pending.


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