CD: Could you briefly explain the purpose of inter partes review? Why does this process represent a significant development in US patent litigation?

McCombs: In the wake of concerns over excessive patent litigation, Congress established inter partes review as a new, streamlined procedure for challenging patents before the Patent Office. Under the new law, an inter partes review must be completed within 18 months, and is conducted by administrative patent judges with technical backgrounds. As a result, we see Corporate America embracing this procedure as a faster, less expensive and more predictable alternative to litigating patent validity before a lay jury.

CD: To what extent can inter partes review impact a district court trial or settlement? What benefits does one process offer over the other?

Ehmke: We often have lively discussion with in-house counsel on when and how to use inter partes review. It is not the right procedure in every case, but more often than not, it is proving to be effective. Since enacted in 2012, the success rate for petitioners has been high. Having handled a large number of these procedures now, we find the track record on costs to be favourable. Concerning specific strategy benefits of inter partes review, there are numerous advantages. For example, many courts will stay the litigation until the inter partes review is completed. If litigation is stayed in favour of inter partes review, the patent owner will not be able to foist asymmetric costs onto the defendant through burdensome discovery.

Jul-Sep 2014 issue

Haynes and Boone LLP