Re:IPR explained
posted on
Apr 16, 2015 07:42AM
How significant is this IPR? Here are some excerpts from the Cooley LLP site that helps me understand what's happening here. It's worth reading given the importance of the action.
"An IPR begins when a third party files a petition with the U.S. Patent Office. In the context of litigation, an IPR must be filed within one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent."
Third party? Who's the the principal defendant?
An IPR begins when a third party files a petition with the U.S. Patent Office. In the context of litigation, an IPR must be filed within one year ( or longer if you're Micron) after the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.
Effective litigation strategy under the AIA requires a clear understanding of the interaction between the estoppel, real party-in-interest and stay provisions of the AIA in order for an IPR to be applied with precision. On average, 2 out of 10 patent claims challenged by petitioners in inter partes review proceedings are never subject to review by the Patent Office because the petition fails to persuade the Patent Office that review is warranted. In other words, many who decide to file a petition for inter partes review may expect it will provide a complete solution to a patent infringement claim, but instead end up with simultaneous proceedings ongoing in two venues – the Patent Office and U.S. district court. Companies who are contemplating an IPR petition can minimize the chances of these types of unfavorable results by performing an in-depth invalidity analysis and candidly assessing the strength of the prior art, and by using experienced counsel to guide the IPR process.
One of the biggest changes to district court litigation as a result of these new proceedings is the potential to stay a litigation pending the outcome of inter partes review. In a case involving a single patent and a few claims, the process of seeking a stay is reasonably straightforward. In a case involving several patents and claims, seeking a stay requires a sophisticated understanding of the procedural complexities involved in patent office proceedings. Regardless of the complexity of the underlying district court litigation, the IPR process is much more amenable to winning a stay of district court litigation than the previous inter partes reexamination process. On average, inter partes reexamination took 3 years to complete (twice as long as an IPR) and either party could appeal unfavorable results in the Patent Office to prevent the reexamination from concluding. As a result, courts were increasingly reluctant to grant stays while an inter partes reexamination was ongoing. Courts tend to favor granting stays while an IPR is ongoing because the duration of the process is fixed and estoppel applies immediately when the IPR finishes—regardless whether an appeal is initiated.
The IPR process is highly efficient at invalidating weak patents that do not claim truly innovative subject matter. In cases where infringement allegations involve a patent that does not cover any truly innovative subject matter, IPR can completely resolve underlying litigation, eliminating potential infringement liability. So far, approximately two-thirds of all IPR cases fall into this category.
In more complex cases involving patents that do claim innovative subject matter, the IPR process is less likely to eliminate all patent claims—and as a result, litigation over infringement and damages liability likely will be necessary after the IPR concludes. But even in these more complex cases, the IPR process often results in the invalidation of the broadest claims in the patent, which can materially reduce infringement liability
The typical strategy for an accused infringer is to delay a case, which can undermine the effective use of IPR. A more effective strategy for an accused infringer is to initiate an IPR quickly and then seek an early stay of litigation pending resolution of the IPR. Delay in filing an IPR generally undermines the ability to pursue a stay of district court litigation because courts consider the stage of litigation and the timing of key litigation events when deciding whether a stay is warranted. and force the patent owner to be more realistic in its damages claims. al is initiated.
Patent Office litigation proceedings are not risk-free. A petitioner who is unsuccessful in invalidating all patent claims challenged may have to contend with surviving patent claims in litigation after the Patent Trial and Appeal Board issues a final written decision, and the petitioner will be estopped from raising in district court invalidity arguments that were raised before the Patent Office. Estoppel is broadest in inter partes review and post-grant review. A petitioner who fails to invalidate all claims in IPR is estopped from later raising before the Patent Office or a district court any invalidity defenses that were raised or reasonably could have been raised in the IPR process (covered business method reviews result in narrower estoppel that extends only to grounds actually raised in the Patent Office). When litigation is ongoing or likely to occur after Patent Office litigation proceedings conclude, it is extremely important to seek out prior art system evidence that is not subject to estoppel and to develop other fallback invalidity defenses that can be asserted in district court if fewer than all challenged claims are invalidated by the Patent Office"
Why has EDIG agreed to the motion to stay the District Court's proceedings? Is it only because it has been forced into a box by Micron's actions and woild just be spinning their wheels to fight it? Is it/was it inevitablle and anticipated by Handal as just another delaying tactic? If Handal fights it, are they contributing to the delay?