Stays pending inter partes review: the first year

By John M Guaragna and Melissa Marrero

The America Invents Act (AIA), adopted in September 2011, introduced the new inter partes review (IPR) procedure, providing an opportunity to challenge the validity of issued patents at the US Patent and Trademark Office. Thus far, these IPR procedures are proving to be quite popular. Since IPRs became available in September 2012, more than 800 have been requested. What can we learn from looking at the use of the new procedures?

Among those who can seek IPRs are defendants accused of infringing particular patents asserted in litigation. Frequently, defendants seeking IPRs will attempt to stay concurrent litigation pending resolution of the IPR. Given the streamlined nature of the new IPR procedures, this can bring significant cost savings. For example, the IPR procedures are typically faster (12-month deadline) than district court litigation and involve only limited discovery and motion practice. If the IPR results in a determination of invalidity, district court action can be avoided entirely.

Although a stay of litigation pending IPR is not mandatory, early numbers suggest district courts are quite willing to exercise their discretion in staying litigation pending IPR. Since the adoption of the AIA up to 31 December 2013, a total of 70 contested motions to stay district court cases pending IPR have been decided throughout the US…

This originally appeared in DLA Piper’s IPT News Q1 2014.

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