Petitions For Inter Partes Review Face Increased Scrutiny

Amid continuing popularity of Inter Partes Review as a vehicle for challenging patent validity, the Federal Circuit vacated a PTAB finding of invalidity because the PTAB had not adequately explained why the claimed invention was obvious. Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1316 (Fed. Cir. Jan. 22, 2016). Such heightened review, coupled with a reduction in the rate of institution of IPRs from approximately 85% to 65%, makes it more important than ever to navigate the IPR process strategically and with attention to detail.

IPRs remain the most effective option for challenging patent validity at low cost and in a favorable venue, before administrative patent judges having technical training and with a lower burden of proof. The new scrutiny levied on petitions for IPR only heightens the need for skilled patent counsel to prepare persuasive petitions that advance all necessary evidence from the start, and that can withstand the PTAB's and the courts' increasingly stringent review. These developments also require tactical representation for patent owners, including appropriate use of patent owner preliminary responses to halt IPR proceedings at the institution stage, before they can even get started.