Defendants in patent dispute cases appear to be taking advantage of post-grant review procedures including those made available under the 2012 America Invents Act, according to expert witness Stephen Gray.
“In my own practice, the uptick in client requests for reports related to petitions for inter partes review or covered business method patent reviews is significant,” notes Gray.
Patent review petitions received by the U.S. Patent and Trade Office (USPTO) under post-grant procedures established under the AIA numbered more than 700 between September 2012 and November 2013. More than 600 of these petitions were for inter partes review (IPR) with the remaining balance of review filings representing petitions for covered business method (CBM) patent review (CBMR).
Over 70% of post-grant challenges concern electrical and computer patents. Requests in mechanical fields represent about 15% of the total filings. Requests for chemical and biotechnology/pharmaceutical patents represent about 8% and 6% of the total filings, respectively.
When prosecuting either an IPR or CBMR, the parties typically rely on the declaration of an expert witness in actions with the USPTO’s Patent Review Board.
If a challenger has already initiated litigation alleging patent infringement, a successful petition for review by the defendant may stay the lawsuit pending a validity determination of the plaintiff’s patent.
Why? According to attorney Greg Leighton, a partner at Neal Gerber & Eisenberg, the shift may be attributable to a desire on the part of the courts to reduce the incidence of frivolous lawsuits.
“The effect appears to be leveling the playing field for parties named in infringement cases by weakening the ability of plaintiffs to merely rely on the high costs associated with patent litigation to leverage large settlements from accused infringers early on in cases,” says Leighton.
“Bottom line, successful validity reviews under AIA afford parties the potential for avoiding the time-consuming and typically costly litigation associated with traditional cases alleging infringement,” notes Gray.