Page 4 - Litigation

S4 | Monday, deceMber 9, 2013 | Litigation | nylj.com

Inter Partes
How
entity that funds and directs control of an
By Christopher e. Loh Ipr, for example, will likely be considered
And Christopher p. hiLL
a real party-in-interest.
9
Review
The America Invents Act of 2011 es- Differs From procedure
tablished several new proceed-
ings at the U.s. patent and Trade- Unlike litigation, which can be initiated

mark office (pTo) that allow parties District Court with a simple notice pleading, an Ipr begins
to challenge the validity of issued pat- with the submission of a petition showing
ents. The most popular of these pro- that “there is a reasonable likelihood that
ceedings is inter partes review (Ipr), the petitioner would prevail with respect
which permits a party to challenge Patent Litigation
to at least one of the claims challenged.”10
patents on anticipation and obvious- The patent owner thereafter may submit a
ness grounds using patents and printed preliminary response opposing the petition,
publications.
and the Board’s decision to grant or deny a
Ipr is an adversarial process that petition based on the petition and prelimi-

involves discovery and depositions, nary response is nonappealable.11 In view
is subject to the federal rules of evi- of these obstacles, a petitioner should be
dence, and culminates in oral argument. prepared to present its best arguments and
Although Ipr in these respects resembles proofs in its first submission to the Board.
patent litigation, there are significant trative patent judges (ApJs).1 ApJs must of good cause.5 for example, the Board Notwithstanding this initial inconvenience,
differences between the two that patent be “persons of competent...scientific recently admitted an unregistered attor- an Ipr petitioner ultimately enjoys a lower
attorneys—particularly litigators who ability”2 and are commonly drawn from ney pro hac vice as back-up counsel in burden of proof than a litigant: Whereas
wish to participate in Ipr—should bear the ranks of former patent practitioners an Ipr upon a showing that she was an invalidity in litigation must be proven by
in mind. This article highlights some of and patent examiners; thus, ApJs already experienced litigator and had “an estab- clear and convincing evidence, invalidity

those differences.
should be familiar with the relevant law lished familiarity with the subject matter in an Ipr need only be established by a
and technology when they come to the at issue.”6
preponderance of evidence,12 and based
participants
proceedings.3
Named parties in an Ipr must iden- on the broadest reasonable interpretation
The adversaries in an Ipr are the party tify any “real parties-in-interest” to the of the challenged claims.13
Iprs are controlled by the patent Trial challenging the patent (petitioner) and Board.7 This allows the Board to identify If the Board decides to grant the petition
and Appeal Board (Board) and are man- the owner of the patent being challenged potential conflicts and to prevent a real and initiate Ipr proceedings, it will issue a
aged on a day-to-day basis by adminis-
(patent owner). each must be represented party-in-interest from challenging a pat- scheduling order setting deadlines for the
by a lead and a back-up counsel.4 While ent if it has been estopped from doing parties’ subsequent submissions, including

lead counsel must be registered to prac- so pursuant to an earlier proceeding.8 the patent owner’s response to the peti-
Christopher e. Loh is a partner and Christo- tice before the patent bar, back-up coun- Although a determination as to who is a tion and the petitioner’s reply thereto; the lJ
pher p. hiLL is an associate at Fitzpatrick, Cella, sel need not be so registered and may be real party-in-interest is fact dependent, owner’s motion, if any, to amend the chal- NY
Harper & Scinto.
admitted pro hac vice upon a showing
some bright lines can be discerned. An
lenged patent claims and the opposition
oCk;
sT
i