10 thoughts on “Cartoons on How the IPR Process Works from Perkins Coie

  1. For such a short and simple presentation, this does work in a surprising number of features of IPRs.

    As for the above-cited and other alleged comparative statistics on the odds of IPR success for defendants vis a vis fully litigated patents, after all the inconsistent statistics that have been bantered about in connection with the recently dropped anti-troll legislative proposals, such alleged statistics should be taken with a large grain of salt. In particular, note that the only relevant question is what happened to just the claims being asserted, not any other claims, and IPRs are limited to only patent or publication prior art, not any other invalidity defenses. So a valid comparison would have to be limited to final decisions with those two limitations. [No one has challenged the very large differences in total client costs].
    It stretches credulity to even suggest that prior art patents and publications will be more effective with a lay jury without technical or claim reading expertise, and operating under instructed presumptions of validity and “clear and convincing evidence” burdens, than with three PTO Administrative Patent Judges not under those burdens and with technical and claim reading expertise.

  2. “That’s why they call patent litigation the sport of kings.”

    Seriously? Who are “they”? And why do they conflate horse racing with patent litigation?

    I would be curious to know who the last Triple Crown Patent Litigator was though.

    1. This is a statement from an article from maybe 10 years ago that said something like, “Forget about horse racing. Patent Litigation is the new sport of kings.” I don’t recall the exact source -Managing Intellectual Property, maybe? – and I don’t vouch for my recollection of the quote being exact. Google shows that quote has been taken out of context over the years. I think only a patent litigator could seriously refer to it as the sport of kings, since patent litigators are the primary reason fof the high cost, and the primary beneficiaries, of patent litigation.

    2. Seriously? Who are “they”?
      Most small entities who try to assert a patent. I don’t know about you, but most small entities don’t have $2-5M laying around to fully fund a litigation — that is both attorney fees and costs.

      While it is possible to use contingency fee litigation firms, most are very, very picky about what patents they take on. Moreover, these guys are looking for the quick kill — they want to do as little as possible in order to get a settlement. This means that most aren’t interested in fully litigating a patent (i.e., taking it to final judgment).

  3. So PC spent rather a lot of money on an ad aimed at…whom, exactly? General counsel or executives at companies with enough money to hire PC but who are so unsophisticated that they need IPR explained to them like they were ten year olds?

    Anyway, I found it interesting how the ad seamlessly juxtaposes the advantages of IPR over district court litigation (cheaper) with areas in which it may be no better (12-18 month pendency vs similar pendency in rocket dockets) while completely eliding several major disadvantages (e.g. limited scope of prior art, can only argue invalidity, no possibility of attorney’s fees). What’s more, early evidence suggests that IPR results in at least one claim surviving in 41% of cases, compared to a mere 14% of district court cases ending in a patent being held valid.

    link to law360.com
    link to morganlewis.com

    There’s probably some bias there, since many court cases in which the patent is likely valid will settle before a decision on the merits, but about 10% of IPR cases settle before a decision by the board, which may make the numbers a little more comparable.

    link to law360.com

    The ad also presents a false dichotomy between waiting to get sued and filing for IPR. Nothing about DJ actions, ex parte reexam, and the rest of the PTO proceedings. Or, heaven forbid, taking a license. But I suppose there’s only so much you can cram into a 5 minute cartoon.

  4. Well, today’s Consumer Watchdog case does tell us that not everyone who files an IPR can appeal.

    Dennis, when are you going to discuss the three precedential decision on the appealability of 315(b) decisions to the Federal Circuit? I think these decisions are truly significant, particularly if a petitioner is denied under 315(b) where he presents a case that otherwise has merit such that trial would otherwise have been ordered. If he presented a meritorious case, he then has a legal right to an IPR, which is being denied under 315(b). The Federal Circuit’s decision that he cannot appeal seems to violate the holding in Crowell v. Benson that agency decisions on legal rights have a right of review by a Art. III court on constitutional grounds.

    1. Ned, even if such a appeal were not statutorily prohibited, how likely is it that Fed. Cir. panels, under In re Zurko, would be insisting on an IPR for an IPR petition on which the Board has made an administrative decision that it cannot even pass the statutory IPR threshold test? [Especially given the high percentage that do.]

      1. Paul, I am not talking here about the “discretionary” aspect of 314(a) where the petitioner must present sufficient evidence to present a case. What I am talking about here is 315 where the petitioner is barred by estoppels, by filing a DJ suit, or by being served with a complaint for infringement more than one year prior.

        ALL the appeals and ALL the mandamuses denied by the Federal Circuit were based on 315, and ALL claimed that the PTO was applying the wrong legal standard in the particular case.

        Under Crowell v. Benson, this appears to be, unless I misread that case.

        The only basis that I can see for upholding the denial of any right of appeal is the so-called public rights doctrine. But this doctrine is an aspect of sovereign immunity, and involves the relations between the government and others. It has no applicability when the government is denying someone a legal right, even if that right is created by government.

        Crowell v. Benson – and this is a matter of constitutional power, due process, etc.

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