Six-weeks into the new inter partes review regime, third parties have filed a total of 41 inter partes review requests – each one challenging a single patent. Of these, I identified 34 (82%) as already being involved with prior litigation in court. Most of the prior-litigation is patent infringement litigation. However one case (involving Sony & Tessera) stems from a licensing dispute between the companies. Of the seven patents that have not been subject to prior litigation, five appear to be part of a retaliation game between Intellectual Ventures and Xilinx. IntVen challenged four Xilinx patents in an apparent retaliation against a prior declaratory judgment filed by Xilinx. Not to be outdone, Xilinx then filed its on IPR against an IntVen patent. In a sense, IntVen’s actions may serve as a warning against other potential licensees who refuse to deal. The final two non-litigation IPRs appear to be focal points of disputes between fairly small competitors.
The point of all this is fairly obvious – that inter partes reviews are being used only when there is a major dispute between the patentee and the third-party filer. The filings used in parallel to district court and ITC litigation were entirely expected. It was not so apparent that inter partes review would be used as a pawn in a larger battle between companies. The small number of filings helps to confirm the strong prediction that inter partes reviews will not be used as a tool to limit the number of “bad” patents.
In these cases, the patent owner has three months to file a preliminary response (or waive that filing). Following that, the USPTO has three months to determine whether or not to grant the inter partes review request. At that point, the statute calls for a final determination from the PTO within 12 months.