Ca. Litig. Rev. 2020

Intellectual Property

By Morgan Chu, Dominik Slusarczyk, Caleb Graves

A Look at The Patent Trial and Appeal Board’s Recent Fintiv Decision as the Board Travels Through a Crossroads

Patent applications undergo a lengthy examination process at the United States Patent and Trademark Office, and the patents that ultimately issue are therefore presumptively valid.1 Nevertheless, it is possible for anyone to challenge the validity of an issued patent, and one popular tool for doing so is known as inter partes review, or “IPR.” An IPR is an adversarial proceeding that takes place before panels of administrative patent judges (APJs) who are appointed through a different process than the federal district court judges of the Constitution’s Article III. The IPR procedure, which has been used to invalidate scores of patents, today stands in the midst of a transformation.

Established by Congress nearly a decade ago with the Leahy-Smith America Invents Act,2 IPR was meant “to provide an effective and efficient alternative” to litigation in the federal district courts.3 In its early days, the APJ panels that heard IPR cases were assailed as “death squads . . . killing property rights.”4 With a high rate of invalidation outcomes, IPRs quickly became a popular tool for operating companies accused of patent infringement in the district courts. That trend has receded in recent years.

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