Inter Partes Review

Inter Partes Review (IPR) is one type of post-grant proceeding available to challenge the claims of U.S. patents. Inter Partes Review is available for all patents during enforceability, regardless of priority date. A petition seeking Inter Partes Review can generally be filed at any time with a couple of exceptions. It must be filed before the petitioner seeks a declaratory judgment of invalidity in a civil action in district court and within one year of service of a complaint for infringement by the patent owner. Also, the PTAB’s decision may be appealed to the U.S. Court of Appeals for the Federal Circuit.

Inter Partes Review differs from Post-Grant Review and other post-grant proceedings in that:

  • For first-inventor-to-file patents, the petition for Inter Partes Review cannot be filed while eligible for post-grant review (nine months after the grant of the patent) or during a post-grant review proceeding. For first-to-invent patents, the petition can be filed at any time during a patent's enforceability.
  • The standard of review requires the petitioner to demonstrate a reasonable likelihood of prevailing on at least one patent claim.
  • Discovery may be limited to depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in “the interest of justice,” including cited documentation, cross-examination, and information inconsistent with positions advanced during the Inter Partes Review proceeding.
  • Grounds for the petitioner’s request to cancel one or more claims of a patent are restricted to prior art consisting of patents or printed publications, which can potentially limit the estoppel effect for the petitioner or patent owner.

Inter Partes Review Process:

review process

Strategy & Foresight

Brooks Kushman understands the intricacies and implications of post-grant challenges, how to staff such matters, what resources to deploy, and the technical issues at the heart of each matter. Our attorneys know what it takes to vigorously represent our clients and prevail in such administrative proceedings and coordinate efforts with possible parallel district court litigation and on appeal, recognizing the impact a decision can have on a patent portfolio, market opportunities, and the bottom line. At the same time, our prosecution team works closely with our clients to develop and implement client-specific strategies to help insulate a patent portfolio from a post-grant challenge. In conjunction with our Patent Searchers, we can track related post-grant proceedings, monitor patent filings from our clients’ competitors, and search for and examine relevant prior art—to anticipate potential future challenges and institute proactive measures to minimize any potential risk. In view of the changing landscape and complex and competing interests at play, Brooks Kushman is able to leverage its depth of experience in all facets of IP, to help our clients maintain competitive advantage.

Ford Motor Company v. Paice, LLC & Abell Foundation, Inc(PTAB): Successfully represented Ford Motor Company as lead counsel before the Patent Trial and Appeal Board (PTAB) in a set of IPR petitions that were part of 25 inter partes review (IPR) proceedings related to hybrid technology.  In total, the Brooks Kushman team challenged 325 claims across five patents; 274 of those claims were instituted. In decisions spanning from 2015-2017, the PTAB found 273 of the 274 instituted claims unpatentable.  Brooks Kushman also represented Ford in follow-on litigation before the International Trade Commission, resulting in a favorable settlement.

 JTEKT Corp. v. GKN Automotive Ltd (PTAB): Successfully defended patent owner GKN Automotive Ltd as lead counsel in an inter partes review proceeding filed by JTEKT, challenging claims in a patent related to drivelines switchable between a four-wheel mode and a two-wheel mode. The Patent Trial and Appeal Board found JTEKT failed to prove the obviousness of the claims and ruled the claims patentable. The Federal Circuit agreed and dismissed the appeal in a precedential opinion on standing. Case No. IPR2016-00046

Google LLC et al v. Seven Networks, LLC (PTAB): Successfully defended patent owner Seven Networks as lead counsel in three inter partes review proceedings related to a telecom patent for optimizing battery life, resulting in 100% of the inter partes review challenges being denied at the institution stage and leading to a favorable settlement on the heels of the institution decision. Case No. IPR2018-01102, IPR2018-01113, IPR2018-01114

Ex parte reexamination of Reexamination Control (CRU): Following the final written decision in IPR2015-01444 (affirmed by the Federal Circuit) holding all claims unpatentable, Sangeeta was retained to revive IXI’s enforcement strategy by filing a patent owner-initiated reexamination.  Ultimately Brooks Kushman was able to secure 67 new, IPR-proof claims through the reexamination process.   After the success of the first reexamination, two additional reexaminations were filed, securing over 100+ new claims for three different, asserted patents. No. 90013925, Ex. 1032,3 of U.S. Patent No. 7,039,033 (the ‘033 patent)

Apple, Inc v. IXI, LLC (PTAB): Successfully thwarted Apple’s attempt to seek trial on six IPR petitions that were time barred under 35 U.S.C. § 315(b), establishing that there was no basis for joinder and/or consolidation and further that a reexamination certificate does not create a new “patent” or affect the § 315(b)-time bar. Case No. IPR2019-00124, IPR2019-00125, IPR2019-00139, IPR2019-00140, IPR2019-00141, IPR2019-00181.

  • Brooks Kushman Shareholder Andrew Turner to Present at PTAB Bar Association Virtual Annual Conference
    Thursday, September 10, 2020

    SOUTHFIELD, Mich. – Brooks Kushman shareholder Andrew Turner will be participating in a panel at the rescheduled PTAB Bar Association Annual Conference now slated for a virtual setting on September 24-25, 2020. The PTAB Bar Association’s Annual Conference brings together practitioners, in-house counsel, and members of the bench for a dynamic...

  • Brooks Kushman Hosts Chinese Delegation in Partnership With Michigan State University
    Friday, September 07, 2018

    SOUTHFIELD, Mich. – Brooks Kushman, in partnership with Michigan State University (MSU), hosted a Chinese Delegation for a roundtable discussion on Friday, September 7, 2018, in Southfield, Michigan. The roundtable focused on recent developments with U.S. patent challenges and trade secrets. It was moderated by Brooks Kushman shareholder Kristin L....

  • Federal Circuit Decision Upholds Validity of GKN Automotive Patent
    Tuesday, August 07, 2018

    Brooks Kushman serves as legal counsel to uphold critical claims in GKN Automotive’s patent Auburn Hills, MI (August 6, 2018) – The United States Court of Appeals for the Federal Circuit recently dismissed JTEKT’s challenges of GKN Automotive Ltd.’s patent claims in US 8,215,440, upholding the novelty and non-obviousness findings for...

  • Todd Dishman Appointed as 2018 Leadership Council on Legal Diversity Fellow; Isheeta Patel Appointed as an LCLD Pathfinder Participant
    Thursday, March 01, 2018

    Southfield, Mich. – Brooks Kushman Shareholder Todd Dishman has been chosen to represent the firm as a member of the Leadership Council on Legal Diversity’s (LCLD) 2018 class of Fellows. This innovative program identifies, trains, and focuses on the development of the industry’s next generation of professional leaders. It also offers participants virtual and in-person...

  • Brooks Kushman Further Expands Los Angeles Office; Hires David A. Randall as Shareholder
    Monday, November 07, 2016

    LOS ANGELES, CA – Brooks Kushman is pleased to announce the addition of Shareholder David A. Randall to the firm’s Los Angeles office. The move further expands the firm’s presence in the greater Los Angeles area. Randall brings more than 20 years of experience to the firm’s Los Angeles office. His...

  • Brooks Kushman Hires Prominent IP Professional; Opens Washington D.C. Office
    Wednesday, October 12, 2016

    Southfield, Mich. – (October 12, 2016) – Brooks Kushman is pleased to announce the firm has expanded to Washington, D.C., opening its third office with the addition of Lissi Mojica. The new office is located within walking distance of the Unites States Patent and Trademark Office. The new office will be...

  • Brooks Kushman Ranked in Top 2015 PTAB Firms by Docket Navigator
    Tuesday, April 12, 2016

    SOUTHFIELD, Mich. — Brooks Kushman has been named one of the top Patent Trial and Appeal Board (PTAB) law firms in a 2015 annual report published by Docket Navigator. The list includes top law firms and corporate legal departments ranked by the number of inter partes review, covered business methods,...

  • Brooks Kushman Named One of the Most Active Firms at the PTAB During the First Half of 2015
    Monday, August 31, 2015

    Southfield, Mich. – Brooks Kushman was named as one of the most active firms in the Patent Trial and Appeal Board (PTAB) in a special report published by Managing IP during the first half of 2015. In addition to the firm’s listing, four of the firm’s attorneys were listed in...

  • Five Brooks Kushman Attorneys Recognized as 2016 Best Lawyers in America
    Wednesday, August 19, 2015

    Southfield, Mich. -Brooks Kushman President Mark Cantor, and Shareholders Frank Angileri, Marc Lorelli, John LeRoy and Elizabeth Janda have been selected for inclusion in the 22nd edition of The Best Lawyers in America. Brooks Kushman attorneys were recognized as 2016 Best Lawyers across a variety of intellectual property (IP) practice areas,...

  • Brooks Kushman Attorneys Named "IP Stars" by Managing IP
    Sunday, May 10, 2015

    SOUTHFIELD, Mich. - Brooks Kushman is pleased to announce five of the firm’s shareholders have been named “IP Stars” by Managing Intellectual Property Magazine. This comprehensive guide to leading intellectual property (IP) firms and lawyers covers more than 80 countries. Brooks Kushman attorneys recognized as IP Stars by the publication are...

  • Brooks Kushman Shareholder Named “Michigan IP Litigator of the Year” by Managing IP
    Thursday, March 19, 2015

    SOUTHFIELD, Mich.-Brooks Kushman is pleased to announce that Shareholder Frank Angileri was named Michigan’s IP Litigator of the Year by Managing Intellectual Property Magazine. The award is given each year during the publication’s North American Awards dinner.Angileri was also named in Managing IP’s “IP Stars” listing, a comprehensive guide to leading IP firms and...

      • Brooks Kushman Shareholder Discusses Federal Circuit Decision to Keep Standing Limits on PTAB Appeals Due to Auto Parts Co’s Bid to Review
        Thursday, January 17, 2019

        SOUTHFIELD, Mich. – Brooks Kushman Shareholder Linda Mettes was quoted in a Law360 January 16, 2019 article, “High Court Urged To Keep Standing Limits On PTAB Appeals.” Client GKN is the owner of U.S. Patent No. 8,215,440 B2 – which has now been twice reviewed by the U.S. Patent and Trademark Office including the inter partes review...

      • Brooks Kushman Shareholder Discusses Federal Circuit Decision to Deny an Auto Parts Co’s Bid to Invalidate Opponent's Patent
        Monday, August 06, 2018

        SOUTHFIELD, Mich. – Brooks Kushman Shareholder Linda Mettes was quoted in a Law360 August 3, 2018 article, “Fed. Circ. Says Auto Parts Co. Lacks Standing In PTAB Appeal.” The article discusses the Federal Circuit’s decision to rule that JTEKT Corp., an auto parts maker, does not have standing to appeal a PTAB decision upholding part...

      • Sangeeta G. Shah Quoted in IAM Article on Potential Changes with the Patent Trail and Appeal Board
        Monday, May 14, 2018

        SOUTHFIELD, MI – Brooks Kushman Shareholder Sangeeta Shah was featured in IAM’s May 10, 2018 article, “Change in claim construction at PTAB may not have a big practical impact but its message is clear.” The article focuses on the recent changes on the Patent Trial and Appeal Board (PTAB) practices...

      • Brooks Kushman Shareholders mentioned in Law360
        Monday, November 23, 2015

        A Law360 article (“Ford wins PTAB challenge over hybrid vehicle tech”) on Ford Motor Company’s victory at the Patent Trial and Appeal Board (PTAB) featured Brooks Kushman Shareholders Frank Angileri, Sangeeta Shah, John Nemazi, John Rondini and Erin Bowles.  The matter at stake was Ford Motor Company’s recent inter partes review...

      • Ford Wins More Hybrid Vehicle Patent Appeal Board Reviews- Brooks Kushman
        Tuesday, November 10, 2015

        Brooks Kushman Shareholders Frank Angileri, John Nemazi, John Rondini and Christopher Smith were mentioned in Law360’s November 10, 2015 article, “Ford Wins More Hybrid Vehicle Patent Appeal Board Reviews.”The article discusses the Brooks Kushman intellectual property litigation team’s recent successful request for four different inter partes reviews (IPR) of a...

      • Ford Wins Another PTAB Review Of Paice Hybrid Car Patent
        Monday, November 02, 2015

        Brooks Kushman Shareholders Frank Angileri, John Nemazi and John Rondini and Associate Michael MacCallum were mentioned in Law360’s November 2, 2015 article, “Ford Wins Another PTAB Review Of Paice Hybrid Car Patent.” The article discusses the Brooks Kushman intellectual property litigation team’s recent successful request for an inter partes review (IPR)...

      • Ford Nabs PTAB Review Of Paice’s Hybrid Car Patent - Brooks Kushman
        Friday, October 30, 2015

        Brooks Kushman Shareholder Frank Angileri was mentioned in Law360’s October 30, 2015 article, “Ford Nabs PTAB Review Of Paice’s Hybrid Car Patent.”The article discusses Angileri’s recent successful request for an inter partes review (IPR) of a hybrid vehicle patent owned by Paice LLC on behalf of Ford Motor Company. During...

      • Brooks Kushman IP Litigation team mentioned in Law360
        Tuesday, September 29, 2015

        Brooks Kushman Shareholders Frank Angileri, John Nemazi and John Rondini and Erin Bowles were mentioned in Law360’s September 29, 2015 article, “USPTO Rules For Ford In Dispute Over Hybrid Vehicle Tech.” The article discusses the Brooks Kushman intellectual property litigation team’s recent successful inter partes review (IPR) of two Paice LLC...

      • Brooks Kushman Shareholder Discusses AIA Appeals in Law360
        Monday, July 13, 2015

        SOUTHFIELD, Mich. – Brooks Kushman Shareholder Sangeeta Shah was featured in Law360 July 11, 2015 article, “5 AIA appeals to watch at the Federal Circuit.”The article discusses appeals at the Federal Circuit related to the relatively new America Invents Act. In most cases, the Federal Circuit has largely backed decisions...

      • Brooks Kushman President Discusses Patent Litigation in Crain’s Detroit Business
        Monday, June 22, 2015

        SOUTHFIELD, Mich. – Brooks Kushman President Mark Cantor was featured in Crain’s Detroit Business’ June 20, 2015 article, “While IP-focused firms shed attorneys, general practice firms hold steady or beef up.”In the article, Cantor discusses the recent slowdown in patent litigation, stemming from recent U.S. Supreme Court rulings and legislation...

      • Brooks Kushman Shareholder Discusses Patent Trolls in Crain's Detroit Business
        Tuesday, June 24, 2014

        SOUTHFIELD, Mich., - Brooks Kushman Shareholder, Marc Lorelli, was featured in an article discussing patent troll litigation in the U.S. Patent and Trademark Office. In the article, “Patent Trolls Take Their Toll,” Lorelli discusses how the Leahy-Smith America Invents Act protects companies against patent trolls, as well as ways that patent...

      • Brooks Kushman Earns Gold Honors in Patent 1000 Listing
        Monday, June 09, 2014

        SOUTHFIELD, Mich. – Brooks Kushman, intellectual property and technology law firm, is now listed in Intellectual Asset Management`s (IAM) annual Patent 1000, a guide that recognizes the world`s top patent law firms and practitioners in key jurisdictions. The 2014 IAM Patent 1000 issue marks the first time any firms from...

      • Brooks Kushman Shareholder reviews the America Invents Act in Detroit Legal News
        Thursday, April 10, 2014

        SOUTHFIELD, Mich. - In an article recently published by Detroit Legal News, Brooks Kushman Shareholder Sangeeta Shah discusses the Leahy-Smith America Invents Act (AIA), and its effects on post-grant proceedings.In the article “Asked & Answered: Sangeeta Shah on America Invents Act,” Shah reviews the ways that the AIA has changed...

      • Brooks Kushman Attorneys Discuss Ways to Minimize the Risk of Post-Grant Challenges in Law360 Article
        Thursday, January 30, 2014

        SOUTHFIELD, Mich. – In an article recently published by Law360, Brooks Kushman Shareholders Sangeeta G. Shah and Michael D. Turner discuss the increasing need for proactive prosecution strategies as a result of the recent Idle Free decision.In the article “Ways to Minimize the Risk of Post-Grant Challenges,” Shah and Turner...

            • PTAB Year in Review: New Designated Decisions and Procedures Impact AIA Trial Strategies
              Friday, January 15, 2021

              While 2020 was an impactful year for everyone, the Patent Trial and Appeal Board (PTAB) designated numerous decisions and implemented procedural changes that affect AIA Trial Practice. These new developments include: Rule Changes (Institution, Presumptions) and Clarification Memos (Applicant Admitted Prior Art) Discretionary Denials due to Prior Examination (Advanced Bionics) and Parallel...

            • PTAB Year in Review - Designated Decisions, Constitutional Challenges, and AIA Procedures
              Monday, January 13, 2020

              The Patent Trial and Appeal Board (PTAB) continued to have a meaningful impact on IP litigation in 2019 as the preferred venue for challenging validity. There were a number of significant developments at the PTAB in 2019 including: numerous designated decisions, Constitutional challenges, and several procedural updates that will affect...

            • PTAB Year in Review and Looking Forward - New Procedures Require Reassessment of AIA Trial Strategies
              Monday, December 17, 2018

              During 2018, Federal Circuit and Supreme Court rulings triggered important changes to IPR and other post grant proceedings before the Patent Trial and Appeal Board. In addition, the Board recently announced several new procedures that will affect AIA trial practice. These changes present new options for both petitioners and patent...

            • PTAB and IP Litigation 2017 Year in Review
              Wednesday, January 31, 2018

              2017 was another remarkable year for intellectual property disputes, including IP litigation and proceedings before the USPTO Patent Trial and Appeal Board. Landmark Supreme Court decisions and cases argued, but not yet decided, should cause parties in AIA post grant proceedings to reassess their strategies. In addition, the Federal Circuit’s...

            • Sovereign Immunity at the PTAB: Gimmick or Genius?
              Monday, October 23, 2017

              When drugmaker Allergan announced in early September that it had transferred patents on a best-selling eye drug to the Saint Regis Mohawk Tribe in upstate New York, IP experts were caught flat-footed. Allergan's move to sidestep an inter partes review at the PTAB by taking advantage of the Tribe's sovereign...

            • Quarterly Review - Intellectual Property Impact
              Monday, March 27, 2017

              At the end of each quarter, the speakers will review the appellate decisions during the quarter that will have the greatest impact on Intellectual Property law. Since the last quarterly webinar, the Supreme Court and Federal Circuit have issued several significant IP rulings, including decisions that will affect on-going discussions concerning...