A First Look at Inter Partes Review Filings
Since inter partes review proceedings became available on September 16, 2012, thirteen petitions for inter partes review have been filed. Of these, three were filed against patents examined in Group 1600: U.S. Patent 7,790,869, U.S. Patent 7,713,698, and U.S. Patent 6,258,540.
Clerical Deficiency Not Fatal to Filing Date
One petition with clerical deficiencies was deemed “complete” and conditionally granted a filing date, as long as the defects are corrected within 5 business days of the notice. This opportunity to correct clerical errors is consistent with final rule 37 CFR § 42.104, which provides that a Petitioner may file a motion to correct “a clerical or typographical mistake in the petition,” and that such a petition, if granted, will “not change the filing date of the petition.”
Who Has Filed IPR Petitions?
Robert Sterne of Sterne, Kessler, Goldstein & Fox filed four of the thirteen petitions, all on behalf of Intellectual Ventures Management, LLC. My colleague Matthew Smith has filed three petitions, each on behalf of different parties. Robert Lawler of Reinhart Boerner Van Deuren s.c. has filed two petitions, both on behalf of Illumina, Inc.
Learning as We Go
With inter partes review documents readily accessible through the Patent Trial and Appeal Board portal, practitioners and stakeholders can watch inter partes review proceedings progress, and see how the USPTO implements the new law and applies the new rules on a case-by-case basis. Moreover, the twelve-month statutory time period for completing inter partes review proceedings promises to yield final decisions in a relatively short time period, further building a body of examples to draw from. No doubt these first cases will be followed closely and scrutinized for strategies to adapt and lessons to learn.