November 18, 2013
Inter partes review proceedings (IPRs) are a new form of post-grant proceeding recently created by the America Invents Act (AIA). Generally, an IPR allows a petitioner to challenge the validity of an issued U.S. patent. The IPR is heard at the U.S. Patent and Trademark Office by the Patent Trial and Appeal Board (PTAB).
On November 13, 2013, a three-judge panel of the PTAB issued its first-ever final decision in an IPR proceeding. The IPR, Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, was initiated by Garmin in September 2012 against claims of a patent owned by Cuozzo. Garmin’s petition was the very first of this type to be filed.
Notably, the PTAB reached its final decision in only about 10 months, well within the 12-month time limit required by statute. The decision thus signifies that the IPR procedure may be an attractive option in some cases for parties seeking to invalidate an issued patent. In the Garmin decision, the PTAB found three of Cuozzo’s claims unpatentable over combinations of four different references.
Fitch Even partner Timothy R. Baumann has experience with IPR proceedings and partner Allen E. Hoover has experience with the litigation-related aspects of such proceedings. Please contact either Tim or Allen with any questions concerning IPRs.
Fitch Even IP Alert