Establishing non-infringement and other creative uses of inter partes review

March 31, 2015

Michael N. Rader

(as published in Inside Counsel)

Congress created inter partes review (IPR) proceedings to provide a speedy and economical way of challenging the validity of issued patents before the U.S. Patent and Trademark Office rather than in court. By statute, IPR proceedings are limited to validity challenges based on earlier patents and “printed publications,” as opposed to the various other bases available for challenging patent validity in the federal district courts. IPR proceedings can also be used creatively, however, to achieve results beyond their statutory mandate.

Using IPRs to establish non-infringement

In an IPR, the Patent Trial and Appeal Board (PTAB) generally goes through the formal step of construing (interpreting the scope of) relevant claim terms and phrases. The PTAB’s claim construction process affords IPR practitioners an opportunity to lay the groundwork for a non-infringement defense to the same patent in court.

The PTAB construes claims according to their “broadest reasonable interpretation consistent with the specification,” which is at least as broad, and often broader, than the claim construction that a court would articulate based on traditional canons of claim construction.

The differing claim construction standards before the PTAB and in court create an asymmetry that can benefit accused infringers who elect to file IPR petitions. It is not uncommon for a defendant in a patent infringement suit to conclude that the patent being asserted was meant to cover Technology A and is improperly being stretched to allegedly cover accused products embodying Technology B. A defendant relies on the court’s claim construction process to establish the proper scope of the asserted claims, which may or may not be deemed to cover Technology B.

Under the “broadest reasonable construction” standard, IPR offers an opportunity to invalidate claims using prior art that embodies Technology B even while maintaining in court that accused products embodying Technology B do not infringe. A well-drafted IPR petition, however, may also invite the opposite result: a conclusion by the PTAB that prior art embodying Technology B is outside the scope of the claims even under the “broadest reasonable construction.” In that case, the PTAB will decline to institute proceedings on such prior art, but the PTAB’s decision will give the IPR petitioner (and infringement defendant) a powerful argument that the properly construed claims cannot cover accused products embodying Technology B, such that the court should find no infringement.

Since IPR proceedings progress quickly, the PTAB’s institution decision (which includes claim construction) may come before the district court renders its claim construction. The PTAB’s decision may thus be a catalyst for settlement. In some cases, even the anticipation of a PTAB decision—which could make infringement difficult to prove—will bring the patentee to the table at a very early date.

Using IPRs to establish indefiniteness

While the PTAB’s mandate does not reach validity challenges under Section 112 of the Patent Statute, in certain situations the PTAB still offers views that can impact the “definiteness” of a patent’s claims. The PTAB has several times declined to institute proceedings where it was unable to determine the scope of the claims—for example, where corresponding structure was lacking for a means-plus-function claim element. Even though the PTAB will not formally declare claims invalid for indefiniteness, a conclusion from the PTAB that corresponding structure is lacking may be persuasive evidence of invalidity in court. As in the preceding example, a smartly drafted IPR petition can invite the PTAB to reach such a conclusion.

Using a patentee’s aggression to your advantage

Patentees that sue a number of parties for infringement at the same time, in district court or before the International Trade Commission (ITC), give themselves a lot to lose. A serious blow inflicted by one defendant or ITC respondent will diminish the value of a patent portfolio against every target. Accordingly, multi-defendant and multi-respondent cases present particularly compelling opportunities to use a quickly-filed IPR to advantage in negotiating a favorable settlement.

In one case, we approached the patentee before filing our IPRs and explained our strategy to obtain a statement from the PTAB that would make infringement difficult to prove in court. A high-stakes case against several large companies was hanging in the balance. Our warning did not initially move the patentee. Several months later, however, after having an opportunity to more fully digest what we had done, the patentee returned eager to settle on the condition that our IPRs be withdrawn immediately.


An old adage recommends using an opponent’s strengths to your own advantage. The IPR process provides unique ways to apply this principle to achieve results that extend well beyond the nominal statutory mandate of IPR proceedings.