An Inter Partes Review (IPR) is usually an unpleasant business for a patent owner, writes Greg DeLassus, a principal at international intellectual property (IP) firm Harness Dickey, in an expert view piece for The Pharma Letter.
This is especially true for the pharmaceutical industry, where 229 of 371 petitions (62%) challenging a patent claim have resulted in an IPR being instituted, and 47% of challenged claims have been destroyed.
Meanwhile, the Court of Appeals for the Federal Circuit (CAFC) only reverses the Patent Trial and Appeal Board (PTAB) around 20% of the time.
Therefore, if the patent owner loses in an IPR, there is a steep climb to get the verdict reversed on appeal. Certain appeal strategies work better than others, however, and three of the more successful approaches claim construction, burden allocation and administrative procedural formalities are discussed, each in turn, below.