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Parallel Litigation and Inter Partes Review: Don't Forget About Reissue



by David B. Cochran
Jones Day - Cleveland Office

Joshua R. Nightingale
Jones Day - Pittsburgh Office

Joseph M. Sauer
Jones Day - Cleveland Office

Peter G. Thurlow
Jones Day - New York Office

August 21, 2014

Previously published on August 2014

Inter partes review ("IPR") was introduced by the America Invents Act ("AIA") to provide a trial-like proceeding for challenging the patentability of patent claims based on patents and printed publications. An IPR trial is often conducted in parallel with United States district court litigation involving the same patent, with an accused infringing party in the litigation filing a petition before the United States Patent and Trademark Office's ("USPTO") Patent Trial and Appeal Board ("the Board") seeking a partial patentability review of the patent. For the IPR trial to be instituted, the petitioner must establish a reasonable likelihood that it will prevail in showing unpatentability of at least one challenged claim. After institution, the AIA provides the patent owner with the opportunity to file a motion to amend the patent by cancelling any challenged claim and proposing a reasonable number of substitute claims. 35 U.S.C. § 316(d)(1).


 

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David B. Cochran
Joshua R. Nightingale
Joseph M. Sauer
Peter G. Thurlow
 
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