Since 2012, Inter Partes Review (“IPR”) has emerged as one of the most significant new procedures in patent law. An IPR is a proceeding in the Patent Office, and allows a party to challenge an issued patent on certain prior art grounds.  If successful, the challenging party can invalidate some or all of the patent claims. IPRs can be an alternative to challenging a patent in court, although oftentimes IPRs are filed while a patent lawsuit is also ongoing.

Here at Knobbe Medical, we continue to track and identify Medical Device IPRs that have been filed.

Below is a summary of the 315 Medical Device IPRs Knobbe Medical has identified between December 22, 2012 – November 30, 2016:

Cases Filed – 315

• Decision Regarding Institution Made – 222
• Pending Institution Decision – 63
  • Instituted and Subsequently Settled/Patent Owner Terminated – 51
  • Instituted and Pending Final Decision – 45
  • Not Instituted – 73
  • Final Decision Reached – 53
•  Settlement/Patent Owner Termination Prior to Institution Decision – 30

Average Time to Decision –

• Average Time for Decision of Institution to be Reached = 181 days
• Average Time for Final Decision to be Reached = 529 days

As the number of IPR filings in the medical device industry continues to increase, this procedure is proving to be a powerful tool for companies and patent owners to challenge issued patents.

Please note that determining what is considered a “Medical Device IPR” was subjective and the data above is only intended to provide a general overview of medical device IPRs filed in the last couple of years, is based on public databases, and may not be accurate or complete.

Even if you are already familiar with IPRs, the following videos illustrate how actual IPR practitioners might approach some common issues.

Introduction to IPRs

Learn or refresh yourself on the basics of IPRs. Topics include:

• An overview of the patenting process and ways in which patent disputes can arise
• A description of how the Patent Trial and Appeal Board (PTAB) is structured and how IPRs function
• High-level strategic considerations for both patent holders and petitioners to help position themselves for success throughout the IPR process

Strategic Insights for IPRs

Hear insights into the process of successfully managing IPRs. Topics include:

• A clear description of the timeline associated with an IPR proceeding
• A walk-through of an IPR proceeding, including a trial
• What skills a successful IPR practitioner must possess to ensure the best representation at the PTAB