Dana Hayter (Vice president, legal and corporate affairs and associate general counsel, technology licensing, Intel) was first to speak, reviewing at a fairly high level the current patent litigation environment. The new administrative proceedings under the AIA have the effect of slowing down the rate at which deals are struck and tends to reduce the number of naked patent deals (NPDs). Licensors will now have to risk some of their strongest assets before the PTAB.
Michael Lennon (Partner, Kenyon) then took over. There are more and more opportunities for defendants to challenge the validity of valuable patent assets, he explained, as well as more chances to cite prior art. The USPTO uses a lower standard of proof for invalidating patents than does the District Court, he said, and if patent owners are dragged into inter partes reviews there are more opportunities for defendants to obtain stays -- which is also to their advantage, particularly when it comes to negotiating a settlement. Apparently more than 30 inter partes requests for review have been filed in respect of a single dispute, which gives some idea of their potential impact on a patent owner's prospects for enforcement.
|Abstract, but still|
a recognisable cat?
The final speaker, Laurie Gathman (Principal IP counsel, Philips Intellectual Property & Standards), had performed some research on the survival right of patents following inter partes reviews. Once the battleground was the infringement trial, but now the focus has turned to PTAB invalidity proceedings. Now the proportion of of successful invalidity claims has fallen and at present around 55% of patent claims survive. In the European Patent Office, in contrast, around one third of patents are held invalid, one third amended and one third upheld as they are. As the dust settles, it may be seen that the initial death rate of US patents was related to weak patents. It's worth a patent owner concentrating its efforts on attacks on its patents at the inter partes review stage, since there are page-limits on the challenges at that stage, Laurie added. The US scenario now rather resembles the bifurcated system which is currently familiar in parts of Europe.