Attacking a “Junk Patent”


Sometimes the USPTO screws up and issues a patent for a product or method that has been used in the industry or is well known.  Junk patents are often used by “patent trolls” to extort money from legitimate businesses.  Congress sought to provide a remedy from junk patents being asserted against businesses.  In 2012, Congress created (i) Post Grant Review and (ii) Inter Partes Review procedures.  These procedures are to give a party a mechanism for attacking junk patents that the patent owner is holding over their head (and threatening an infringement law suit).



I have previously discussed Post Grant Review from the stand point of the patent owner achieving an award of patent only to be dragged before the Patent Trial and Appeal Board (PTAB).  See “You may have a patent but there are still Sharks in the Water”.

Today, I am discussing the second procedure, i.e., Inter Partes Review (IPR).

Simply stated, the IPR procedure allows a third party (not the patent owner) to petition the Patent Trial and Appeals Board (PTAB) to review an issued patent.  The basis of the review is that the patent is invalid since it is anticipated by the prior art, i.e., the patent invention is not novel, or that the patented invention was obvious to a person skilled in the relevant technology.  Recall novelty is required under 35 USC Section 102 and non-obviousness is required under 35 USC Section 103.  See my posts Novelty and Obviousness.

Issues of the patent not being valid due to it covering non-patent eligible subject matter or that the patent is fatally flawed for not adequately disclosing the invention to a person skilled in the relevant technology are not grounds for attacking the allegedly “junk patent”.  Recall non-patent eligible subject matter is covered by 35 USC Section 101 and failure of the patent to teach enablement (to the person skilled in the relevant technology) is subject of 35 USC Section 112.

You must wait 9 months after the patent issues to file your petition to the PTAB.  This 9 month waiting period is harmonious with the 9 month window allowed to file a petition for Post Grant Review.  See above.

Inter Partes Review (IPR) is initiated by filing a petition with the PTAB.  The patent owner is given 3 months to respond.  PTAB has 3 months to determine if you (the petitioning party) is likely to succeed.  If yes, PTAB will then establish a discovery and trial schedule.  Then each party can conduct discovery, e.g., submit written questions to the other party, designate experts, conduct depositions (questions and answers of witnesses under oath), etc.  The PTAB will listen to oral arguments.  A decision is supposed to be made on the patent validity within 12 months of the petition being filed.



The IPR procedure is intended to provide a more cost efficient means to challenge a junk patent.  Cost efficiency is relative, the proceeding can cost 10s of thousand of dollars.  However it is significantly less expensive than defending a patent infringement lawsuit.  The procedure is intended to time efficient, i.e., faster than a trial proceeding in federal district court.

It may be an imperfect solution but it does provide a remedy.  You have a recourse to threats of a troll filing suit against you (and the uncertainty of not knowing if the threat is a bluff or not).

Copyright David McEwing 2021