Squires' Latest Precedential Decision Slams Use of IPR for 'Litigation Leverage'

"The lack of a jury verdict as to anticipation or obviousness in the now-completed jury trial does not entitle Petitioner to re-litigate the same issues at the Office."

"The opinion emphasized that AIA proceedings were intended by Congress to be used as an alternative to litigation, not as a tool for harassment of patent owners, but that Patent Trial and Appeal Boar (PTAB) statistics over the last 15 years demonstrate that "many petitioners seek AIA review in parallel with litigation to gain litigation leverage," and that petitioner practices such as serial petitions, subsequent petitions following a loss in other forums, and inconsistent positions between forums reveal misuse of the system."

"Furthermore, who is using the system most indicates a problem, said the opinion. While Squires has emphasized that the extent of U.S.-based operations and small business status are important factors in determining whether to institute AIA trials, the precedential opinion noted that 15 years of data shows that "a handful of market dominant companies have filed most petitions for AIA review." One study shows that "the top ten petitioners-most, if not all, of whom are market dominant companies-filed roughly 1,900 petitions, while the next 70 petitioners combined filed roughly the same number.""

A Director Discretionary Decision denied institution of an inter partes review and marked the decision precedential. The reasoning emphasized that AIA proceedings were designed as an alternative to litigation, not as a mechanism to harass patent owners. Evidence from PTAB statistics over 15 years indicated that many petitioners seek AIA review alongside litigation to gain leverage. The decision pointed to patterns such as serial petitions, petitions filed after losses in other forums, and inconsistent positions between forums as indicators of misuse. It also noted that petitioning behavior is concentrated among a small number of market dominant companies, suggesting systemic concerns. The decision further stressed that AIA reviews should be guided by public interest considerations.

Read at IPWatchdog.com | Patents & Intellectual Property Law