Inter Partes Review as a Shield for Technology Purchasers: A Response to Gaia Bernstein's 'The Rise of the End-User in Patent Litigation'
22 Pages Posted: 13 Mar 2015 Last revised: 3 Jun 2015
Date Written: March 11, 2015
In her Article, The Rise of the End User in Patent Litigation, Professor Bernstein makes the case for legislative and judicial action designed to protect technology users from abusive patent enforcement that exploits their relative lack of resources and technical knowledge. This Essay presents the findings of an empirical study designed to determine the extent to which this problem has been mitigated in recent months by inter partes review (IPR) — a reform signed into law more than three years ago but only now emerging as a powerful shield for those accused of patent infringement. My findings suggest that IPR has thus far proven to be a substantial benefit to downstream technology purchasers and other relatively small entities faced with infringement claims. I find that tech purchasers and small businesses have both been nearly as successful as large manufacturers at instituting reviews, halting co-pending litigation, and ultimately winning on the merits of their petitions. In addition, I observe that some manufacturers have filed IPR petitions to challenge patents asserted in court against their customers. However, despite the potential benefits of pursuing IPR, I find that technology purchasers appear to be substantially underrepresented among IPR petitioners, likely due to the high cost involved. Accordingly, additional reform measures may still be advisable to assist those particularly vulnerable to abusive litigation tactics.
Keywords: inter partes review, IPR, America Invents Act, AIA, end user, customer suit, patent reform
JEL Classification: K41, O34
Suggested Citation: Suggested Citation