Inter Partes Review and PTAB Practice: A Comprehensive Guide

96 questions on inter partes review and PTAB practice, answered and cited by the UpLaw editorial team.

• Can any IPR petitioner appeal an adverse final written decision?
• Can a petitioner introduce new theories or evidence in its reply brief?
• Can I file more than one IPR petition against the same patent?
• Can I use a prior-art product or system in an IPR?
• Can the Board raise its own ground against substitute claims?
• Can the parties settle an IPR, and what happens to the proceeding?
• Can the PTAB cancel a claim that a jury found not invalid on the same art?
• Does a complaint that was voluntarily dismissed still trigger the one-year bar?
• Does settling an IPR avoid estoppel?
• Does the burden of proof ever shift to the patent owner in an IPR?
• Do foreign-language prior-art references need a translation for an IPR?
• Do motions to exclude evidence work at the PTAB?
• How broad is IPR estoppel after CalTech v. Broadcom?
• How does all-or-nothing institution change strategy for petitioners and patent owners?
• How does Director Review work after Arthrex?
• How does the burden of proof at the PTAB differ from district court?
• How does the customer-suit pattern create a § 315(b) time-bar problem?
• How does the Federal Circuit review claim construction from the PTAB?
• How do I get additional discovery in an IPR?
• How do I prove public accessibility of a prior-art reference in an IPR petition?
• How do objective indicia of nonobviousness work at the PTAB?
• How do the IPR and district-court tracks feed back on each other?
• How do you appeal a PTAB final written decision?
• How do you avoid a real-party-in-interest problem before filing an IPR?
• How do you win a motion to stay pending an IPR?
• How far does the bar on reviewing institution decisions extend?
• How has Fintiv policy changed since 2022?
• How is a PTAB deposition different from a district-court deposition?
• How narrow is the system-prior-art carve-out from IPR estoppel?
• How should a petitioner handle prior art that was cited during prosecution?
• How should a petitioner select which claims and grounds to challenge?
• How should broad estoppel change a petitioner's prior-art strategy?
• How soon after being sued should a defendant file an IPR petition?
• Is an expert declaration required with an IPR petition?
• Is it constitutional for an administrative agency to cancel an issued patent?
• Is the obviousness law applied at the PTAB different from district court?
• Is there any exception to the § 315(b) one-year bar?
• Is there a right to stay a district-court case pending an IPR?
• Must an IPR settlement agreement be filed with the USPTO?
• Should a patent owner file a motion to amend?
• Should a patent owner file expert testimony with its preliminary response?
• What are intervening rights and how do they affect a motion to amend?
• What are the Fintiv factors?
• What are the main differences between litigating validity at the PTAB and in district court?
• What are the timeless takeaways on avoiding discretionary denial?
• What are the two estoppels created by 35 U.S.C. § 315(e)?
• What are the two traps in the PGR eligibility rule?
• What are the word limits for PTAB trial briefing?
• What arguments actually win at the preliminary-response stage?
• What cases govern Article III standing to appeal a PTAB decision?
• What claim construction standard does the PTAB apply?
• What did SAS Institute v. Iancu decide about partial institution?
• What did United States v. Arthrex decide?
• What does 35 U.S.C. § 315(b) require, and when does the clock start?
• What does a final written decision do?
• What does a well-structured IPR petition contain?
• What does the Phillips claim construction hierarchy require?
• What facts does the Board weigh in deciding real-party-in-interest questions?
• What grounds can and cannot be raised in an inter partes review?
• What happens at a PTAB oral hearing?
• What happens to a patent owner's infringement case when the PTAB cancels the claims?
• What invalidity arguments survive IPR estoppel?
• What is a motion to amend in an IPR?
• What is a real party in interest and why must it be disclosed?
• What is a § 325(d) discretionary denial?
• What is a Sotera stipulation and what does it cost the petitioner?
• What is discretionary denial and why does it matter so much?
• What is inter partes review and why was it created?
• What is privity in PTAB practice?
• What is routine discovery at the PTAB?
• What is the cardinal sin in claim construction, and how do you escape ordinary meaning?
• What is the difference between IPR, post-grant review, and a derivation proceeding?
• What is the institution standard for an inter partes review?
• What is the Motion to Amend Pilot Program?
• What is the patent owner's preliminary response and when is it due?
• What is the schedule for an IPR after institution?
• What is the § 315(a) civil-action bar and how do you avoid it?
• What is the single most important scheduling advice in PTAB practice?
• What is the word limit for an IPR petition and what does it include?
• What makes a strong expert declaration in an IPR?
• What makes something a "printed publication" for IPR purposes?
• What practical rules govern claim construction in parallel PTAB and district-court proceedings?
• What standard of review applies to PTAB decisions on appeal?
• What test do courts use to decide whether a nonparty is a real party in interest?
• What was the Shaw exception to IPR estoppel and why did it disappear?
• When does an accused infringer actually get the benefit of filing an IPR?
• When must the Board decide whether to institute, and can that decision be appealed?
• When should a defendant decline to file an IPR?
• Who bears the burden on a motion to amend after Aqua Products?
• Who bears the burden on the real-party-in-interest question?
• Who may file an IPR petition?
• Why did the PTAB abandon the broadest reasonable interpretation standard?
• Why does the motivation to combine matter so much in an IPR petition?
• Why does the PTAB say a claim is "not unpatentable" rather than "valid"?
• Why do motions to amend so rarely succeed?
• Why is post-grant review so rarely used despite its broader grounds?