INTER PARTES REVIEW: AN IP POWER SWITCH

By: Tyler Train*

I. Introduction

1. The Inception of Inter Partes Review

On September 16, 2011, President Barack Obama signed the Leahy-Smith America Invents Act (AIA), drastically altering the patent law landscape.  One of the most significant impacts of this new legislation was the change in post-grant patent validity challenge proceedings from inter partes reexamination (Reexamination) to inter partes review (IPR), which took effect on September 16, 2012.[1]  IPR was instituted “to establish a more efficient and streamlined patent system.”[2]  Prior to the implementation of IPR, Reexamination was criticized and underutilized for its numerous shortcomings including, inter alia: prolonged timelines for each proceeding (lasting up to eight years with appeal); limiting the petitioner’s[3] involvement in the process; and failing to attain decisive outcomes.[4]  As a result, Congress created a more time-sensitive and adjudicative proceeding in IPR to be held by the Patent Trial and Appeal Board (PTAB).  A hallmark of this transition is that Congress transformed the post-grant proceeding “from an examinational to an adjudicative proceeding.”[5]  The changes affect the backdrop of virtually all patent disputes arising after 2012.  This Article will provide an analysis of how IPR affects bargaining power in patent settlement negotiations.[6]

2. Stays of Litigation

Whether a patent litigation will be stayed—pending the final written decision of a post-grant proceeding such as IPR—affects bargaining power substantially.[7]  If an IPR petition is granted prior to the petitioner being served a complaint of infringement, then an automatic stay is created until the conclusion of the IPR proceeding.[8]  However, if the petition is granted after the petitioner is served, then it is at the court’s discretion to grant a stay of the civil action in an effort to gain guidance from the PTAB for the validity of the patent.[9]  Because there are stricter standards for maintaining patent validity in front of the PTAB as opposed to a court, the decision to grant a stay can significantly benefit a defendant’s bargaining position.[10]  When a plaintiff’s patent is invalidated, the consequences can extend far beyond the present litigation.[11]  A cancellation or narrowing of patent claims can jeopardize other infringement lawsuits and licensing deals already in place and even allow competitors to creep into same or similar technologies.  This gamble escalates a plaintiff’s worst alternative to a negotiated agreement (WATNA),[12] because not reaching an agreement can also have adverse effects on third-party relationships, creating an enormous incentive for patent owners to settle prior to the potential invalidation.  When a stay is granted the defendant knows that the owner’s safest option is to settle the case to preserve valuable third-party relationships.[13]

Courts generally look at three factors when deciding whether to grant a stay based on a totality of the circumstances: “(1) whether discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial of the case;[14] and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving party.”[15]  The first factor implies that courts are more likely to grant a stay at early stages before too much time and money have been sunk into the litigation.[16]  The second “simplification” factor often refers to whether the patent claims will be narrowed or cancelled, because either may greatly simplify or even eliminate the infringement issue before the court.[17]  Additionally, courts may consider the effect that an estoppel on the parties will have in simplifying the litigation.[18]  The third factor looks at fairness to the plaintiff.  However, the undue prejudice standard carries a relatively high threshold, and courts have routinely held that, “[m]ere delay in the litigation does not establish undue prejudice.”[19]  Courts have displayed more willingness to grant discretionary stays with the inception of IPR indicated by an 86% grant rate.[20]  This is because the majority of the changes in IPR proceedings respond favorably to this factor list.  Due to the substantial influence on the settlement process of a court’s decision to grant a stay, part of the analysis below, where applicable, will consider the effects that IPR can have on stays of litigation as well.

II. Transformation from Reexamination to IPR

1. Statutory Bar to File for IPR

One of the major changes from Reexamination to IPR was the statutory bar that now requires a defendant to petition for IPR within one year of being served a complaint for infringement.[21]  This bar was aimed at addressing the concerns facing plaintiffs that decisions of patent validity needed to be obtained quickly and effectively.  Subsequent to AIA procedure, defendants could use a “wait and see approach” to hold off on filing for Reexamination until they had a better understanding for how the trial was progressing.[22]  IPR’s one-year bar eliminates this strategy and forces defendants to play their hands earlier.  In negotiation, information gathering is a critical tool, and the right piece of information at the right time could tip the scales in reaching an agreement.[23]  With IPR, plaintiffs will know whether their patent will be challenged by the PTAB within one year of serving the complaint,[24] which can allow them to clarify the issues and prepare a negotiation strategy accordingly.[25]

Another more practical way this change affects the litigation and settlement process is that summary judgment motions are often not filed in patent suits before this one-year mark.[26]  Therefore, defendants who feel confident about their summary judgment motions may not want to pay the increased filing costs associated with IPR.[27]  Though, if they choose not to file before the one-year deadline and lose their summary judgment motions, plaintiffs will have an upper hand because litigation carries a presumption of validity that is not in IPR.  This makes the threat of post-grant review so important, because it is often defendants’ best alternative to a negotiated agreement (BATNA).[28]  Therefore, defendants must now strongly consider paying the high costs to file for IPR or settle the case before their year runs in order to keep their options open and to ensure they are not forced to enter late-stage settlement discussions without the valuable threat of IPR.[29]

2. Institutional Standard

The AIA brought multiple changes to procedural standards.  One was imposing a more stringent standard to transition from the petition stage to a post-grant proceeding.  For a Reexamination petition, a petitioner had to raise a “substantial new question of patentability.”[30]  The AIA now requires a “reasonable likelihood that the petitioner will prevail with respect to at least one challenged claim” in order to institute an IPR proceeding.[31]  Reexamination’s standard required a more cursory look, essentially asking whether something was missed in the initial examination.[32]  However, the likelihood of success determination requires the Patent Office to inquire about the petition’s merits much like a court would when, for example, considering an injunction[33]  On its face, raising the bar would seem to help patent owners in settlement talks.  In fact, the percentage of petitions granted has been reduced from 93% under Reexamination to 78% under IPR.[34]  Nonetheless, this heightened threshold could offer greater indirect benefits to petitioners overall when considering its impact on courts’ decision of stay.  The new standard can serve as a proof to judges when factoring whether the IPR will ultimately simplify the litigation.[35]  Defendants can argue that by granting their petition, the Patent Office has effectively told the public that there is a reasonable likelihood that the plaintiff’s patent will be narrowed or invalidated after review.  This argument is statistically supported: before the AIA, 61% of Reexamination decisions resulted in some claim change (i.e., amended, modified, or cancelled);[36] under the IPR system, this rate has swelled to 87%.[37]   Thus, a plaintiff’s BATNA takes a sizable hit whenever an IPR is granted, because the petitioner, the court, and third-party onlookers all know that the patent is especially vulnerable.[38] So while plaintiffs may gain a marginal bump in bargaining power pre-grant (because 78% is still a high percentage of grants), this power immediately shifts back to defendants upon the granting of an IPR petition.

3. Evidentiary Rules

The AIA also transitioned post-grant proceedings from an examinational to a “truly adversarial” process through allowing expert discovery and depositions.  A petitioner in a Reexamination proceeding was limited to filing declarations, but IPR now enables the parties to offer evidence through oral arguments  Introducing expert depositions will arm petitioners with the firepower to bring in technical experts and lawyers aimed at tearing down a patent’s validity, which was initially granted by a patent examiner after only around eighteen hours of work.[39]  With a stronger validity challenge, defendants gain more perceived power in negotiating,[40] because plaintiffs will no longer have the benefit of the ex parte one-sided proceeding previously resembled in Reexamination.

However, the freedom comes at the cost of litigation-type prices.  The next Section will explore in more detail how the IPR proceeding is much more expensive than its Reexamination counterpart due largely to the new ability to offer expert deposition.

4. Costs

The institutional costs after the transition to IPR have increased significantly.  A Reexamination petition would cost $8,800 with all but $830 being refundable if the petition was denied.[41]  Conversely, filing an  IPR petition costs a minimum fee of $23,000,[42] $14,000 of which is refundable for denied petitions.[43]  The average cost for a Reexamination proceeding was estimated at $280,000.[44]  For an IPR proceeding, the costs run between $300,000 and $800,000.[45]  As discussed supra, this substantial increase is directed to the adjudicative nature of IPR, requiring litigation-type expenses such as enhanced discovery, depositions, and experts.[46]

Except for giant corporate defendants like Google and Apple, who have deep pockets to fight any proceeding before them, most defendants will be deterred by the high costs of an IPR proceeding.[47]  Although these high costs are allocated among both sides, this likely affects defendants more.  First, the defendant, as petitioner, is the sole bearer of the significantly increased institutional costs.  Therefore, by filing a petition, the defendant must come up with $23,000 and risk $9,000 if the petition is not granted.  Furthermore, plaintiffs in a patent infringement suit may hire lawyers on a contingent fee basis, whereas defendants must pay hourly rates with upfront retainers.  Thus, economically, a plaintiff’s BATNA on contingency might not cost anything while the defendant’s IPR alternative usually requires taking a big financial hit before a trial even begins.  However, the defendant might realize that compared to the $1,000,000 to $6,000,000 budgets associated with patent litigation,[48] IPR could still be a cost-effective option.[49]

5. Duration

One of the biggest issues the Patent Office faced when administering Reexaminations was the drawn-out nature of the proceedings.  Reexamination proceedings would normally average between 28.9 to 41.7 months to conclude.[50]  Conversely, IPR operates on a much more “aggressive timeline,”[51] imposing a statutory limit of eighteen to twenty-four months.  When a petition for IPR is filed, the Director has three months from either the date of response by the patent owner or the expiration of the three-month period afforded to the patent owner to make such a response.[52]  Therefore, the latest that a decision on the petition can be made is six months from the date of filing.  If granted, the PTAB must issue a final written decision of validity within one year of the grant, which is only extendable up to six months for good cause.[53]

This may have significant direct and indirect impacts on parties’ settlement discussions.  Often in litigation, delays prove more beneficial to the defendant, because they maintain the status quo.  The delay in Reexaminations gives defendants more options and time to sell off their current inventory and explore new alternatives, because plaintiffs’ threats of liability are so distant.[54]  In contrast, an IPR proceeding creates a much shorter delay and places a more palpable threat of litigation upon defendants.  For this reason, the IPR system seemingly benefits patent owners by moving the litigation process along faster and by putting pressure on defendants.  Whereas before defendants may have lacked urgency to negotiate, IPR’s streamlined process may impose the urgency necessary to get a defendant to the table.

However, the indirect effects of how this change can factor into a court’s decision of whether to grant a stay must also be considered.  Ironically, savvy defendants will flip the benefits for plaintiffs addressed above by including them in their motions to grant a stay, reasoning that these benefits will lead to less prejudice for plaintiffs.  Courts have been receptive to this line of reasoning and more willing to see that IPR’s expedited procedures will mitigate a plaintiff’s concerns.[55]  Therefore, if this fact causes judges to grants more stays overall, then defendants’ indirect benefit may very well outweigh plaintiffs’ direct benefits of faster results.

6. Petition Length

One way the AIA allowed IPR to operate on such a shorter timeline than Reexamination was to greatly cut down the size of the parties’ petitions by placing a cap on the number of pages at sixty and limiting the number of claim amendments to “a reasonable number of substitute claims.”[56]  Prior to the AIA, neither of these limits existed, so the average length of a Reexamination petition was 246 pages.[57]  Limiting the length of the petitions, though imposed on both sides, could have a harsher pragmatic effect on petitioners.  The sixty-page limit forces both sides to focus on their strongest arguments.[58]  However, the petitioners are in the position to “poke holes” in the patent owners’ patents, so instead of poking as many holes as possible, petitioners now have to narrow their focus on only a few and hope that they picked their spots wisely.[59]  The patent owners, by contrast, have always been in the position to focus their argument on one overarching theme: they are the owners of a valid patent.[60]  By limiting the length of the petitions, plaintiffs can focus their energy on defending against these positions raised by petition and exploiting these interests when returning to the courtrooms and negotiation tables.

7. Claim Construction

Another reason that the claim amendment limitation addressed in the preceding Section is not particularly harmful to plaintiffs is that the standard for interpreting challenged claims narrowed under IPR.[61]  Reexamination operated under a “broadest reasonable interpretation” standard,[62] but the AIA requires the PTAB to use a “proper meaning of a patent claim” standard for IPR.[63]  Reexamination’s standard read any ambiguity in the claim language against the patent owner.[64]  However, IPR’s standard narrows the reading of the claim for validity purposes. This is significant when determining whether a prior art reference “reads on” or anticipates the claim at issue.  The narrower standard of IPR more closely resembles the litigation standard of “proper meaning paired with a presumption of validity.”[65]  Although there is no presumption of validity in IPR, this standard can still help patent owners defend against prior references that may have previously invalidated or required modification of their patent claims, effectively reducing the possibility of a WATNA invalidation situation.

The flip side, however, is that a claim upheld on Reexamination under the broadest reasonable standard might have served to inoculate the claim later in litigation. While the overlapping nature of broad claims may hurt patent owners when their patent is being scrutinized, when it is the defendant’s actions that are being scrutinized for infringement, the patent owner wants the court to construe the claims as broadly as possible.  Normally, courts will not read claims as broadly as an examiner would in prosecution, but judges tend to give deference to the interpretations used in post-grant proceedings as to not create conflicting claim constructions for the record.[66]  This might have given plaintiffs a slight edge in settlement discussions when a Reexamination was finalized, but overall, plaintiffs will likely welcome the narrowed standard under IPR for equipping them with a stronger response to a defendant’s threat of invalidation during settlement negotiations.

8. Estoppel

Finally, the AIA brought two major reforms to the vital estoppel requirement for a more decisive post-grant proceeding.  The first was another procedural standard change.  After a Reexamination decision, parties were estopped in a subsequent civil action from asserting grounds that they “raised or could have raised” in the Reexamination.  However, parties in litigation after an IPR decision are only estopped from asserting grounds that they “raised or reasonably could have raised.”  The statutory inclusion of “reasonably” narrows the estoppel restriction considerably.  The new IPR estoppel rule gives parties a little “wiggle room” (e.g., it would have been too expensive or time-consuming).  The question of which side it benefits more in a bargaining situation brings up an interesting dichotomy.  On one hand, the invalidation statistics, presented supra, suggest that only 13% of patents make it through IPR unscathed.  This tends to mean that patent owners are more likely to argue against an IPR final decision and enjoy the relaxed standard of the estoppel requirement.  However, in practice, petitioners may find more benefit from a relaxed estoppel.  As discussed previously, it is the job of the petitioner to poke holes in a patent owner’s patent.  Therefore, petitioners may rely on the loosened estoppel standard to raise more issues.[67]  This could provide defendants with more confidence while negotiating a settlement.  Similarly, plaintiffs who prevail in IPR must now be mindful that estoppel no longer provides an absolute bar and that defendants may still have a few invalidity arguments to raise later in litigation and settlement.

In contrast, the second change strengthens the estoppel’s effect after an IPR concludes.  The estoppel requirement now binds parties immediately upon a final written decision by the PTAB, whereas Reexamination estoppel only became effective after all appeals had been exhausted.[68]  Therefore, now the direct benefits of a faster binding estoppel would seem to apply more often to plaintiffs.  Though once again, this change presents indirect implications on a court’s willingness to stay litigation.  A judge deciding a petition to stay now knows that immediately after an IPR decision, all grounds raised in the IPR are off limits in the civil action.  This could potentially save the court significant amounts of time and money by not having to re-adjudicate the parties’ strongest validity arguments, instead deferring to and allowing the PTAB to spend its resources deciding the issues.[69]  As has been a constant theme, passim, increasing courts’ willingness to grant a stay generally outweighs plaintiffs’ possible direct benefits and augments defendants’ bargaining power.

III. Conclusion

The AIA’s implementation of IPR over Reexamination has undoubtedly changed the scope for settlement discussions in patent litigation.  Although Congress had many public interest concerns when designing IPR, such as the desire for a quicker and more decisive review, there are built in benefits to both sides of the process.  Plaintiffs are likely benefited the most by the one-year statutory bar on defendants to file a petition for IPR.  This change forces defendants to decide and reveal their strategy earlier, and coupled with the increased costs to file a petition, levies increased financial strains.

Conversely, defendants’ biggest advantage is the amplified threat of a stay of litigation.  Courts have considered the same factors when determining whether to grant a stay of the civil action before and after the AIA, but new IPR rules and procedures are more effective at addressing these factors and incentivizing judges to grant stays more often.[70]  Considering the high invalidation rates of IPR, the granting of a stay can be particularly damaging to a plaintiff’s bargaining power.  It also appears to have assuaged defendants’ concerns of paying the increased institutional costs associated with IPR as evidenced by the flood of petitions filed for IPR relative to the “underutilized” Reexamination process.[71]  Defendants who choose to undergo the encumbrance in IPR are generally rewarded.


[*] Tyler Train earned his Juris Doctorate from Pepperdine School of Law in May 2017 and is registered with the United States Patent and Trademark Office. At Pepperdine, he served as an Intellectual Property Fellow at the Palmer Center for Entrepreneurship and the Law and earned a certificate in Dispute Resolution from the Straus Institute for Dispute Resolution. Tyler is also a co-founder of the Pepperdine Intellectual Property Student Association. Tyler is a graduate from Louisiana State University, where he received his B.S. in Pre-Medical Studies and is currently pursuing his M.S. from Johns Hopkins University in Biomedical Engineering. Equally inspired by many of the professors at Pepperdine School of Law, Tyler would like to give a special thanks to Brian Philpott for his introduction to patent law and guidance through the writing of this article. Tyler would also like to thank his family for their continued support throughout his education.

[1] David S. Abrams & R. Polk Wagner, Poisoning the Next Apple? The America Invents Act and Individual Inventors, 65 Stan. L. Rev. 517, 519 (2013).

[2] Changes to Implement Inter Partes Review Proceedings, 77 Fed. Reg. 7041 (Feb. 10, 2012).

[3] This Article will use “petitioner” and “defendant” interchangeably depending on whether the party is in a post-grant or litigation proceeding.  In the same way, “patent owner” and “plaintiff” will be interchanged.

[4] W. Michael Schuster, Invalidity Assertion Entities and Inter Partes Review: Rent Seeking as a Tool to Discourage Patent Trolls, 51 Wake Forest L. Rev. 1163 (Winter 2016).

[5] Joseph W. Dubis, Inter Partes Review: A Multi-Method Comparison for Challenging Patent Validity, 6 Cybaris Intell. Prop. L. Rev. 107, 135 (Summer 2015).

[6] See Leigh L. Thompson, The Mind and Heart of the Negotiator 149 (Stephanie Wall & Kristin Ellis-Levy eds., 2015) (“Negotiators who have power are in positions to claim the lion’s share of the resources.”).

[7] Telephone Interview with Brian Philpott, Partner, Koppel Patrick Heybl & Philpott, P.C. (Apr. 14, 2017).

[8] 35 U.S.C. § 315(a)(2) (2011).

[9] Matthew R. Frontz, Staying Litigation Pending Inter Partes Review and the Effects on Patent Litigation, 24 Fed. Cir. B.J. 469 (2015).

[10] If the court decides against staying litigation, then this creates two parallel proceedings.  These parallel proceedings, patent litigation and IPR, are both extremely expensive, and having to fund both at the same time could force defendants to withdraw their challenge and focus on defending their case.  However, when a court grants a stay, defendants can focus all their effort on attacking the validity of the plaintiff’s patent.  Id.

[11] See Schuster, supra note 4, at 1181 (“Plaintiffs don’t want their cases to be stayed . . . because this increases the pressure to settle”).

[12] Jan Frankel Schau, Know Your BATNA and WATNA, Mediate.com (Nov. 2013), http://www.mediate.com/articles/FrankelSchauJbl20131104.cfm.

[13] See generally Thompson, supra note 5, at 151 (“Assess the other party’s BATNA”).

[14] Compare Interview by David Enzminger with Hon. John Kronstadt, United States District Court Judge, C. D. Cal., in Santa Monica, Cal. (explaining one of the factors he considers in granting a stay is whether the IPR will clear up an issue that may help settlement talks) with Interview by David Enzminger with Hon. Roy Dalton, United States District Court Judge, M.D. Fla., in Santa Monica, Cal. (expressing a distaste when he feels like his court is used as a placeholder during a settlement).

[15] Telemac Corp. v. Teledigital, Inc., 450 F. Supp. 2d 1107, 1111 (N.D. Cal. 2006).

[16] See Norred v. Medtronic, Inc., No. 13-2061-EFM/TJJ, 2014 WL 554685, at *2 (D. Kan. Feb. 12, 2014) (“If the Court has invested significant resources in becoming familiar with the patents, relevant art, the products, and claim construction, it would be a waste of judicial resources to delay litigating the instant matter”); see also Frontz, supra note 9, at 473 (“Litigation in its early stages may weigh in favor of a stay, because a stay could significantly limit the expenses and efforts used by the court and the parties.”).

[17] See PersonalWeb Technologies, LLC v. Facebook, Inc., No. 5:13-CV-01356-EJD, 2014 WL 116340, at *4 (N.D. Cal. Jan. 13, 2014) (“In the event the PTAB cancels or modifies any of the asserted claims, the scope . . . would likely be narrowed and simplified.”).

[18] See Frontz, supra note 9, at 479 (“Perhaps a more critical issue of simplification is the estoppel effect, where a court will not have to hear arguments that the PTAB has already decided.”).

[19] Universal Elecs, Inc. v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1033 (C.D. Cal 2013); see also Sorensen ex rel. Sorensen Research & Dev. Tr. v. Black & Decker Corp., No. 06CV1572BTMCAB, 2007 WL 2696590, at *4 (“Protracted delay is always a risk inherent in granting a stay, yet courts continue to stay actions pending reexamination.”).

[20] See Frontz, supra note 9, at 485 (“[T]he courts statistically have only denied a motion to stay approximately 14% of the time (granting 86%).”).

[21] 35 U.S.C. § 315(b) (2011).

[22] Philpott, supra note 7.

[23] See DRJIM, In a Negotiation, Information Is Power, Accidental Negotiator (Dec. 12, 2014), http://theaccidentalnegotiator.com/preparation/in-a-negotiation-information-is-power (“In a negotiation, the more information you have, then the more power you have”).

[24] Frontz, supra note 9, at 474 (“The new statutory restrictions for filing an inter partes review, specifically, the aggressive timeline, makes it likely most litigations will still be in their infancy when the petition for inter partes review is decided.”).

[25] See DRJIM, supra note 23 (“When we obtain important information that the other side really doesn’t want us to have, this can help us to clarify the issues that are important to us and will show us the path that we want to follow.”).

[26] Philpott supra note 7.

[27] Id.

[28] Roger Fisher & William Ury, Getting to Yes: Negotiating Agreement Without Giving In (Bruce Patton ed., 1991) (“[T]he reason you negotiate is to produce something better than the results you can obtain without negotiating.”); see also Thompson, supra note 6, at 150 (“When negotiators have a great BATNA, they have a lot of power.”).

[29] See Thompson, supra note 6, at 151 (“Keep your options open even after you have come to the negotiation table because negotiations could break down for a variety of reasons”).

[30] Dubis, supra note 5, at 137.

[31] Id.; see also Frontz, supra note 9, at 471 (“This new standard is substantially more stringent than the reexamination standard of review, ‘substantial new question of patentability.’”).

[32] Philpott, supra note 7.

[33] Id.

[34] Dubis, supra note 4, at 144.  While there is some discussion of whether to attribute these statistics to the higher institutional bar or just the vast increase in overall petitions filed (the number of petitions filed almost tripled from the last year of Reexamination to the first year of IPR), these numbers are at least consistent with the goal of creating a more exclusive standard.  See id.  (“[T]here were 1,310 inter partes review petitions filed in 2014; whereas, there were only 530 inter partes reexamination petitions filed in the last year it was available.”).

[35] See Frontz, supra note 9, at 471 (“This higher standard provides the thought that any delay suffered in litigation as a  result of inter partes review will be worthwhile because, it provides assurances that it is more than likely that at least one claim will be modified or cancelled”).

[36] Dubis, supra note 5, at 146.

[37] Id.

[38] See Interview with Hon. Raymond Chen, United States Circuit Judge, Fed. Cir., in Santa Monica, Cal. (Mar. 21, 2017) (“Higher invalidity rates place patent owners in weaker positions.”).

[39] Dubis, supra note 5, at 148.

[40] See Thompson, supra note 6, at 150 (“Perceived power is a negotiator’s assessment of each party’s potential power”).

[41] Dubis, supra note 5, at 142.

[42] Id.

[43] Id.

[44] Id.

[45] Id.

[46] Id.

[47] Philpott, supra note 7.

[48] Dubis, supra note 5, at 142.

[49] Katie Shonk, Know Your BATNA: The Power of Information in Negotiation, Program on Negot.: Harv. L. Sch. (Oct. 10, 2017), https://www.pon.harvard.edu/daily/batna/frustrated-by-an-uninformed-negotiator-consider-your-batna/.

[50] Frontz, supra note 9, at 471.

[51] Id.

[52] Id.

[53] Id.

[54] Philpott, supra note 7.

[55] See Automatic Mfg. Sys., Inc. v. Primera Tech., Inc., No. 6:12-CV-1727-ORL-37, 2013 WL 6133763, at *3 (M.D. Fla. Nov. 21, 2013) (“Plaintiff’s concerns are largely mitigated by the expedited procedures of the new inter partes review.”).

[56] Dubis, supra note 5, at 136.

[57] Id.

[58] Philpott, supra note 7.

[59] Id.

[60] Id.

[61] See Dubis, supra note 5, at 138 (“This shift in claim construction standard means that inter partes review proceedings do not require as extensive of claim amendment procedures.”).

[62] Id.

[63] Id.

[64] See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (“The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications . . . upon giving claims their broadest reasonable construction[.]”).

[65] Dubis, supra note 5, at 138.

[66] Philpott, supra note 7; see also Chen, supra note 38 (admitting that, as a federal circuit judge, he feels like the PTAB is doing “a great job”); see generally Interview by Laura Burson with Hon. Matthew Clements, Lead Administrative Patent Judge, Patent Trial and Appeal Board, in Santa Monica, Cal. (Mar. 21, 2017) (describing an incorrect perception that affirmance rates from the courts on PTAB decisions are lower than they actually are).

[67] Philpott, supra note 7.

[68] Dubis, supra note 5, at 140.

[69] See id. (“This different temporal estoppel effect may impact whether a judge would be willing to grant a discretionary stay in concurrent litigation pending the completion of the proceeding before the Patent Office.”).

[70] See Frontz, supra note 9, at 485 (“The analysis of the courts is trending towards favoring stays of litigation pending inter partes review.  This trend is forming because, in analyzing the factors, the advantages of an inter partes review far outweigh the disadvantages.”).

[71] See Chen, supra note 38 (describing the bogged down Federal Circuit case docket from IPR appeals).