CREATING LEVERAGE: A PRACTITIONER'S GUIDE TO INTER PARTES REVIEW AND ITS EFFECTS ON INTELLECTUAL PROPERTY LICENSE NEGOTIATIONS

摘要

Litigators have long searched for ways to induce favorable settlements, but long gone are the days of successfully influencing patent owners with an "empty threat." Given the reduced costs and truncated timeline associated with IPRs, however, companies now have significant leverage in negotiations when challenged by patents of questionable validity. When negotiating with an adverse patent owner in a licensing dispute, some practitioners have even begun employing a technique known as the "Pocket IPR." Rather than threatening the potential of an IPR petition, one can invest capital before a negotiation session and arrive with a fully-prepared and ready-to-file petition, which can be considerably more coercive. The "Pocket IPR" is derivative of the "Pocket Reexam," but carries much more clout due to a petitioner's increased likelihood of invalidating a patent under the new IPR proceeding. Although the preparation of an IPR petition can cost thousands of dollars in attorney's fees, in comparison to negotiating settlements for potential actions that amount to millions of dollars, this investment could prove to be "just what the doctor ordered."