Inter Partes Review: A Technical Guide

If you're facing a patent infringement claim or considering challenging a competitor's patent, Inter Partes Review (IPR) may offer a faster, more cost-effective path than federal court litigation. But we've seen companies rush into IPR without understanding the strict timing requirements, estoppel consequences, or evidentiary standards, only to find themselves worse off than before.1

In our experience supporting patent litigation teams, IPR success hinges on three factors: comprehensive prior art searching, technically rigorous claim charts, and strategic timing decisions. This guide covers what you need to know about IPR procedures, costs, success rates, and the critical mistakes that can undermine even strong challenges.2

What Is Inter Partes Review (IPR)?

Inter Partes Review is an administrative proceeding at the USPTO's Patent Trial and Appeal Board (PTAB) that allows third parties to challenge the validity of issued patents.3 Under 35 U.S.C. § 311, any person who is not the patent owner may file an IPR petition requesting cancellation of one or more patent claims.4

Created by the America Invents Act (AIA) of 2011, IPR became effective September 16, 2012, replacing the slower inter partes reexamination procedures.56 The AIA represented the most significant change to U.S. patent law since 1952, designed to provide more efficient resolution of patent validity disputes.7

What makes IPR different from court litigation:

IPR challenges are limited to two invalidity grounds: anticipation (35 U.S.C. § 102) and obviousness (35 U.S.C. § 103), based solely on patents or printed publications.8 This matters because you cannot use other prior art forms available in court products, public use evidence, on sale activity, or oral disclosures.9

However, this limitation has an upside. The Federal Circuit confirmed in Ingenico Inc. v. IOENGINE, LLC (May 2025) that IPR estoppel does not extend to system prior art (publicly available products, commercial systems) that wasn't raised in the IPR.10 This means you can preserve certain invalidity defenses for district court even after IPR.

Why IPR Matters: Costs and Strategic Value

Understanding IPR's advantages helps determine whether it's the right tool for your situation.

Cost Comparison: According to the AIPLA Economic Survey, district court patent litigation costs $400,000-$600,000 for matters under $1M at risk, and $3M-$5M for matters over $25M at risk.11 IPR costs are significantly lower: approximately $80,000 through petition filing, $200,000 through motion practice, $275,000 through hearing, and $350,000 through appeal.12

Speed: IPR reaches final decision within 18 months, compared to several years for district court litigation.13

Technical Expertise: PTAB judges have both legal and technical backgrounds. 84% are former patent attorneys, 23% have USPTO examiner experience, and panels are assigned based on technical specialty.1415 This expertise enables more informed evaluation of complex prior art than generalist district court judges.

Lower Burden of Proof: IPR uses "preponderance of evidence" (more likely than not), while district courts require "clear and convincing evidence" (the highest civil standard).16 This difference significantly impacts success rates.

Who Can File IPR and When

Standing Requirements

Any third party except the patent owner may file an IPR petition—you don't need to be sued or even threatened.17 Unlike district court, IPR requires no Article III standing (no injury-in-act requirement).18 However, you must identify all "real parties in interest" and related entities, which can create issues for companies operating through subsidiaries or joint ventures.19

Critical Timing Requirements

These deadlines are absolute. Missing them bars your IPR entirely.

Nine-Month Waiting Period: IPR cannot be filed until nine months after patent grant or termination of any post grant review.20 If you need to challenge a newly issued patent immediately, consider post grant review (PGR) instead.

One-Year Time Bar: Under 35 U.S.C. § 315(b), IPR must be filed within one year of being served with an infringement complaint.21 Note: the clock starts when you're served, not when the lawsuit is filed.22 We've seen companies miss this deadline by weeks because they didn't immediately assess IPR viability upon service.

Estoppel Consequences: Under 35 U.S.C. § 315(e), petitioners who receive final written decisions face estoppel on grounds they raised or "reasonably could have raised."[23] This estoppel applies in USPTO proceedings, district court, and ITC (International Trade Commission) investigations.24

The Federal Circuit clarified in 2022 that estoppel applies to "any ground that the petitioner raised or reasonably could have raised," regardless of whether PTAB actually instituted on that ground.25 However, in Ingenico Inc. v. IOENGINE, LLC (May 2025), the court held that estoppel is limited to patents and printed publications System prior art (commercial products, public demonstrations) is not subject to estoppel.26

IPR Timing Decision Matrix

Situation	Timing Consideration	Risk Level
Sued for infringement	File within 1 year of service or forever barred	Critical
Pre-litigation challenge	File anytime after 9-month waiting period	Low
Parallel district court exists	PTAB may deny if trial date before IPR decision	Medium
Multiple petitioners coordinating	Ensure no privity creates inadvertent time bars	High
Considering multiple petitions	Subsequent petitions face higher scrutiny	Medium

IPR Procedure: Step-by-Step

Phase 1: Petition Filing (Months 1-6)

The petition must include:

• Challenged claims and specific invalidity grounds
• Element by element claim charts mapping prior art to each limitation
• Expert declarations supporting technical arguments
• Prior art patents and printed publications
• Detailed explanations bare citations are insufficient27

Filing Fees: $23,750 request fee for up to 20 claims, plus $470 per additional claim.28 If instituted, an additional $28,125 post institution fee for up to 20 claims, plus $940 per additional claim.29

Patent Owner Preliminary Response: Patent owners have three months to file preliminary responses.30 In our experience, strong preliminary responses can defeat institution, but many patent owners underinvest in this critical phase.

Phase 2: Institution Decision (Month 6)

The USPTO Director determines whether to institute based on "reasonable likelihood" of success on at least one claim.31

Current Institution Statistics (FY 2024-2025):

• FY 2024: 68-74% of petitions instituted32
• FY 2025: Dropped to ~50% due to Director discretionary denials33

By Technology Area (FY 2025):

• Bio/Pharma: 77% | Mechanical: 66% | Chemical: 63% | Electrical/Computer: 62%[34]

Important 2025 Policy Change: In October 2025, USPTO Director John Squires reclaimed sole authority over institution decisions, ending delegation to PTAB judges.35 Institution rates declined from historical ~67% to 44% between May-July 2025, with discretionary denials accounting for 76% of denials.36 This pro patent shift means petitions face heightened scrutiny.

Phase 3: Trial Proceedings (Months 7-18)

If instituted, PTAB issues a scheduling order for the 12 month trial.37

Discovery: Far more limited than district court. Three categories under 37 CFR § 42.51:38

• Routine: Cited exhibits, cross-examination of declarants, inconsistent information
• Additional: Requires showing "interests of justice" under Garmin v. Cuozzo factors39

Expert Testimony: Declarations are the primary evidence vehicle. Expert depositions available for IPR-specific declarations.40

Motions to Amend: Patent owners can seek to amend claims, but success rates historically remain low despite 2024 rule improvements.4142

Phase 4: Final Written Decision (Month 18)

PTAB must issue final decisions within 12 months of institution (extendable by six months).43 Decisions determine whether challenged claims are patentable or unpatentable.

Grounds for IPR: What You Can and Cannot Challenge

Available Grounds (patents and printed publications only):

Ground	Standard	Evidence Required
Anticipation (§ 102)	Single reference discloses every element	Exact correspondence required
Obviousness (§ 103)	References combined would render obvious	Motivation to combine + reasonable expectation of success

What IPR Cannot Challenge:

• Enablement (§ 112) or written description adequacy
• Patent-eligible subject matter (§ 101)
• Best mode or inventorship issues
• Prior art based on products, public use, sales, or oral disclosures4445

If your best invalidity arguments rely on § 101 subject matter eligibility or commercial product prior art, IPR may not be your best forum.

Technical Evidence Requirements

Claim Charts: The Foundation of Every Petition

We cannot overstate this: claim charts make or break IPR petitions. The PTAB will not infer arguments from bare citations.46

Effective claim charts must include:

• Element-by-element mapping to each claim limitation
• Specific citations with pinpoint references to prior art disclosures
• Technical explanations of why cited portions teach the limitation
• Clear reasoning connecting prior art language to claim language47

Expert Declarations

Nearly every successful petition includes expert declarations addressing:48

• Level of ordinary skill in the art
• Claim construction from technical perspective
• How prior art teaches each element
• Motivation to combine references (for obviousness)
• Reasonable expectation of success49

Prior Art Searching

Comprehensive searching within patents and printed publications should cover:

• U.S. and foreign patent databases
• Technical journals and conference proceedings
• Standards documents and specifications
• Academic publications50

Claim Construction in IPR

Since November 2018, PTAB uses the Phillips standard for claim construction—the same standard used in district courts.51 This replaced the broader "broadest reasonable interpretation" standard that previously created divergent outcomes between PTAB and courts.52

Under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), claim terms are construed according to "the meaning that the term would have to a person of ordinary skill in the art at the time of the invention."[53]

Why this matters: 86.8% of patents in AIA proceedings are also litigated in federal courts.54 The Phillips standard creates greater consistency—if a claim survives IPR, the same construction should apply in court. PTAB also considers prior claim constructions from district court or ITC proceedings.55

Success Rates: What the Data Shows

Current Statistics (2024-2025):

• All-claims invalidation rate: 70% of final written decisions result in complete claim cancellation56
• Per-claim rate: 78% of individual challenged claims found invalid57
• Institution rate: 50-74% depending on technology and Director discretionary decisions58

Five-Year Trend: All-claims invalidation increased from 55% (2019) to 70% (2024)—a 15 percentage point increase.59 This contradicts early predictions that rates would decline as "clearly invalid" patents were weeded out.

Key takeaway: Once instituted, petitioners succeed at high rates. The challenge is getting through institution, particularly under the current Director's heightened scrutiny.

IPR vs. District Court: Comparison Table

Factor	IPR	District Court
Timeline	18 months to decision	2-4+ years
Cost	$80,000-$350,000	$400,000-$5M+
Burden of Proof	Preponderance (more likely than not)	Clear and convincing
Decision-Maker	Technical PTAB judges	Generalist judge/jury
Invalidity Grounds	§ 102, § 103 only (patents/publications)	All grounds including § 101, § 112
Discovery	Very limited	Extensive
Relief Available	Claim cancellation only	Damages, injunctions, attorney fees
Estoppel	Yes—on grounds raised or reasonably could have raised	No estoppel from court invalidity findings

Parallel Proceedings Considerations

Approximately 80% of IPRs involve parallel district court litigation.60 District courts grant stays pending IPR in ~71% of cases, considering:61

1. Whether stay causes undue prejudice
2. Whether stay simplifies issues
3. Discovery status and trial date proximity

NHK-Fintiv Factors: PTAB may deny institution when parallel litigation exists, especially if district court trial is scheduled before IPR would conclude.62 Key factors include trial date proximity, litigation investment, and issue overlap.

Critical Mistakes in IPR Proceedings

We've seen these mistakes undermine otherwise strong IPR challenges:

Timing Mistakes

Mistake	Consequence	How to Avoid
Missing 1-year deadline after service	Permanently barred from filing IPR	Calendar the deadline immediately upon service
Filing before 9-month waiting period	Petition rejected	Verify grant date; consider PGR for new patents
Waiting until parallel litigation advanced	NHK-Fintiv denial likely	File early if litigation stay is unlikely

Evidence Mistakes

Mistake	Consequence	How to Avoid
Bare citations without technical explanation	Denial of institution	Every claim element needs substantive analysis
Expert merely parroting petition language	Weakened credibility, potential denial	Expert must provide independent technical analysis
Relying on product prior art	Cannot be used in IPR	Limit to patents and printed publications only
Incomplete prior art search	Estoppel on references you could have found	Exhaustive search before filing

Strategic Mistakes

Mistake	Consequence	How to Avoid
Challenging too many claims	Diluted arguments, page limit issues	Focus on key claims
Multiple petitions without coordination	"Reasonably could have raised" estoppel	Strategic petition planning
Ignoring estoppel consequences	Limited future defenses	Preserve system prior art for district court

Should You File IPR? Decision Framework

IPR is likely appropriate when:

• ✅ You have strong prior art in patents or printed publications
• ✅ You're within the 1-year time bar (or not yet sued)
• ✅ The patent covers key claims you need to invalidate
• ✅ Cost savings over litigation are meaningful to your situation
• ✅ 18-month timeline aligns with your business needs

IPR may NOT be appropriate when:

• ❌ Your best prior art is commercial products, public use, or demonstrations
• ❌ Your strongest arguments are § 101 subject matter eligibility
• ❌ District court trial is already scheduled before IPR would conclude
• ❌ Estoppel consequences outweigh potential benefits
• ❌ You need damages, injunctions, or attorney fee recovery

Consider alternatives:

• Post-Grant Review (PGR): For patents <9 months old; broader grounds available
• Ex Parte Reexamination: No estoppel, but patent owner controlled
• District Court Only: When non-patent prior art is strongest

What WeAreMonsters Provides

Our technical expert services for IPR proceedings include:

• Prior Art Searching: Comprehensive searches within patents and printed publications
• Expert Declarations: Technical analysis supporting invalidity arguments
• Claim Charts: Element-by-element mapping with substantive explanations
• Claim Construction Support: Technical perspective on claim scope
• Deposition Preparation: Expert testimony support
• Strategic Consultation: Technical input on petition strategy63

Timeline Summary: IPR Process Overview

Phase	Duration	Key Activities	Critical Deadlines
Pre-Filing	Variable	Prior art search, claim analysis, petition drafting	1-year time bar if sued
Petition Filing	Day 0	File petition with claim charts, expert declarations	9 months post-grant minimum
Preliminary Response	Months 1-3	Patent owner responds (optional)	3 months from petition
Institution Decision	Month 6	Director decision to institute	3 months from response deadline
Trial Proceedings	Months 7-18	Discovery, depositions, briefing	Per scheduling order
Final Decision	Month 18	Final written decision	12 months from institution
Appeal (if any)	Months 19-30+	Federal Circuit appeal	63 days from decision

What to Do First If Considering IPR

1. Check the deadline: If you've been served with an infringement complaint, the 1-year clock is running
2. Assess your prior art: Is your best evidence in patents/publications, or elsewhere?
3. Evaluate estoppel trade-offs: What grounds might you lose for district court?
4. Consider parallel proceedings: Will NHK-Fintiv factors favor or hurt institution?
5. Engage technical expertise: Comprehensive prior art search and claim analysis

Conclusion

IPR offers a faster, cheaper path to patent invalidity than district court litigation—but it's not right for every situation. With 70% all-claims invalidation rates for instituted petitions, success rates are favorable, but the 2025 policy changes under Director Squires have made institution itself more uncertain.

The critical factors we see determining IPR success: strong prior art in patents and printed publications, technically rigorous claim charts, expert declarations that provide independent analysis, and strategic timing that accounts for parallel proceedings and estoppel consequences.

If you're facing patent assertions or considering a validity challenge, understanding these procedures, requirements, and pitfalls is essential. We help litigation teams with the technical analysis, prior art searching, and expert support that IPR proceedings demand.

---

Legal Disclaimer

This article provides general information about Inter Partes Review procedures and should not be construed as legal advice. Patent law is complex and fact-specific. Consult qualified patent counsel for advice regarding specific situations, filing deadlines, and strategic decisions. The information herein reflects law and practice as of February 2026 and may not reflect subsequent changes.

---

Sources

[1] America Invents Act, Pub. L. 112-29, 125 Stat. 284 (2011), https://www.govinfo.gov/app/details/PLAW-112publ29

[2] 35 U.S.C. § 311, https://uscode.house.gov/view.xhtml?req=granuleid:USC-prelim-title35-section311&num=0&edition=prelim

[3] USPTO PTAB About Page, https://www.uspto.gov/patents/ptab/about-ptab

[4] 35 U.S.C. § 311(a), https://www.law.cornell.edu/uscode/text/35/311

[5] America Invents Act Implementation, https://www.uspto.gov/patents/laws/america-invents-act-aia/resources

[6] Leahy-Smith America Invents Act, 2%80%93Smith_America_Invents_Act">https://en.wikipedia.org/wiki/Leahy%E2%80%93Smith_America_Invents_Act

[7] H.R.1249 - 112th Congress (2011-2012): Leahy-Smith America Invents Act, https://www.congress.gov/bill/112th-congress/house-bill/1249

[8] 35 U.S.C. § 311(b), https://www.law.cornell.edu/uscode/text/35/311

[9] DLA Piper, The scope of IPR estoppel, https://www.dlapiper.com/en-us/insights/publications/intellectual-property-news/2023/the-scope-of-ipr-estoppel-system-prior-art-obviousness-combinations-and-separate-grounds

[10] Congressional Research Service, The Patent Trial and Appeal Board and Inter Partes Review, https://www.everycrsreport.com/reports/R48016.html

[11] USPTO IPR Information Page, https://www.uspto.gov/patents/ptab/trials/inter-partes-review

[12] USPTO Patent Statistics, https://www.uspto.gov/patents/ptab/statistics

[13] USPTO PTAB Trial Practice Guide, https://www.uspto.gov/patents/ptab/trial-practice-guide

[14] Finnegan, 5 Distinctions Between IPRs and District Court Patent Litigation, https://www.finnegan.com/en/insights/articles/5-distinctions-between-iprs-and-district-court-patent-litigation.html

[15] Baker Botts, Post-Grant Proceedings Comparative Analysis, https://www.bakerbotts.com/~/media/Files/Thought-Leadership/Publications/2024/February/PostGrant-Proceedings-in-the-US--A-Strategic-Comparative-Analysis-of-IPRs-PGRs-and-EPRs.pdf

[16] Fenwick, Administrative Patent Judges: Not Your Typical Federal Judge, https://www.fenwick.com/insights/publications/administrative-patent-judges-not-your-typical-federal-judge

[17] USPTO Administrative Patent Judges About Page, https://www.uspto.gov/patents/ptab/about-our-administrative-patent-judges

[18] USPTO PTAB Information, https://www.uspto.gov/patents/ptab

[19] Finnegan, IPR vs District Court Distinctions, https://www.finnegan.com/en/insights/articles/5-distinctions-between-iprs-and-district-court-patent-litigation.html

[20] Morgan Lewis, Inter Partes Review (IPR) 2020, https://www.morganlewis.com/pubs/2021/04/inter-partes-review-ipr-2020

[21] 35 U.S.C. § 311(a), https://www.law.cornell.edu/uscode/text/35/311

[22] Finnegan, IPR Standing Requirements, https://www.finnegan.com/en/insights/articles/5-distinctions-between-iprs-and-district-court-patent-litigation.html

[23] USPTO Trial Practice Guide, https://www.uspto.gov/sites/default/files/documents/trial_practice_guide_nov2019_oct2025_web.pdf

[24] 35 U.S.C. § 311(c), https://www.law.cornell.edu/uscode/text/35/311

[25] USPTO IPR FAQ, https://www.uspto.gov/patents/ptab/trials/aia-trials-faq

[26] 35 U.S.C. § 315(b), https://www.law.cornell.edu/uscode/text/35/315

[27] JD Supra, Inter Partes Review - Petitioner Estoppel, https://www.jdsupra.com/legalnews/inter-partes-review-petitioner-estoppel-96370/

[28] 35 U.S.C. § 315(b) text and commentary

[29] 35 U.S.C. § 315(e), https://www.law.cornell.edu/uscode/text/35/315

[30] DLA Piper, IPR Estoppel Scope, https://www.dlapiper.com/en-us/insights/publications/intellectual-property-news/2023/the-scope-of-ipr-estoppel-system-prior-art-obviousness-combinations-and-separate-grounds

[31] Lexis Advance, Inter Partes Review Estoppel, https://advance.lexis.com/open/document/openwebdocview/Inter-Partes-Review-Estoppel-under-35-U-S-C-315-e-/

[32] PTAB Watch, Claim Charts Are Not Enough, https://www.ptabwatch.com/2015/06/claim-charts-are-not-enough-petitioners-must-clearly-explain-relevant-disclosures-in-prior-art/

[33] USPTO Fee Schedule, https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

[34] 37 CFR § 42.15, https://www.law.cornell.edu/cfr/text/37/42.15

[35] USPTO Trial Practice Guide, Section II.B

[36] Perkins Coie, 2021 IPR Primer, https://perkinscoie.com/sites/default/files/2025-02/2021_IPR%20Primer.pdf

[37] 35 U.S.C. § 314, https://casetext.com/statute/united-states-code/title-35-patents/part-iii-patents-and-protection-of-patent-rights/chapter-31-inter-partes-review/section-314-institution-of-inter-partes-review

[38] VK Law, A Reasonable Expectation of Success in an IPR Petition, https://www.vklaw.com/ImagineThatIPLawBlog/a-reasonable-expectation-of-success-in-an-ipr-petition

[39] JD Supra, Trial Statistics Trends at the PTAB: 2024 Edition, https://www.jdsupra.com/legalnews/trial-statistics-trends-at-the-ptab-9613299/

[40] USPTO PTAB Statistics, https://www.uspto.gov/sites/default/files/documents/ptab_aia__20250131.pdf

[41] JD Supra, Trial Statistics Trends at the PTAB: 2025 Edition, https://www.jdsupra.com/legalnews/trial-statistics-trends-at-the-ptab-8078030/

[42] Patentlyo, USPTO's Institution Rate, https://patentlyo.com/patent/2025/11/usptos-institution-rate.html

[43] Patentlyo, Institution Rate Historical Context

[44] USPTO Sample Scheduling Order, https://www.uspto.gov/patents/ptab/appendix-1-sample-scheduling-order-inter-partes-review-post-grant-review-and-covered

[45] Venable, Top 5 IPR Discovery Tips, https://www.venable.com/insights/publications/2014/11/ipr-spotlight-series-top-5-ipr-discovery-tips-for

[46] McGuire Woods, Perfecting Expert Testimony at PTAB, https://www.mcguirewoods.com/client-resources/alerts/2025/3/perfecting-expert-testimony-at-ptab/

[47] Venable, Expert Discovery Rules, https://www.venable.com/insights/publications/2014/11/ipr-spotlight-series-top-5-ipr-discovery-tips-for

[48] USPTO Trial Practice Guide, Motion to Amend section

[49] USPTO Trial Practice Guide, Oral Hearing procedures

[50] Morgan Lewis, IPR Timeline, https://www.morganlewis.com/pubs/2021/04/inter-partes-review-ipr-2020

[51] USPTO Final Written Decision requirements

[52] USPTO MPEP § 2112, https://www.uspto.gov/web/offices/pac/mpep/s2112.html

[53] USPTO MPEP § 2150, https://www.uspto.gov/web/offices/pac/mpep/s2150.html

[54] USPTO Examination Guidelines for 35 U.S.C. 102 and 103

[55] VK Law, Reasonable Expectation of Success, https://www.vklaw.com/ImagineThatIPLawBlog/a-reasonable-expectation-of-success-in-an-ipr-petition

[56] 35 U.S.C. § 311(b)

[57] DLA Piper, IPR Estoppel Scope Analysis

[58] USPTO IPR Ground limitations

[59] PTAB Watch, Claim Chart Requirements, https://www.ptabwatch.com/2015/06/claim-charts-are-not-enough-petitioners-must-clearly-explain-relevant-disclosures-in-prior-art/

[60] IIPRD, Claim Chart Best Practices, https://www.iiprd.com/claim-chart/

[61] PTAB precedent on claim chart requirements

[62] 37 C.F.R. § 42.22(a)(2)

[63] McGuire Woods, Expert Testimony at PTAB

[64] Expert declaration best practices

[65] PTAB Litigation Blog, Incorporation by Reference in Expert Declaration, https://www.ptablitigationblog.com/ptab-permits-incorporation-by-reference-in-expert-declaration/

[66] Expert testimony standards

[67] Prior art searching best practices

[68] Comprehensive prior art sources

[69] USPTO PTAB Claim Construction Final Rule, https://www.uspto.gov/patents/ptab/procedures/ptab-issues-claim-construction

[70] Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)

[71] Whipgroup, Out with BRI and In with Phillips, https://www.whipgroup.com/blog/out-with-bri-and-in-with-phillips-uspto-adopts-federal-circuits-claim-construction-standard-for-ptab-proceedings/

[72] JD Supra, PTAB Adopts Phillips Standard, https://www.jdsupra.com/legalnews/ptab-adopts-phillips-standard-for-claim-70455

[73] USPTO Claim Construction Rule provisions

[74] Strategic implications of Phillips standard

[75] Claim construction technical support requirements

[76] Expert testimony on claim construction

[77] USPTO PTAB Statistics 2024-2025

[78] IPWatchdog, PTAB 70% All-Claims Invalidation Rate, https://ipwatchdog.com/2025/01/12/ptab-70-claims-invalidation-rate-continues-source-concern/

[79] IPWatchdog, Per-claim invalidation statistics

[80] Mondaq, PTAB Statistics December 2024 January 2025, https://www.mondaq.com/unitedstates/patent/1592634/ptab-statistics-for-final-written-decisions-issued-in-december-2024-and-january-2025

[81] IPWatchdog, Invalidation Rate Trends

[82] Historical predictions vs. actual trends

[83] Technology area variation analysis

[84] Success rate influencing factors

[85] Speed comparison IPR vs. district court

[86] Timeline advantages for accused infringers

[87] Cost comparison analysis

[88] Economic accessibility factors

[89] Burden of proof differences

[90] Impact of lower burden standard

[91] Technical expertise advantages

[92] Limited grounds restrictions

[93] District court broader theories

[94] Relief limitations in IPR

[95] Estoppel consequences

[96] Cross-proceeding estoppel effects

[97] Discovery limitations

[98] Jones Day, Stay or Go!, https://www.jonesday.com/en/insights/2014/07/istay-or-goi-tracking-district-court-stays-pending-parallel-uspto-postgrant-review-proceedings

[99] BIPC, Strategies for Obtaining a Stay, https://www.bipc.com/strategies-for-obtaining-a-stay-of-litigation-pending-post-grant-proceedings

[100] USPTO NHK Spring precedent, 2011%20(3.20.20).pdf">https://www.uspto.gov/sites/default/files/documents/IPR2020-00019,%20Apple%20v.%20Fintiv,%20Paper%2011%20(3.20.20).pdf

[101] Technical expert role in prior art searching

[102] Prior art analysis and combination strategies

[103] Claim analysis technical expertise

[104] Technical interpretation considerations

[105] Expert declaration prevalence

[106] Expert declaration requirements

[107] Claim chart preparation with experts

[108] Technical analysis in claim charts

[109] Deposition strategy differences

[110] Expert deposition preparation

[111] Oral hearing expert support

[112] WeAreMonsters technical expert services

[113] Pillsbury, AIA Legislative History, https://www.pillsburylaw.com/a/web/4067/AIA-LegislativeHistory-final.pdf

[114] H.R. 1249 Congressional Record and Legislative History, https://www.congress.gov/bill/112th-congress/house-bill/1249

[115] Journal of Accounting and Economics, The effect of patent disclosure quality on innovation, https://ideas.repec.org/a/eee/jaecon/v77y2024i2s016541012300071x.html

[116] Springer, Patent Quality: A Critique of the State of the Discussion, https://link.springer.com/article/10.1007/s40319-024-01444-w

[117] AIPLA Economic Survey, https://fundamentalpatlit.com/wp-content/uploads/2024/02/AIPLA.pdf

[118] AIPLA 2023 Report of the Economic Survey, https://www.aipla.org/detail/journal-issue/2023-report-of-the-economic-survey

[119] Fenwick, Administrative Patent Judges: Not Your Typical Federal Judge, https://www.fenwick.com/insights/publications/administrative-patent-judges-not-your-typical-federal-judge

[120] USPTO Administrative Patent Judges About Page, https://www.uspto.gov/patents/ptab/about-our-administrative-patent-judges

[121] USPTO Administrative Patent Judges Qualifications

[122] PTAB Judge Expansion Statistics

[123] IPWatchdog, Squires Takes Over All IPR Institution Decisions, https://ipwatchdog.com/2025/10/19/squires-takes-ipr-institution-decisions-memo-ptab-judges/

[124] JD Supra, Director Squires Updates PTAB Institution Decision Process, https://www.jdsupra.com/legalnews/director-squires-updates-ptab-2859758/

[125] USPTO Director Institution Memorandum, https://www.uspto.gov/sites/default/files/documents/open-letter-and-memo_20251017.pdf

[126] Content.GovDelivery, Director institution of AIA trial proceedings, https://content.govdelivery.com/accounts/USPTO/bulletins/3f78f9a

[127] JD Supra, USPTO Director Asserts Sole Authority Over AIA Trial Institution Decisions, https://www.jdsupra.com/legalnews/uspto-director-asserts-sole-authority-5184531/

[128] 37 CFR § 42.51 Discovery Rules, https://www.law.cornell.edu/cfr/text/37/42.51

[129] JD Supra, What Discovery is Available during Inter Partes Review?, https://www.jdsupra.com/legalnews/what-discovery-is-available-during-49336

[130] Venable, IPR Spotlight Series: Navigating IPR Discovery, https://www.venable.com/insights/publications/2014/11/ipr-spotlight-series-navigating-ipr-discovery

[131] Garmin v. Cuozzo Discovery Factors

[132] USPTO Motion to Amend Studies, https://www.uspto.gov/patents/ptab/motions-amend-study

[133] USPTO PTAB updates Motion to Amend Study, https://www.uspto.gov/subscription-center/2024/ptab-updates-motion-amend-study

[134] Reuters, USPTO issues new rules on motions to amend in IPRs, https://www.reuters.com/legal/legalindustry/uspto-issues-new-rules-motions-amend-iprs-2024-10-17/

[135] Motion to Amend Historical Success Rates

[136] USPTO PTAB Statistics May 2025, https://www.uspto.gov/sites/default/files/documents/ptabaia20250531.pdf

[137] Bio/Pharma Institution Statistics FY25

[138] Mechanical & Business Method Institution Statistics FY25

[139] Chemical Institution Statistics FY25

[140] Electrical/Computer Institution Statistics FY25

[141] Design Patent Institution Statistics FY25

[142] Federal Register, Changes to Claim Construction Standard, https://www.federalregister.gov/documents/2018/10/11/2018-22006/changes-to-the-claim-construction-standard-for-interpreting-claims-in-trial-proceedings-before-the

[143] USPTO Claim Construction Final Rule, https://www.uspto.gov/subscription-center/2018/claim-construction-final-rule

[144] Goodwin Law, PTAB Changes Claim Construction Standard, https://www.goodwinlaw.com/en/insights/publications/2018/10/10_11-ptab-changes-claim-construction-standard

[145] Phillips Standard Benefits to Patent Owners

[146] Patent Proceedings Harmonization Statistics

[147] Prior Claim Construction Weight Analysis

[148] Strategic Timing Implications

[149] National Law Review, Federal Circuit Tosses Shaw, https://natlawreview.com/article/federal-circuit-tosses-shaw-ipr-estoppel-applies-to-all-claims-grounds-reasonably

[150] Akin Gump, Federal Circuit Clarifies Scope of IPR Estoppel, https://akingump.com/en/insights/blogs/ip-newsflash/federal-circuit-clarifies-scope-of-ipr-estoppel-reversing-prior-shaw-decision

[151] Reuters, Federal Circuit clarifies scope of IPR estoppel, https://www.reuters.com/legal/legalindustry/federal-circuit-clarifies-scope-ipr-estoppel-resolves-district-court-split-2025-07-10/

[152] Ingenico Inc. v. IOENGINE, LLC (Fed. Cir. May 2025)

[153] JD Supra, Federal Circuit Clarifies the Scope of IPR Estoppel, https://www.jdsupra.com/legalnews/federal-circuit-clarifies-the-scope-of-6218499/

[154] Federal Circuit, Qualcomm v. Apple (April 2025), https://www.cafc.uscourts.gov/opinions-orders/23-1208.OPINION.4-23-2025_2503159.pdf

[155] Federal Circuit, Google v. Sonos (May 2024), https://www.cafc.uscourts.gov/opinions-orders/23-1259.OPINION.5-23-2024_2322374.pdf

[156] Morgan Lewis, In re Motorola CAFC Ruling, https://www.morganlewis.com/pubs/2025/11/the-in-re-motorola-cafc-ruling-reaffirms-discretionary-nonappealable-nature-of-ptab-ipr-institution-decisions

[157] Federal Circuit Order, In re Motorola Solutions, https://cdn.patentlyo.com/media/2025/11/25-134.ORDER_.11-6-2025_2599490.pdf

[158] JD Supra, Federal Circuit Confirms USPTO Director's Broad Discretion, https://www.jdsupra.com/legalnews/federal-circuit-confirms-uspto-director-6757579/

[159] JD Supra, NHK-Fintiv Frustration, https://www.jdsupra.com/legalnews/nhk-fintiv-frustration-status-of-the-5720711/

[160] PTAB Litigation Blog, NHK § 314(a) Analysis, 2%A7-314a-analysis-results-in-denial">https://ptablitigationblog.com/nhk-%C2%A7-314a-analysis-results-in-denial

[161] USPTO NHK Spring Apple v. Fintiv Decision, 2011%20(3.20.20).pdf">https://www.uspto.gov/sites/default/files/documents/IPR2020-00019,%20Apple%20v.%20Fintiv,%20Paper%2011%20(3.20.20).pdf

[162] BIPC, Strategies for Obtaining a Stay, https://www.bipc.com/strategies-for-obtaining-a-stay-of-litigation-pending-post-grant-proceedings

[163] NBER Working Paper, Patent Quality Framework, https://www.nber.org/papers/w27598

[164] Springer, Systematic Literature Review Patent Quality, https://link.springer.com/article/10.1007/s11192-024-05206-w

[165] RPX Corporation PTAB Analytics, https://insight.rpxcorp.com/analytics/ptab