Hilfer Law Expertise Sought in Patent Arbitration Process

Hilfer Law is excited to announce that ROSE Arbitration has asked Kyle-Beth Hilfer to join its panel of arbitrators. ROSE Arbitration offers an “IPRbitration” arbitration procedure to challenge a patent’s validity. This patent arbitration process offers an efficient alternative to the Inter Partes Review (IPR) process at the Patent Trial and Appeal Board (PTAB).

The IPR Process

The IPR process came into effect with the 2012 America Invents Act. It allows a person or entity to challenge patent validity because its claims were already obvious or unoriginal based on prior art.  With the advent of the IPR process, a challenger no longer had to endure a jury trial for a determination of patent validity. Instead, the PTAB would offer a hearing and make a decision. The IPR process was designed to be more efficient than court challenges, saving time and money.

Supreme Court SAS Decision

A recent Supreme Court decision, however, has impeded the practicality of the IPR process. In SAS Institute v Iancu, the Court held that all petitioner’s claims must receive full adjudication at the PTAB, including a final ruling. Practically, then the SAS case ended the PTAB’s partial institution practice. Before SAS, only some claims originally challenged would have to be adjudicated. Going forward, the patent holder will have to defend all asserted patent claims.

As a result of this full adjudication requirement, the PTAB will move slower and handle fewer cases. Appeals are also going to be more costly and slower to reach resolution. David Newman of ROSE Arbitration predicts that the IPR process with appeal could take as long as seven years.

In addition, the IPR process costs have already increased. After the SAS decision, the USPTO announced that fees for PTAB trials would increase by about 25%, up to nearly $20,000. The USPTO also noted that post-SAS, the PTAB will only institute an IPR proceeding when a petition challenges all patent claims.

Advantages of the Arbitration Process for Challenging Patents

Patent arbitration offers a streamlined solution for parties attempting to resolve patent disputes and obtain an IPR-like remedy. Most importantly, the patent opposer may still challenge only part of the claims at issue if the challenge happens in arbitration. Here are several other benefits:

• Parties can agree to customize the arbitration process to fit their needs.
• A patent arbitration process can track PTAB IPR rules.
• Patent arbitration offers a condensed timeline (typically in six months or less) and less costly.
• Parties can agree to go to arbitration at any time.
• Parties to a patent arbitration need not file a petition for institution with the PTAB to resolve their disputes.
• Arbitration offers a private process with full confidentiality.
• Once a patent arbitration results in a decision, the USPTO will recognize the validity of such an arbitration award.
• There is relatively little likelihood of appeal.

ROSE Arbitration offers a flexible case management process. It also makes available hybrid alternate dispute resolution processes to facilitate rapid settlement of IP disputes. Examples are dual track mediation/arbitration or arbitration converted to mediation.

For companies no longer willing to spend hundreds of thousands of dollars on an IPR process, the ROSE “IPRbitration” process offers an appealing alternative. 

Kyle-Beth Hilfer’s Arbitration Practice

 Kyle-Beth Hilfer has been an arbitrator since the early 1990s. She has served as sole arbitrator, chairperson of panels, and panel member on numerous arbitrations (including large complex cases) with damages ranging from thousands of dollars to multimillion-dollar awards.

Kyle-Beth has heard disputes relating to all types of intellectual property and trade secrets. In recent years, she has delved into nuanced intellectual property transactions and disputes arising out of new and emerging technologies. In the process, she has managed complex damages and royalty calculations, issues of ownership, liability, and fair use, causation, fraud, fiduciary duties, warranties, restrictive covenants, and contractual issues.

As an experienced arbitrator, Kyle-Beth has also has handled many procedural matters, including arbitrability, discovery disputes, privilege, statute of limitations, preclusion, and sanctions. She has managed both in person and teleconference hearings. Dedicated to an efficient and fair arbitration process, Kyle-Beth employs an active case management style.

Kyle-Beth is excited to add ROSE Arbitration to the list of administrators for which she offers arbitration services.

To read more about Kyle-Beth Hilfer’s arbitration practice and case management style, click here.