A number of commentators within the intellectual property field have provided views and insights regarding the use of an inter partes review (IPR) as an alternative to district court patent litigation. However, quite recently several of those same commentators have begun to express concerns regarding potential limitations of that procedure (e.g., inability to address damages, potential exclusions to the “estoppel effect”, continuation practice concerns, and jurisdictional considerations when obtaining a stay of litigation, among others). In a previous column, we expressed our view that the current IPR procedure is still in its infancy and that further modification to it, at this time, would appear to be premature. However, the real-world concerns with patent litigation continue. To address those concerns, an additional approach beyond strictly IPR and litigation could be considered.
An alternative strategy that could be utilized by patentees and patent challengers alike would be a combined IPR and alternative dispute resolution (ADR) approach. The players in such an approach would be two practicing entities, each having a significant patent portfolio. The key principles for such an approach would be to create a global framework for the parties to resolve the instant dispute and future disputes; use a standstill agreement to allow the parties time to negotiate, and potentially resolve, the instant dispute; use an IPR procedure as a component for a negotiation platform; and utilize a robust structure for information exchange and potential escalation of the instant dispute should the negotiations fail and the standstill period has expired.