An Oct. 27, 2013 article in the Wall Street Journal (“Scrivener’s Error Undercuts Patent-Law Overhaul”) questioned the value of new U.S. Patent and Trademark Office post-grant procedures introduced under the America Invents Act (AIA). In particular, the article referred to what it called an “error” in the AIA that bars an unsuccessful post-grant challenger to take the matter to court for another try. It goes on to note that House Judiciary Committee Chairman Bob Goodlatte (R.-Va.) has included language in his recently introduced patent bill to change this section of the AIA. The piece closed with a statement that no one is using post-grant review, noting “only once has a party filed a petition to use the procedure, and that filing was made by mistake.”

The article is a bit misleading. There is actually more than one new AIA post-grant review procedure available to challengers. Post-grant review (PGR) is the process described in the Journal article above. A petition for PGR must be filed no later than nine months from the patent issue date and allows the petitioner to raise all grounds of patent invalidity. The AIA estoppels for civil actions are one of the safeguards for AIA patent owners. The “raised or reasonably could have raised” language that bars taking another run at a patent in the courts as well in the USPTO applies to both PGRs and IPRs. The Goodlatte Bill is only proposing to change the PGR estoppel by changing the language to “raised”. By doing so, the Goodlatte PGR estoppel would only prevent the patent challenger from raising the grounds that were in the PGR in a later IPR or civil action.

The reason for the estoppel for PGRs is to provide an important safeguard to patent owners to prevent a later validity challenge in court and multiple later filed IPRs at the USPTO.

The article also suggests that the estoppel is the sole reason that few PGRs are being filed. In fact, there is another reason: only a few patents are eligible. PGRs can only be requested for those patents issued after March 16, 2013, when the AIA’s first-to-file provision came into effect. This is a very small pool of patents that will, of course, grow over time. Right now, however, it is likely the main reason why so few PGR petitions have been filed.

What was not mentioned in the Journal piece is that another AIA post-grant option, inter partes review (IPR), has been very successful, with 684 filings so far. IPR petitions must also be filed after nine months of the patent issue date, but can be used to challenge all patents. Challengers in IPR may only raise grounds of patent validity based on existing patents and printed publications.

Unlike with PGR, where the estoppel scope includes all grounds of invalidity that could be raised under paragraph (2) or (3) of 35 U.S.C. § 282(b), the estoppel scope for IPR is limited to grounds that could be raised under 35 USC 102 and 103 and only on the basis of prior art consisting of patent or printed publications.

When drafting the post-grant proceedings estoppel standard for both PGRs and IPRs, legislators softened the “could have raised” standard faced by a requester in the former inter partes reexaminations by adding the word “reasonably.” Although not yet determined by the courts, the legislative history of the AIA supports the interpretation that the standard “reasonably could have raised” means that IPR petitioners are estopped from raising the prior art that a skilled searcher conducting a diligent search reasonably could have been expected to discover, as opposed to the “could have raised” estoppel, which has been interpreted to mean that petitioners are estopped from raising all prior art that would have been uncovered by a scorched-earth search around the world.

As part of the legislative history, Senator Kyl commented on the policies served by this standard:

The present bill also softens the could-have-raised estoppel that is applied by inter partes review against subsequent civil litigation by adding the modifier “reasonably.” It is possible that courts would have read this limitation into current law’s estoppel. Current law, however, is also amenable to the interpretation that litigants are estopped from raising any issue that it would have been physically possible to raise in the inter partes reexamination, even if only a scorched-earth search around the world would have uncovered the prior art and question. Adding the modifier “reasonably” ensures that could-have-raised estoppel extends only to that prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.

We will have to wait to see if the courts will adopt the legislative history interpretation for “reasonably could have raised” for PGR and IPR estoppels. As it is uncertain how the courts will interpret the standard and because they can preclude the petitioner, real party in interest and the petitioner’s privies from bringing subsequent challenges, the risks to these parties should not be ignored.