When creating the new post-grant proceedings (post grant review, inter partes review and covered business method review) under the Leahy-Smith America Invents Act (AIA), Congress wanted to provide a viable means of challenging bad patents that still protected patent owners from frivolous harassment. As a result, Congress built several safeguards for patent owners into the AIA. A previous post discussed one of these safeguards, the AIA estoppels. There are several other important defenses, however, that a patent owner can raise to fend off a post-grant proceeding.
Perhaps the most significant protection the AIA affords to patent owners is the ability to amend claims. Under the AIA, a patent owner has one opportunity to amend its claims for a patent under review. This can place patent challengers at a significant disadvantage, as they must try to predict how the owner might amend claims to strengthen the patent. As a result, patent challengers not only run the risk of the Patent Trial and Review Board (PTAB) determining that a challenged claim is valid, but may also face an overall stronger patent. This is because the amended claims not only can overcome the invalidity challenge, but also the amended claims may be better able to cover the infringing challenger’s products in the parallel civil action. Because of the estoppels, it may then be difficult to subsequently challenge an amended patent that survives a post-grant proceeding. This risk alone provides significant assurance that patent owners will not face harassment from challengers.
Not a new argument
Another important patent owner safeguard is that when determining to institute a post-grant proceeding, the USPTO Director will take into consideration whether the patent challenger’s arguments and/or prior art have already been considered by the USPTO during examination. This applies to both inter partes reviews and post-grant reviews and allows the director to deny a petition if the petitioner is raising the same arguments and prior art as during the examination.
Another safeguard for patent owners is provided by a petition filing time limit that bars an inter partes review from being “instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petition is served with a complaint alleging infringement of the patent.” This safeguard was put in place in direct response to concerns voiced by patent owners who already faced abuse from infringers using civil litigation discovery during reexaminations. The one-year time limit makes it unlikely that a civil court case will have progressed to the discovery phase of litigation, preventing a challenger from using this tactic during inter partes review.
Similarly, the AIA bars patent challengers from petitioning for a post-grant proceeding and later pursuing a declaratory judgment action. For inter partes reviews and post-grant review, a petition is barred if the patent challenger or the patent challenger’s real parties in interest has previously filed a declaratory judgment action. This ensures that the patent owner will not have to defend simultaneously against an invalidity challenge in court and at the USPTO.
The AIA provides parties in a post-grant review proceeding an opportunity to settle their dispute, something that is not available through reexamination. The AIA statute sets forth that a post-grant review proceeding “shall terminate with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request or termination is filed.” By allowing settlement, the patent owner has an opportunity to dispose of the dispute quickly and removes the risks of having the patent claims cancelled in the post-grant proceeding.
Patent Trial and Review Board
Finally, an important safeguard for patent owners provided by the AIA is that post-grant proceedings are heard by the PTAB, a highly competent panel of administrative patent judges. Patent challengers face detailed scrutiny from the PTAB, with a high burden to meet for a decision of invalidity. In these proceedings, proper claim interpretation and relevant facts are tantamount. Patent challengers must show how each claim element should be interpreted, how each claim element reads on the prior art, and how a person of ordinary skill in the art would have reasons to combine the prior art elements. The PTAB only considers whether or not the challenger has met that burden, and nothing else.
While the AIA post-grant proceedings do provide a more efficient and cost-effective means for challenging bad patents, they also protect patent owners from undue harassment. In drafting the AIA, Congress attempted to strike a balance that favors improving the quality of patents issued by the USPTO, thereby strengthening the U.S. patent system, and at the same time protecting property rights of patent owners.
This is for general information and is not intended to be and should not be taken as legal advice for any particular matter. It is not intended to and does not create any attorney-client relationship. The opinions expressed and any legal positions asserted in the article are those of the author and do not necessarily reflect the opinions or positions of Miles & Stockbridge P.C., its other lawyers, or InsideCounsel.