MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 1

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes reviews (“IPRs”) and Covered Business Method patent reviews (“CBMs”) have been available since September 16, 2012, and their utilization since that time has exceeded expectations. A third mechanism, post-grant review (“PGR”), was also made available on that date, but because a PGR petition can only be filed for patents that were examined pursuant to the new First-Inventor-to-File scheme established by the AIA, it has not yet been significantly utilized. In addition, the potentially draconian estoppel provisions that attach to PGR petitions initially had practitioners questioning whether these proceedings would be useful at all. However, in the intervening years, the experience with IPRs and CBMs suggests that some of those earlier concerns may have been overblown. Nevertheless, because courts have not yet applied the estoppel provisions of PGRs, caution is still warranted. Here, we describe the IPR and PGR estoppel provisions of 35 U.S.C. §§ 315(e) and 325(e) and courts’ interpretations of those provisions thus far.

PTAB Estoppel -

IPR proceedings are limited to challenges based on patents and printed publications under 35 U.S.C. §§ 102 or 103. On the other hand, PGR proceedings can be based on any type of validity challenge that is available in federal court. This includes attacks under 35 U.S.C. § 101 for patent eligibility, and under 35 U.S.C. § 112 for allegations of a lack of enablement, written description, and a failure to distinctly claim the invention. CBMs are actually a subset of PGRs, but are limited to review of patents that claim “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except . . . for technological inventions.” Nevertheless, the statutory estoppel provisions for IPRs and PGRs are similarly worded: a petitioner (or its real party in interest or privy) of an IPR or PGR of a patent claim that results in a final written decision may not request or maintain a proceeding before the PTAB with respect to that claim and may not assert that the claim is invalid in a civil action or International Trade Commission (“ITC”) proceeding “on any ground that the petitioner raised or reasonably could have raised” during the IPR or PGR. And, although the scope of estoppel based on IPRs is broad, the PGR estoppel is broader yet: the ability in a PGR proceeding to raise almost any invalidity allegation makes the “reasonably could have raised” language appear to essentially prevent any subsequent challenge to the claims.

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McDonnell Boehnen Hulbert & Berghoff LLP
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