After nearly a dozen false starts, it appears that the first genuine “Post Grant Review” (PGR) petition may have been filed with the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA).

Petition PRG2014-00008 was filed on August 5, 2014 by LaRose Industries, Inc. and Toys “R” Us – Delaware, Inc., challenging U.S. Patent 8,684,420 owned by Choon’s Design Inc. (Apparently, several earlier PGR petitions had been filed in error and have not been made public; hence the assignment of number 00008 to this petition.)

The patent at-issue was based on a series of continuing applications, some of which predated the changeover in U.S. patent laws that provides for Post Grant Review. Under the AIA, Post Grant Review is available to challenge a newly-issued patent – so long as its effective filing date is on or after March 16, 2013. The Petitioners will need to show that Choon was not entitled to any priority date earlier than its actual filing.

In contrast to an Inter Partes Review (IPR) proceeding, a Post-Grant Review petition can be based on any ground that can be raised in a civil suit. Under the PGR rules, a third party wishing to challenge a newly-issued patent during the first nine months following issuance is not to be limited to the presentation of prior art patents or publications but instead can present evidence of prior public use, prior sales activity, or other public disclosures.  Moreover, post-grant review can be sought not only based on a lack of novelty or obviousness under §102 or §103, but also based on a lack of compliance with written description or enablement rules of §112 – or even the patent eligibility standards of §101.

The patent at-issue is owned by Choon’s Design, LLC and entitled a “Brunnian Link Making Device And Kit,” and is directed to a plastic loom that can be used to weave colored rubber bands into bracelets and the like. Choon’s Design sells a product known as the RAINBOW LOOM®. Choon sued LaRose last year in a federal district court alleging that a competitive product made by LaRose, known as CRA-Z-LOOM®, infringes the ‘420 patent. In response, LaRose and its distributor, Toys “R” Us, filed for PGR review.

Because Choon’s priority claim in the ’420 patent goes back to 2010, a threshold question will be whether the patent is entitled to the claimed pre-AIA effective filing date. If the priority claim holds up, the petition will be dismissed. If not, the post grant review petition is proper and the PTAB will need to address the merits of the Petitioner’s case.

The ‘420 patent was issued based on an application filed July 26, 2013, but claims to be a “continuation” of several earlier applications going back to September 8, 2011, and also claims priority to a provisional application filed November 5, 2010. The term “continuation” is a technical term in patent law that refers to serial applications that share a common disclosure. If a second “continuation” application is filed before an earlier application with the same disclosure expires, the applicant can inherit the filing date of the parent filing and pursue additional claims in the second filing.

The Petitioners allege that the ‘420 patent is subject to post grant review because new claims were presented and these new claims were not supported by the original disclosure, and so have an effective filing date of July 26, 2013 – not early enough to antedate the March 16, 2013 changeover date for applications subject to PGR.

The new matter that LaRose alleges was inserted into the claims is a recitation of “a plurality of pins supported on the base.” According to LaRose, the original specification describes devices where the base supports “pin bars,” which in turn hold the pins. In the petitioner’s view, this elimination of an intermediate element removes the claim from the safe harbor otherwise afforded continuation applications with pre-AIA effective filing dates.

LaRose has also asserted that the elimination of the “pin bar” element should doom the ’420 patent because the issued claim fails the “written description” requirement of 35 U.S.C. 112 (which basically says you can’t claim things that you haven’t described). According to the Petitioners, the original specification didn’t describe any devices where pins were directly supported by a base – because in all of the described embodiments it is the pin bars, not the pins, that are supported by the base.

Additionally, LaRose and Toy “R” Us have asserted a number of arguments based on lack of novelty and/or obviousness. But before the PTAB can consider any of the arguments as to validity of the ‘420 patent claims, it must decide whether the ‘420 patent was truly a “continuation” application or not.