Be afraid…be very afraid: inter partes and post-grant review

There are now two permanent sheriffs in the United States patent office to eliminate or reduce your patent protection: The post-grant review and inter partes review of the America Invents Act.  With both proceedings patent claim sentences can be cancelled under a significantly lower evidentiary standard and broader claim interpretation that those required for invalidating patents in courts.

 

For post-grant review a party generally files a petition to cancel a patent’s claims no later than nine months after the patent’s issue date. 35 U.S.C. section 321(c).   The petition may rely upon statutory reasons for invalidity as well as novel related issues. 35 U.S.C. 282(b)(2)(3), 321(b) and 324(b).   The petition may also include expert testimony, and the patent owner may respond in kind. 35 U.S.C.  322(a)(3)(B) and 323; 37 C.F.R. 42.208(c).  If the Patent Office Trial and Appeal Board [hereinafter the Board] then determines that the petitioner is likely to prevail, the parties proceed to an adjudicatory phase. 35 U.S.C. 324(a). This Board decision to either dismiss the petition or proceed is final and nonappealable. 35 U.S.C. 324(e). If the proceeding continues there is limited discovery, the patent owner may amend claims and there is another opportunity to submit expert testimony. 35 U.S.C. 326 (a)(5), 326(a)(8) and 326(d).  With a limited exception, claims must be given their broadest reasonable interpretation instead of the narrower plain and ordinary meaning of infringement litigation. See 37 CFR 42.200(b).  The petitioner must establish by a preponderance of the evidence, and not clear and convincing evidence, that claim sentences are invalid for reason(s) provided in 35 U.S.C. 282(b)(2)(3).  See 35 U.S.C. 326(e). The Board issues a final written decision on the merits and the parties may appeal this decision. 35 U.S.C. 328(a) and 329.

 

Inter partes review is similar to post-grant review and includes broader claim construction, no appeal of the initial Board decision to proceed, and a lower evidentiary standard. See 35 U.S.C. 311 et seq.; 37 C.F.R. 42.100(b).  However, for an inter parts review (i) generally the petition must be filed no sooner than nine months after a patent issues and (ii) claim sentences may be canceled only for anticipation or obviousness based upon printed publications or patents. 35 U.S.C. 311(b) and 311(c). The post-grant proceeding thereby provides a short deadline by which a newly issued patent may be challenged for almost any reason, and thereafter this patent may only be challenged on a limited basis in an inter partes review.

 

Inter parts review was recently challenged in Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ___ (2016) [hereinafter Cuozzo]. The Cuozzo petitioner challenged the ‘broadest reasonable interpretation’ standard, in part by contending that this standard produces outcome inconsistent with the ‘plain and ordinary meaning’ standard of patent infringement litigation.  See 37 C.F.R. 42.100(b). This petitioner also challenged the Federal Circuit’s holding that a Board’s decision to institute a proceeding is judicially unreviewable. However, the Court concluded that selection of the ‘broadest reasonable construction’ standard was a reasonable exercise of rulemaking power under the statute’s enablement provision. See 35 U.S.C. 316(a). The Court also concluded that judicial review of initial Board decisions would undercut the patent office’s ability to eliminate defective patents.  The Court did add that judicial review could be revisited if based upon constitutional challenges or other questions outside the scope of actual post-grant and inter partes review provisions. To date in the Court has denied petitions for certiorari challenging the post grant statute and its regulations.

© 2016 Adrienne B. Naumann

Adrienne B. Naumann, Esq. does not post or endorse the advertisements on adriennebnaumann.wordpress.com.

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