CHAPTER § 3.05 Patent Office Alternatives to Patent Litigation

• Jurisdiction: United States

§ 3.05 Patent Office Alternatives to Patent Litigation

[1] AIA Invalidation Proceedings

The AIA, which became law on September 16, 2011, created a new suite of invalidity challenges that can be raised against an issued U.S. patent. These new proceedings were designed to be a cost-effective alternative to district-court litigation. As such, the proceedings are inter partes, are decided primarily on the papers, integrate extremely narrow discovery, and conclude with a final oral hearing in front of a panel of three Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB). Since their introduction on September 16, 2012, PTAB invalidation proceedings have become an important tool for defendants in district court and ITC patent-enforcement actions.

Congress also designed the proceedings to have a definitive time frame. By statute, the PTAB must decide whether to institute a trial within approximately 6 months after a petition is filed and must issue a final written decision 1 year after the date of institution. Although the PTAB can extend this 1-year deadline for cause, it very rarely does so. Therefore, in almost every case, an instituted proceeding will be completed approximately 18 months after a petition is filed and no more than 24 months in the few exceptional cases with extensions. Because of the certainty of timing, district-court judges have been more willing to stay co-pending district-court cases during PTAB invalidation proceedings.

[a] Post-Grant Review

Post-Grant Review (PGR) proceedings are available only for patents having a filing date or claim with a priority date after March 16, 2013.³⁹⁰ In a PGR proceeding, a petitioner can challenge the validity of a claim based on any ground under 35 U.S.C. § 282(b)(2) or (3), including anticipation or obviousness based on patents or printed publications, prior public use, prior sale or offers for sale, non-statutory subject matter, lack of enablement, lack of written description, or indefiniteness.³⁹¹

[b] Inter Partes Review

Inter partes review (IPR) proceedings permit any party, other than the owner of the patent, to challenge the validity of issued patent claims based on patents or printed publications.³⁹² An IPR can be filed at any time after issuance for pre-AIA, first-to-invent patents.³⁹³ For AIA patents, an IPR cannot be filed within the first 9 months after issuance or during the pendency of a PGR filed against the patent.³⁹⁴ However, an IPR proceeding must be filed within 1-year after service of a complaint alleging infringement of the patent on the petitioner, the petitioner's real party in interest, or a privy of the petitioner.³⁹⁵ In addition, a petitioner is barred by statute from filing an IPR if the petitioner or the petitioner's real party in interest has already filed a civil action challenging...