The Evolution of Patent Office Litigation Practice Under the AIA: A Review of Past Reform and a Look Ahead to Possible Changes on the Horizon

• Author: Todd R. Walters - Erin M. Dunston - Jonathan R. Bowser - Roger H. Lee - Kyle K. Tsui - Mythili Markowski - Christopher M. Cherry - David W. Leibovitch - Shantanu C. Pathak
• Position: Todd R. Walters is shareholder and chair of the patent office litigation practice group at Buchanan Ingersoll & Rooney PC in Alexandria, Virginia. Todd focuses his practice on many phases of intellectual property law, with a special emphasis on inter partes matters. Erin M. Dunston is a shareholder at Buchanan Ingersoll & Rooney. Erin focuses...
• Pages: 43-50

Published in Landslide® magazine, Volume 9, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2016 by the American Bar Association. Reproduced with permission. All rights reserved. This

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Five years ago, Congress enacted the Leahy-Smith America Invents

Act (AIA), and the landscape for patent litigants has never been the

same. Post-grant proceedings under the AIA (including inter par-

tes review (IPR), post-grant review (PGR), and covered business

method (CBM) review) have proven to be a relatively expedi-

ent, cost-effective option for parties seeking to contest the patentability

of issued patent claims.1 Defendants in infringement actions have opted

to have their invalidity case heard by the Patent Trial and Appeal Board

(PTAB) in parallel AIA proceedings,2 and courts have been willing to

stay such litigations pending the outcome of AIA proceedings.3

Perhaps not surprisingly given the AIA’s recent enactment, practitioners

have expressed concern over various aspects of post-grant practice and pro-

cedure. The U.S. Patent and Trademark Ofce (USPTO) has demonstrated

a willingness to address some of the concerns raised by practitioners by

amending its rules and issuing precedential decisions. However, other areas

of concern remain. Debates persist over issues such as the claim construction

standard applied in AIA proceedings, and the discretion given to the PTAB

by statute to deny institution based on redundancy. Recent reform efforts and

potential changes that may be on the horizon are discussed below.

A Comparison with District Court Litigation

AIA proceedings compare favorably to district court litigation in

many important aspects. Compared with district court litigation, AIA

proceedings are expedient and inexpensive. By statute, the PTAB is

required to render a nal written decision within one year of institut-

ing trial.4 In contrast, district court litigation can take several years to

conclude. According to the American Intellectual Property Law Asso-

ciation (AIPLA), for lawsuits in the lowest-stakes category (less than

$1 million at risk), median litigation costs were $600,000 in 2015.5 For

the highest-stakes category (more than $25 million at risk), median

litigation costs were $5,000,000.6 In contrast, costs for a post-grant pro-

ceeding are typically far less, generally in the $500,000 range.7 While

patent cases in district court are typically heard by generalist jurists

without any formal technical background, the administrative patent

judges (APJs) who preside over AIA trials have technical backgrounds

and substantial experience in patent law.8

In an IPR, a petitioner bears the initial burden of demonstrating that

there is a reasonable likelihood that the petitioner would prevail with

respect to at least one of the claims challenged.9 As of August31, 2016,

there have been a total of 4,995 IPR petitions and 474 CBM petitions

led with the PTAB (see gs. 1–2).10 Of those petitions led, decisions to

institute trial were issued in 1,807 IPR proceedings and 211 CBM proceed-

ings.11 In instituted AIA proceedings that reached nal written decision,

some or all of the challenged claims were deemed unpatentable 84 per-

cent of the time.12 Thus, many parties have found AIA proceedings to be an

effective means for challenging the patentability of issued patent claims.

The

Evolution

of Patent



Litigation



Under

the AIA

A Review of Past

Reform and a Look

Ahead to Possible

Changes on the Horizon

By Todd R. Walters,

Erin M. Dunston,

Jonathan R. Bowser,

Roger H. Lee, Kyle K. Tsui,

Mythili Markowski,

Christopher M. Cherry,

David W. Leibovitch, and

Shantanu C. Pathak