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

AuthorTodd 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
PositionTodd 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...
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
information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
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 AIAs 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.
of Patent
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

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