By Robert Asher. Co-Chair of our Patent Practice Group
Inter partes review is, plain and simple, a tool for killing patents. In light of rules implemented by the USPTO and judicial interpretations of the America Invents Act, it would be careless to refer to these proceedings as a litigation alternative. Litigation in courts offers opposing parties an opportunity to discover and present evidence in support of their respective positions. At the end of the litigation, a judgment typically resolves the contested issues between the parties. If Congress intended inter partes review (IPR) to result in an equivalent sense of closure for patent owners, that goal remains frustratingly elusive.
By way of background, IPR was passed into law to replace previous inter partes reexamination challenges to patents in the patent office. Inter partes reexaminations were getting bogged down by the filing of unlimited new patent claims and claim amendments, multiple patent examiner actions and multiple levels of appeal.
By contrast, IPR commences at the level of the Patent Trial and Appeal Board (PTAB), severely limits the ability to amend claims, and proceeds according to strict time limits. To satisfy the rapid timetable when presented with multiple grounds for challenging claims of a patent, the PTAB will often “institute,” i.e., go forward with, an IPR on only some of the grounds and as to only some of the patent claims.
By statute, the PTAB’s institution decision is not subject to appeal. The PTAB has therefore had unfettered discretion in deciding which patent claims, and which grounds for challenge, it will consider in an IPR. The Federal Circuit Court of Appeals recently addressed the question of whether the PTAB can limit the scope of an IPR in this manner.
In Synopsys, Inc. v. Mentor Graphics Corp., the Federal Circuit examined the statute governing IPRs and found the different wording in two of its provisions highly significant. A proceeding may not be instituted, under 35 U.S.C. § 314(a), unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”
In addressing the end-point of an instituted IPR, however, the statute provides that the final written decision must issue with respect to “any patent claim challenged by the petitioner.” 35 U.S.C.§ 318(a). Because Section 318(a) does not use the language “the claims challenged in the petition,” the PTAB may, said the court, issue a final decision only as to the claims and grounds on which it instituted review.(More)
By way of background, IPR was passed into law to replace previous inter partes reexamination challenges to patents in the patent office. Inter partes reexaminations were getting bogged down by the filing of unlimited new patent claims and claim amendments, multiple patent examiner actions and multiple levels of appeal.
By contrast, IPR commences at the level of the Patent Trial and Appeal Board (PTAB), severely limits the ability to amend claims, and proceeds according to strict time limits. To satisfy the rapid timetable when presented with multiple grounds for challenging claims of a patent, the PTAB will often “institute,” i.e., go forward with, an IPR on only some of the grounds and as to only some of the patent claims.
By statute, the PTAB’s institution decision is not subject to appeal. The PTAB has therefore had unfettered discretion in deciding which patent claims, and which grounds for challenge, it will consider in an IPR. The Federal Circuit Court of Appeals recently addressed the question of whether the PTAB can limit the scope of an IPR in this manner.
In Synopsys, Inc. v. Mentor Graphics Corp., the Federal Circuit examined the statute governing IPRs and found the different wording in two of its provisions highly significant. A proceeding may not be instituted, under 35 U.S.C. § 314(a), unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”
In addressing the end-point of an instituted IPR, however, the statute provides that the final written decision must issue with respect to “any patent claim challenged by the petitioner.” 35 U.S.C.§ 318(a). Because Section 318(a) does not use the language “the claims challenged in the petition,” the PTAB may, said the court, issue a final decision only as to the claims and grounds on which it instituted review.(More)
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