Post-Grant Proceedings

PTAB Post-Grant Proceedings Under the America Invents Act—What You Should Know
The AIA established new post-grant proceedings, available on or after September 16, 2012, to challenge the validity of issued patents at the PTAB. These PTAB trial proceedings are attractive to accused infringers, because they are generally simpler, faster, and less expensive in comparison to court litigation, and require a lower burden of proof for invalidation of a patent.

Game changer
Since the legislation went into effect, thousands of challenges have been raised by IPR, PGR, and CBM review resulting in institution of numerous trials and cancellation of many challenged claims.

What’s the difference?
The three types of PTAB trials are similar in operation and are designed to complement each other. In a nutshell, IPRs are available to challenge any patent; PGRs are used during the nine months after an AIA patent has been issued or reissued; and CBMs apply to patents claiming methods used in the practice, administration, or management of a financial product or service.

When do I use PTAB proceedings?
Petitions to institute PTAB trial proceedings are most often filed by parties that have been or expect to be charged with patent infringement. Most PTAB trials involve parallel litigation, which is often stayed during the PTAB trial. The litigation may resume if some patent claims survive the PTAB trial, or the litigation may be terminated if all asserted claims are canceled.

How are PTAB proceedings different from court litigation?
PTAB proceedings provide a streamlined alternative to federal court review of a patent’s validity. These proceedings are attractive to accused infringers because of a lower burden of proof, limited discovery, and expedited schedule. Differences from district court litigation include:

  • Petitions are filed with and decided by the PTAB, in particular by Administrative Patent Judges (APJ) with technical backgrounds and expertise in patent law and procedure.
  • Petitions are subject to strict formatting guidelines and must be accompanied by all supporting evidence necessary to obtain the petitioned relief.
  • Discovery is generally limited to declarations, printed publications relied on by the parties, cross-examination of the declarants, and additional discovery only by agreement of the parties.
  • Each party has approximately one hour to present its case at a final hearing.
  • The burden of proving patent invalidity is by a “preponderance” of the evidence, a lower standard than the “clear and convincing” evidence standard applicable in court.
  • Invalidity grounds that were actually raised (PGR, CBM) or could have been raised (IPR) may not be asserted in another proceeding.
  • The proceedings must be completed within 18 months after a petition is filed, and are appealable to the Federal Circuit Court of Appeals.
  • Costs are generally much lower in comparison to district court litigation, although significant filing fees are required for PTAB petitions.
What is the PTAB process?
All PTAB trial proceedings follow the same basic process and adhere to the following 18-month timeline:

Advantage: Petitioner

Since the legislation went into effect, PTAB proceedings have been considered to be very favorable to petitioners. A large majority of filed petitions are instituted as trials, most trials that proceed to final written decision result in cancellation of many or all challenged claims, and most appeals of PTAB decisions are upheld by the Federal Circuit. Challenges to patent validity in federal court are subject to a higher burden of proof and are generally less successful.

The patent owner has only three months to prepare an optional preliminary response to a petition. If the PTAB institutes a trial, then the patent owner may file a complete response, supported by declarations and other evidence. The patent owner may also file a motion to amend claims, but such motions are rarely granted, and permitted amendments are strictly limited.

Claims are construed under the broadest reasonable interpretation standard (BRI), which may result in a broader construction, and higher likelihood of invalidity, than in district court litigation.

Perhaps the most petitioner-friendly aspect of a PTAB proceeding is the lower burden of proof required to prove patent invalidity. As opposed to the federal court standard of clear and convincing evidence, petitioners need only demonstrate unpatentability of a claim by a preponderance of the evidence.

Petitioners must weigh the benefits of a PTAB proceeding with the potential that they may be estopped from later presenting invalidity arguments that were raised, or could have been raised during the proceeding.

Patent owners should consider the potential need to defend their patents in a PTAB proceeding, and may take steps during patent prosecution to make their patents more resistant to PTAB challenges, such as by including more dependent claims or keeping a continuation application pending.