This post is Part II of a series titled “Focus Further Patent Reform on Improving What Is Starting To Work.” Click here to view Part I.
Second, as with covered business method review, let parties attack a patent on any ground in an inter partes at any time, not just anticipation or obviousness based on printed publications, or within a set period of time. This means a defendant who thinks a patent is invalid can have the administrative law judges do what they are suited to do, and means juries won’t have to try to decide validity in a vacuum. It also means a defendant can opt to have the same standard and the same decision-making process apply in review of a patent’s validity. What if the defendant drags its feet, trying to game the litigation and the filing of an IPR? What if the defendant just before trial finally files an IPR and asks for a stay? This is the type of exceptional circumstance that would justify denial of a stay. Further, the IPR proceeding filed so late would not likely run its course before the appeal of the jury verdict. Finally, Congress could add to the CBM and IPR procedures that the administrative law judges in extraordinary circumstances where a defendant has delayed for tactical advantage, discretion to decline to institute for that reason, or issue their own stay, or dismiss the CBM or IPR.
Frankly, in Germany, invalidity is always bifurcated into a separate proceeding before a specialized court – and this system is highly regarded by the patent world. Whether the U.S. goes so far is an option, but not required for improvement over the current system.
Stay tuned for the final part of “Focus Further Patent Reform on Improving What is Starting to Work.”