Since the inception of post-grant proceedings (e.g., inter partes reviews (IPRs), post-grant reviews (PGRs)) under the America Invents Act (AIA), many patent owners have viewed the Patent Trial and Appeals Board (PTAB) as somewhat of a slaughterhouse for patents. In particular, as the number of granted IPR petitions rises, so does the number of patents invalidated by the PTAB. Many, in fact, view the entire process as heavily tilted in view of the IPR petitioners. There may be hope on the horizon, however, for patent owners’ chances in future proceedings.
The Senate Judiciary Committee recently released amendments to a bill known as the Protecting American Talent and Entrepreneurship Act (PATENT Act, S. 1137) that could potentially improve patent owners’ chances in post-grant AIA reviews. The following items are examples of the several items discussed in the bill that could favor patent owners:
- Requiring the PTAB to use the claim construction standard used in district courts as opposed to the “broadest reasonable interpretation” standard currently used.
- Limiting multiple challenges to the same patent.
- Limiting the number of PTAB members of a panel that granted the review to be allowed to take part in the final decision of the review (i.e., to avoid the instance of a decision-making panel viewing the patent unfairly based upon the decision to grant the review).
- Requiring the party filing a petition to do so under an obligation similar to the Rule 11 obligations of the Federal Rules of Civil Procedure (which allows sanctions to be imposed on attorneys who file frivolous suits).
- Amending the estoppel rules in PGRs to only estop a patent owner from raising issues in later court proceedings that the patent owner actually did raise in the PGR (as opposed to also including estoppel for issues that “could have been raised” during the PGR).
By drafting this bill, the senate appears to empathize with the plight that many patent owners have experienced during the AIA review process. As such, the PATENT Act is something for patent owners to keep an eye on because if it eventually passes, then the idea of successfully overcoming an AIA review may not be as daunting.