Legislation

One area of estoppel arising from an unsuccessful AIA petition that remains poorly understood relates to prior art that is described both in a printed publication or patent and also was in use by others, such as to create prior use, prior sale, or other non-printed types of prior art.

Last week Senators Chris Coons (D-Del.) and Tom Cotton (R-Ark.) and Representative Steve Stivers (R-Ohio) and Bill Foster (D-Ill.) reintroduced the STRONGER Patents Act, originally introduced in 2017. While many recently proposed patent bills would make it easier to challenge patents, the STRONGER Act would limit the ability of third parties to challenge granted patents in USPTO Patent Trial and Appeal Board (PTAB) proceedings. While most patent owners would welcome these changes, will enough members of Congress agree that the U.S. needs stronger patents to roll-back many provisions of the America Invents Act?

The Court of Appeals for the Federal Circuit is poised to decide a case which may create new estoppel concerns for AIA petitioners under 35 USC § 315(e)(2).

On June 13, 2018, Sen. Hatch (R-Utah) introduced an amendment that would require generic ANDA filers to choose between litigating validity in Hatch-Waxman district court litigation or an AIA challenge (IPR or PGR), and on June 14th, the Senate Judiciary Committee voted 16-5 to bring it to the Senate floor for a vote.

We look back on the major developments that have shaped AIA proceedings over the first four years.

The U.S. Department of Justice (DOJ) filed six petitions for inter partes review (IPR) of three patents assigned to Discovery Patents, LLC. The patents cover security alarm systems and methods for providing secure real-time video and imaging to emergency response agencies over a high speed communication link.

A recent decision by the PTAB, Inguran v. Premium Genetics, demonstrates that a Petitioner may subject an apparent “pre-AIA” patent, having at least one priority date before and at least one priority date after March 16, 2012, to the post-grant review (PGR) process.

The PTAB has denied petitions filed by the same petitioner against the same claims, even where the subsequent petition relied upon completely different prior art (IPR2014-00506), reasoning that a petitioner should not hold back its best references for a subsequent attempt.

On August 19th, the USPTO released a new set of proposed rules related to post-grant proceedings before the Patent Trial and Appeal Board (PTAB).