Changes to PTAB Practice Proposed by STRONGER Patents Act of 2017
The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate by a bipartisan group led by Senator Chris Coons (D-Del.) and co-sponsored by Senators Tom Cotton (R-Ark.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Haw.). According to a press release by Senator Coons, “[t]he STRONGER Patents Act seeks to strengthen the U.S. Patent system through implementing measures to make it easier and less costly for patent holders to enforce their patents.” The “Act is based on legislation that Senator Coons introduced last year with the goal of making the post-issuance proceedings before the Patent Trial and Appeal Board (PTAB) more fair and efficient.” The bill asserts that “unintended consequences of the [AIA] are continuing to become evident, including the strategic filing of post-grant review proceedings to depress stock prices and extort settlements, the filing of repetitive petitions for inter partes and post-grant reviews that have the effect of harassing patent owners, and the unnecessary duplication of work by the district courts of the United States and the Patent Trial and Appeal Board.”
The following table illustrates several key changes proposed by the STRONGER Patents Act compared to the current PTAB practice under the AIA.
| Proposed Changes in STRONGER Patents Act | Current Practice Under AIA | |
| Claim Construction | Same standard as that used in district court litigation (Phillips) | Broadest reasonable interpretation |
| Burden of Proof | Presumption of validity | No presumption of validity |
| Standing | IPR Petitioner must have been sued for infringement or have standing to bring declaratory judgment action in Federal Court
|
IPR Petitioner may be any third party who is not time-barred or estopped |
| Limitation on Reviews | Review initiated only once per claim of a patent | There is no formal limit, but the PTAB has discretion to deny multiple or follow-on petitions under §§ 314(a), 324(a) or 325(d). |
| Interlocutory Appeals from Institution Decisions | A determination by the Director to institute an IPR may be appealed to the United States Court of Appeals for the Federal Circuit. Patent owners may not appeal the PTAB’s determination in the institution decision that a challenged claim is likely unpatentable. | Institution decisions are not appealable. |
| Eliminating Repetitive Proceedings | Petitioners can only challenge a patent once, unless they are later charged with infringement of additional claims. If an IPR is instituted, the petitioner cannot bring challenges of the same type in district court to eliminate duplicative proceedings. | A petitioner who, in a final written decision, is unsuccessful challenging a claim in an IPR or PGR is estopped from raising or maintaining any ground of challenge for that claim that the petitioner raised or reasonably could have raised during the concluded IPR or PGR proceeding. |
| Real-Party-In-Interest | Defines Real-Party-in-Interest as an entity making financial contributions to the challenge. | A Real-Party-in-Interest is typically considered any party who exercises or could exercise control in the proceeding. |
| Priority of Federal Court Validity Determinations | If a district court reviews the validity of a patent before the PTAB, the post-issuance proceeding should not start, or should be paused pending appeal. |
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