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. Parallel review permitted.
Amendment of Claims Patent owners may enter into an “expedited” examination procedure instead of amending claims before the PTAB.

If amendments are pursued in front of the PTAB the inventor is entitled to an amended claim unless the cumulative evidence shows that he or she is not.

Patent Owner must file a Motion to Amend the Claims and bears the burden of establishing patentability of the amended claims.
Composition of PGR and IPR Panels Adjudicators who decide whether to permit a post-grant proceeding are distinct from the PTAB judges who will decide the outcome of a petition. The same panel typically decides both whether to institute post-grant review and the outcome of that review.

The STRONGER Patents Act has been favorably received by several industry groups including the Medical Device Manufactures Association (MDMA), which issued the following statement:

MDMA applauds the bipartisan work of Senators Chris Coons, Tom Cotton, Dick Durbin and Mazie Hirono for devising legislation that thwarts frivolous patent lawsuits while leveling the playing field for inventors.  The ‘STRONGER Patents Act’ provides a balanced, targeted approach to end abuse, support innovation and spur the lifesaving cures and therapies that patients and providers desperately need.

MDMA has always supported targeted efforts to deal with patent litigation abuse, and the ‘STRONGER Patents Act’ will address this problem while not having the unintended consequences of weakening one’s intellectual property rights.  We look forward to working with Congress and all policy makers to help ensure that America’s innovation ecosystem remains the envy of the world.”

Practitioners and corporations frequently appearing before the PTAB will be interested in how this bill progresses through Congress as the outcome of this legislation will likely have a significant impact on PTAB practice.

Christie Matthaei

Christie Matthaei is an associate in our Seattle office.

Ms. Matthaei represents various clients in all aspects of intellectual property disputes, with a focus on patent litigation. Ms. Matthaei also counsels clients on pre-litigation matters, including analyzing patent infringement and validity.

Ms. Matthaei earned her J.D. from the George Washington University Law School, where she was a member of the American Intellectual Property Law Association Journal. During her time in law school, Ms. Matthaei interned for the White House, working in the Office of Science and Technology Policy. Prior to law school, Ms. Matthaei worked at Pacific Northwest National Laboratory as a chemical engineer on projects related to alternative energy and green chemicals. Ms. Matthaei obtained a B.S. in Chemical Engineering from the University of Washington.

Ms. Matthaei was a summer associate in 2010 and joined the firm as an associate in 2011.

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