PTAB Update on Inter Partes Review

Holmes Hawkins and Russell Blythe

On August 19, 2015, the Director of the USPTO released a blog post reporting on the state of post- grant review proceedings created by the Leahy- Smith America Invents Act of 2011 and announcing a set of potential changes to those proceedings go- ing forward. Those involved in or considering inter partes review proceedings should take note of these significant changes that are now on the horizon at the PTAB.

Post-Grant Review Reforms: Both the House and Senate bills contain provisions directed to post- grant review at the PTO. The post-grant review process allows entities to request that the PTO initi- ate a review of an issued U.S. Patent. The two main proceedings, post-grant review (“PGR”) and inter partesreview (“IPR”), both prevent parties that have used the proceedings from raising in court an argument they could have raised at the PTO.

The bills would change the standard that the PTO applies to construe the meaning of a challenged pa- tent claim from the current Broadest Reasonable Interpretation (“BRI”) standard to the narrower standard currently applied by the district courts. This change will make it more difficult to challenge patent claims, because narrowly construing a patent claim makes it less vulnerable to invalidity argu- ments of anticipation and obviousness. This provision was also in last year’s Senate bill, and a similar provision appears in the STRONG Patents Act and was later added to the Senate PATENT Act.

The standard applicable in post-grant review pro- ceedings has been the subject of much dispute. The Court of Appeals for the Federal Circuit in June is- sued a 6-5 en banc decision letting the BRI test stand10, with the dissenting judges writing in sup- port of the standard applied by the district courts and included in the House and Senate bills.