PTAB Basics: Key Features Of Trials Before The USPTO

Since the passage of the America Invents Act in 2011, a significant proportion of patent litigation in the United States has moved to trials held before the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office (USPTO). These trials are relatively fast, inexpensive, and narrow in scope compared to litigation in other forums, such as district courts or the International Trade Commission. This paper presents a brief summary of key case milestones and strategic considerations for PTAB trials.

There are several types of adversarial post-grant proceedings at the PTAB, including inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR). To date, IPRs have been the most popular PTAB trial proceeding, comprising 93% of petitions filed at the PTAB through August 31, 2019.1 The popularity of IPRs likely hinges, at least in part, on the proceeding's relatively less restrictive provisions regarding which patents are eligible for review2 and post-decision estoppel.3 IPR proceedings are limited to patent validity challenges under the legal theories of anticipation and obviousness.4 Prior art asserted during an IPR is also limited to patents and printed publications.5 CBM and PGR proceedings, in contrast, allow for a broader range of legal challenges, including grounds addressing subject matter eligibility, enablement, indefiniteness, and written description support.6

  1. Pre-Institution Filings

    A party initiates a post-grant proceeding at the PTAB by filing a petition for review. This petition must identify, with particularity, each claim challenged, the grounds on which each challenge to each claim is based, and the evidence supporting each ground.7 Testimony supporting the petition must be submitted in the form of a written declaration, such as expert witness testimony regarding the knowledge of a skilled artisan.8 A notable restriction on the timing of IPR petitions is the "one-year bar," which prohibits institution of an IPR petition filed more than one year after service of a district court complaint alleging infringement of the patent-at-issue.9

    The petitioner bears the ultimate burden of proof for unpatentability in PTAB proceedings.10 The PTAB requires a showing by a preponderance of the evidence, which is more favorable to petitioners than the clear and convincing evidence standard applied in district court.11 The petition must also set forth the petitioner's positions on all necessary claim construction issues.12 Although the PTAB previously used a different claim construction standard than district courts, the PTAB now construes claims under the same "Phillips" standard.13

    Once the petition is filed and accepted by the Office after a procedural review, a filing date is awarded. The...

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