Apr. 8, 2024

GMU Center for Intellectual Property x Innovation Policy: Toward the Substitutionary Promise of PTAB Review

Executive Summary

Although administrative patent trial proceedings under the Leahy-Smith America Invents Act (AIA) have done much to improve the efficient reevaluation of patent validity, significant problems remain. Divergent burdens of proof among the United States Patent and Trademark Office (USPTO) and Patent Trial and Appeal Board (PTAB) and the U.S. district courts allow the agency to disregard prior judicial decisions about patent validity and for patents to be relitigated even after surviving judicial review. Divergent claim construction standards allow for similar arbitrage, and, although the USPTO has now aligned its claim construction approach with that of the courts through rulemaking, that reform remains vulnerable to political reversal in the future. And while the plain text of the AIA forbids a party to seek inter partes review more than one year after being sued in district court litigation for infringement of the same patent, PTAB practice currently endorses a loophole to evade that statutory deadline through joinder.

The sum of these problems is a degradation of the court-agency boundary that the AIA aimed to build to force patent challengers to choose one forum or another. The choice was intended to be between two competing substitutes, with a promise of greater
efficiency in the more expert agency setting. Yet litigants are increasingly free to seek a third way, engaging in wastefully duplicative litigation in both forums in search of a preferred outcome.

The PREVAIL Act contains reforms that address all three of these significant problems and are therefore especially welcome steps toward fulfilling the original aims of the America Invents Act.

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