POST-GRANT PROCEEDINGS
HARD TARGET: WHO’S IN CHARGE IN POST-GRANT PROCEEDINGS?
The America Invents Act has changed the rules for post-grant proceedings, and that has led to challenges in identifying parties of interest, as Eugene Perez and Kel Rose explain.
T e 2011 America Invents Act (AIA) has created multiple post-grant proceedings including post- grant review (PGR), inter partes review (IPR) (which replaced inter partes reexamination), PGR of business method patents, and supplemental examination (SE). Generally, these AIA post-grant proceedings are intended to reduce the amount of litigation because fi ling a petition for PGR, IPR or PGR for business method patents requires an identifi cation of all real parties in interest (RPIs), and subsequently fi led civil actions can be stayed.
Importance of identifying RPI and privy
The identification of all RPIs is significant because of the estoppel provisions. Specifically,
a final written decision by the US Patent & Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), resulting from an IPR or PGR proceeding, estops (precludes) the petitioner, or the RPI of the petitioner or any privy of the petitioner, from asserting in a district court proceeding, an International Trade Commission (ITC) proceeding, or any other USPTO proceeding, that a claim is invalid or unpatentable on any ground the petitioner “raised or reasonably could have raised” during the IPR or PGR proceeding. PGR for business methods estoppel applies only to those issues actually raised.
As a basic example of estoppel, if Company X raises the issue that Company Z’s patent is unpatentable due to non-compliance with the enablement
48 World Intellectual Property Review September/October 2012
requirement in a PGR, and Company X loses the PGR, Company X cannot later raise another issue, such as a rejection for lack of utility, in any proceeding if that issue could have been raised in the PGR. T erefore, if you do get involved in a PGR, IPR or PGR for business methods, you do not get ‘two bites at the apple’.
At the same time, this also means that if a party is not listed as a RPI, that party may not be estopped from later challenging the same patent in litigation or another USPTO proceeding (eg, the party who is not an RPI can raise another unpatentability issue that could have been previously raised by Company X).
Given the relatively fast PTAB decision-making process and the scope of estoppel, properly
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