10.2.2 Administrative review proceedings
10.2.2.1 Patent reissuance
The patent reissue provision enables a patent owner to request the USPTO to reissue a patent that is “wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than they had a right to claim in the patent.”46 The error must have been made without any deceptive intent, and the patent owner may not introduce new matter into the application for reissue.
10.2.2.2 Ex parte reexamination
The AIA retained and modestly reformed ex parte reexamination. Any person may, at any time, file a request for reexamination by the CRU of any patent claim on the basis of any:
prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; or  statements of the patent owner filed in a proceeding before a Federal court or the [USPTO] in which the patent owner took a position on the scope of any claim of a particular patent.47
Within three months following such a filing, the USPTO Director determines whether a substantial new question of patentability (SNQ) – which requires a showing that a reasonable examiner would consider the item of information important in determining the patentability of any claim – is raised by the request.48 If the Director finds that an SNQ is raised, then the patent owner is given at least two months from the date of the determination to file a statement on the question, including any amendment to the patent.49 If the patent owner files such a statement, the requester is provided a copy and may file a reply, after which the CRU conducts a prompt reexamination proceeding.50 No proposed amended or new claim may expand the scope of the patent. Such reexamination decisions can be appealed to the PTAB51 and to the Federal Circuit with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.52
10.2.2.3 Supplemental examination
Augmenting ex parte reexamination, supplemental examination affords a patent owner a three-month procedure during which the CRU may consider, reconsider or correct information believed to be relevant to the patent.53 The patent owner may request consideration of any basis for patentability. Unlike ex parte reexamination, the information that forms the basis of the request is not limited to patents and printed publications, and may include other references (“offers for sale,” “public disclosures,” or “public uses”) and issues (such as eligibility, utility, and written description). The standard for granting the request is whether one or more items of information raises an SNQ.
10.2.2.4 Inter partes review
A patent challenger may pursue IPR to cancel as unpatentable one or more claims of a patent “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”54
Figure 10.2 shows the number of IPR petitions filed each year, from fiscal year 2012 (the first year in which IPR proceedings were available) through May 2022.55 These statistics reflect the rapid rise in IPRs filed after enactment of the AIA in 2011.
During the petition phase, the PTAB decides whether to institute an IPR. The patent owner may file a preliminary response to the petition prior to the institution decision, within three months of filing of the petition. The PTAB must decide whether to institute the IPR proceeding within three months of receiving the preliminary response (or three months from the last day on which such a response can be filed).57
The threshold for institution – whether “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”58 – is lower than the prior SNQ standard for initiating inter partes reexamination. The AIA requires the PTAB to make the institution decision within three months of the patent owner’s preliminary response (if any). The PTAB’s institution decision is not subject to appeal.59 If the PTAB institutes review, the trial phase commences, and the PTAB provides the patent owner and the petitioner challenging the patent with a sequenced discovery process.
PTAB trials are administered by panels of three APJs. The USPTO established the rules for PTAB proceedings based on the AIA and the Administrative Procedure Act (APA). The USPTO has, from time to time, amended those rules.60
10.2.2.4.1 Forum selection: inter partes review or declaratory relief
Unless a patent challenger has been sued for infringement, the challenger must elect between pursuing an IPR or a declaratory relief action in district court.61 If the challenger files an IPR after it has filed a declaratory relief action in district court, then the district court civil action will be automatically stayed until either: “(A) the patent owner moves the court to lift the stay; (B) the patent owner files a civil action or counterclaim alleging that the petitioner […] has infringed the patent; or (C) the petitioner […] moves the court to dismiss the civil action.”62 The rationale behind this rule is to spare the patent owner from having to defend both the declaratory relief action and the IPR simultaneously. The AIA further provides that an IPR may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner is served with a district court complaint alleging infringement of the patent.63
The standard for instituting IPR is whether “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”64 This standard is a “lower threshold than a ‘more likely than not’ requirement.”65 Nonetheless, the PTAB has significant discretion in deciding whether to institute an IPR. It must, however, either allow review on all grounds raised or completely deny review. The petitioner must file a separate petition for each patent challenged.
The parties to an IPR may request a conference call within a month from the date of institution of the trial to discuss the scheduling order and any motions that the parties anticipate filing during the trial. The PTAB has developed rules and a standard scheduling order for sequenced discovery of information reasonably necessary for IPRs. The AIA provides that IPRs are generally open to the public, but a party may file a motion to seal confidential documents. The AIA also provides for protective orders to govern the exchange and submission of confidential information.
10.2.2.4.3.1 Claim amendments
The PTAB permits patentees to amend claims in IPR proceedings. Amendments may cancel any challenged patent claim, propose a reasonable number of substitute claims, or do both. Motions to amend must be filed no later than the filing of a patent owner response, three months after the institution decision.66
10.2.2.4.3.2 Expert witnesses
Although the AIA limits the PTAB review to prior art patents and printed publications, the PTAB permits expert testimony in the form of a declaration to be submitted with the petition, with the preliminary response, and at other appropriate stages in a proceeding as ordered or allowed by the panel overseeing the trial. Expert opinion testimony is generally permitted where the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.
10.2.2.4.3.3 Claim construction
As of 2018, the PTAB applies standards set forth in Phillips v. AWH Corp.67 This policy harmonizes the PTAB’s claim construction framework for IPRs with the standards applied in district court cases.
10.2.2.4.3.4 Oral hearing
Each party has the right to request an oral hearing as part of an IPR. Such hearings, however, are far more streamlined and limited than district court or USITC patent trials. The PTAB expects to ordinarily provide for an hour of argument per side for a single proceeding. Oral hearings are set on request.
10.2.2.4.3.5 Standard of review
Petitioners bear the burden of proving that a patent is invalid by a preponderance of the evidence in the IPR.68 Thus, unlike district court proceedings, the patent owner does not benefit from a presumption of validity in IPR proceedings.
The PTAB promotes settlement of IPRs. The panel is available to facilitate settlement discussions and, where appropriate, may require a settlement discussion as part of the proceeding.
10.2.2.4.3.7 Final written decision
The panel will enter a final written decision not more than one year from the date a trial is instituted, except that the time may be extended up to six months for good cause shown.69
PTAB final trial decisions (but not institution decisions) can be appealed to the Federal Circuit.70
The AIA provides that the petitioner in an IPR is barred from raising “any ground that the petitioner raised or reasonably could have raised” during that IPR in district court or subsequent administrative proceedings.71
10.2.2.5 Post-grant review
PGR petitions must be filed within nine months of patent issuance or reissuance and may seek invalidation of patent claims on any basis and without any limitations on prior art references.73 Any person who has not filed a civil action challenging the validity of a claim of a patent may file a PGR petition challenging the patent’s validity. The standard for institution of a PGR is that the information presented in the petition would demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable.74 In addition, the PTAB may institute a PGR if the petition raises a novel or unsettled legal question that is important to other patents or patent applications.75 In most other respects, the PGR trial process and ramifications parallel IPR proceedings. If the PGR is instituted and not dismissed, the PTAB will issue a final determination within one year (extendable for good cause by six months).
Table 10.1 compares the key characteristics of IPRs and PGRs.
|AIA review||Inter partes review||Post-grant review|
|Evidentiary standard||Petitioner to prove invalidity by preponderance of the evidence|
|Grounds for review||35 U.S.C. §§ 102–03||Any defense relating to invalidity|
|Prior art limited to:||Patents and printed publications||No limits|
|Threshold to institute review||Reasonable likelihood that one or more claims are invalid||More likely than not that at least one claim is unpatentable, or petition raises a novel legal question of patentability|
|Time to file||More than 9 months after issue or reissue, or after post-grant review||Within 9 months of issue or reissue date|
|Time to decision||Maximum of 12–18 months from institution decision|
|Claim amendments||Patent owner may cancel claims or propose a reasonable number of substitute claims; presumption that only one substitute claim will be required for each challenged claim|
|Claim construction||“Ordinary and customary meaning”1|
|Estoppel in subsequent civil action||Any ground raised or reasonably could have been raised|
|Effect of settlement||Estoppel provisions do not apply|
1 Phillip v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) standard.
10.2.2.6 Derivation proceedings
The AIA authorizes the PTAB to conduct derivation proceedings to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and (ii) the earlier application claiming such invention was filed without authorization.76 An applicant initiates a derivation proceeding by filing a petition setting forth the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner. The petition must be filed within one year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.
Upon completion of the proceeding, the PTAB issues a written decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application without authorization. A party dissatisfied with the PTAB’s final decision may appeal to the district court or the Federal Circuit.