Patent Office to Limit Serial Validity Attacks, Matal Says

Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...

By Peter Leung

The Patent and Trademark Office is exploring ways to limit serial administrative patent validity challenges, Joseph Matal, the office’s interim head, said Oct. 19.

The Patent Trial and Appeal Board, the PTO body that hears administrative patent challenges, such as inter partes reviews, will soon issue decisions concerning the power of the board’s judges to reject challenges based on issues that have been raised before, such as during patent prosecution, Matal said at the American Intellectual Property Law Association’s annual meeting in Washington.

Critics of inter partes reviews and other proceedings created by the America Invents Act say the proceedings are unfair because they allow for multiple attacks on the same patent, undermining their value.

Developing Jurisprudence

On Oct. 18, the PTAB made one case “precedential,” binding all panels to prevent abuse of patent owners in follow-on petitions that correct earlier mistakes.

In the decision, General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, the PTAB laid out a seven-factor test to determine whether the challenger improperly strung out its invalidity arguments into multiple challenges. After General Plastics, petitioners will have to show that there was a good reason that the follow-on challenge couldn’t have been presented earlier. Without that showing, the board can deny the petition using its broad authority under 35 U.S.C. §314(a).

Matal said there’s also a developing line of cases highlighting the board’s power, under 35 U.S.C. §325(d), to ensure that the same arguments and evidence aren’t revisited over and over again. That includes issues raised when the patent application was first examined by the PTO. In situations where the issue was fully considered before, the board can choose to adopt a very deferential standard of review, so the patent owner won’t be forced to refight the same battles, he said.

The focus on Section 325(d) should also help applicants get stronger patents, Matal said. Since the creation of the AIA proceedings, companies have wanted “IPR-proof” patents, and the way to get patents that can resist an attack is for the applicant to find and disclose all the relevant prior inventions or research that could anticipate the invention or make it obvious, he said. If the patent examiner has the chance to fully consider all the prior art, then the patent will have a level of immunity from an IPR attack, he said.

None of the cases exploring Section 325(d) have been made precedential yet, as the process to do so is “long, slow, and lumbering,” he said.

Not All Serial Challenges

Matal also said that some of the criticisms about patents facing multiple validity attacks are overblown. According to PTO data, about 68 percent of the patents challenged in an AIA-created proceeding face just a single challenge, he said. About 20 percent are challenged twice, with the remaining facing three or more proceedings.

Some of the serial challenges are abusive, but others are justified, he said. For example, though some patent owners complain about having a patent facing eight AIA challenges, Matal noted that in some cases, the patent had been used to sue eight different companies. Since alleged infringers are each entitled to challenge the patent’s validity in district court anyway, it doesn’t make sense to argue that they don’t have the same right at the PTAB, he said.

To contact the reporter on this story: Peter Leung in Washington at pleung@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

Copyright © 2017 The Bureau of National Affairs, Inc. All Rights Reserved.

Request Intellectual Property on Bloomberg Law