Title page
Contents
Summary 2
Introduction 5
Overview of U.S. Patent Law 6
What Are Patents? 6
What Inventions Can Be Patented? 7
Eligible Subject Matter Requirement 7
Novelty Requirement 8
Nonobviousness Requirement 8
Utility Requirement 9
Requirements for Specification and Claims 9
How Do Inventors Obtain a Patent? 10
How Do Courts Adjudicate Patent Rights? 10
What Was USPTO's Role in Patent Adjudication Prior to the AIA? 12
Overview of the America Invents Act and PTAB 13
The AIA's Key Changes to Patent Law 13
PTAB's Structure 14
PTAB Post-Grant Proceedings 15
Inter Partes Review 15
Standing, Timing, and Grounds to Petition for IPR 16
Discretionary Institution of IPR 16
IPR Process Following Institution 17
Discovery in IPR 19
IPR Final Decisions, Director Review, and Appeals 20
IPR Statistics 21
Post-Grant Review 25
Covered Business Method Review 26
Comparison of PTAB and Other Post-Grant Proceedings 26
PTAB at the Supreme Court 27
Statutory Interpretation Cases 28
Cuozzo Speed Technologies, LLC v. Lee 28
SAS Institute, Inc. v. Iancu 30
Return Mail, Inc. v. U.S. Postal Service 31
Thryv, Inc. v. Click-to-Call Technologies, LP 33
Constitutional Challenges to IPR 34
Oil States Energy Services, LLC v. Greene's Energy Group, LLC 34
United States v. Arthrex 35
Current Debates and Proposed Reforms 37
What Roles Do the USPTO Director and PTAB Management Play in PTAB Decisions? 37
Interim Director Review Process 37
Concerns Regarding Transparency and APJ Independence 39
Who Has Standing to Petition PTAB and Appeal Its Decisions? 41
What Should Be PTAB's Standards for Invalidation and Claim Construction? 42
Invalidity: Preponderance of Evidence or Clear and Convincing Evidence? 42
Claim Construction: Should USPTO or Congress Decide the Right Standard? 43
When Should PTAB Deny Institution of an IPR? 44
Petitions Raising Previously Presented Prior Art and Arguments 44
Serial Petitions 46
Parallel Petitions 47
Parallel District Court Litigation 48
Patent Claims Already Upheld by a District Court 51
Conclusion 52
Author Information 52
Disclaimer 52
Table 1. USPTO Post-Grant Proceedings 27
Figure 1. IPR and PGR Outcomes by Petition in FY2023 22