After eight weeks of shifts in governmental policies, the patent bar is feeling repercussions from all directions. One critical area in flux is the post-grant challenge arena.
With a reduced PTAB head count and a steady flow of PTAB challenges, it appears the PTAB is controlling their docket flow and ability to meet statutory deadlines by controlling the timing of PTAB paralegal processing of new petition filings and issuance of notice of filing dates. Another lever the PTAB appears to be using for similar purposes is to set up filters for meeting procedural and substantive requirements to obtain PTAB institution. For example, the PTAB has issued revised discretionary denial and bifurcated institution phase memos providing new procedures for discretionary denial and merits review. And potentially there will be more to come.
As statistics have shown in prior articles, as PTAB post-grant proceedings institution rates fall, ex parte reexaminations rates rise. For example, our previous articles have shown the bounce-back from the bottoming out of reexamination filings in 2017 to the now nearly 2010 filing rates in 2024.
Challenger Side
Hypothetically, if the PTAB raises the bar for institution, resulting in a continued increase in denials, challengers may need to plan for a two-phased approach to obtain their desired goals of (1) stay of litigation and (2) invalidation of core patent claims. PTAB proceedings continue to provide challengers the best vehicle to allow a two-party invalidity challenge at the USPTO. However, challengers may have to be prepared to wait longer—potentially 7 to 9 months—just to receive an institution decision. In the event of a denial, it will be important to have a backup plan in place, such as promptly pivoting and filing an ex parte reexamination.
This delay between filing a PTAB petition and a potential grant of the reexamination may be over a year, but starting with the PTAB’s two-party system can still be worthwhile strategic move, despite the risk.
Challengers have to plan a strategy and budget that allows for preparing and filing an optimal PTAB petition and then pivoting to reworking the petition to file a successful reexamination request package, if needed. And challengers should be ready to directly address issues such as 325(d) and a substantial new question of patentability (SNQ) in the reexamination request regardless of a procedural or merit based denial at the Board.
Patent Owner Side
At the same time, patent owners are being asked to expend double the money and time to defend themselves at the Office, starting at the PTAB and then to have to defend sometimes the same positions at the CRU. Even worse for some patent owners, the CRU defense may be a third defense after winning the same arguments at the PTAB and ITC/district court.
Statistics demonstrate leaving the CRU with a clean slate on claims is much more difficult than at the PTAB. So patent owners need to better understand what a win looks like at the CRU. For example, to avoid amendments, patent owners will need to prepare a carefully crafted Office action reply. The reply should be as comprehensive as arguments they may present in an eventual brief to the Board and should include support from an expert declaration. Additionally, to avoid amendments, patent owners may need to hold an Interview focused on their expert leading the technical arguments with the Examiners.
At the same time, a patent owner needs to determine whether it might be in their best interest to strengthen their claims and patent by strategically amending claims or adding new claims. Yes, potential damages might be impacted due to intervening rights, but a patent with a long life left on its term might come out stronger and be better positioned for future enforcement.
In the end, on either side of the “v,” the substantial difference in law and procedure at the CRU versus the PTAB requires having a skilled PTAB and reexamination team on their critical path to success as we enter this new era of USPTO post-grant invalidity challenges.
