A Free Bite at the Apple: How Flawed Statutory Drafting Has Undermined the Purpose of the Patent Trial and Appeal Board

By Gentilli, Rebecca | Duke Law Journal, April 2018 | Go to article overview

A Free Bite at the Apple: How Flawed Statutory Drafting Has Undermined the Purpose of the Patent Trial and Appeal Board


Gentilli, Rebecca, Duke Law Journal


ABSTRACT

In the years before Congress passed the America Invents Act, patent litigation became exorbitantly expensive. Congress created three types of proceedings before the Patent Trial and Appeal Board (PTAB), which were intended to provide a cheaper and more cost-effective alternative to district court litigation over patent validity. A major factor in ensuring that the PTAB proceedings effectively substituted for district court litigation was a harsh estoppel provision that prevented any petitioner from relitigating any issue which was raised or reasonably could have been raised during the PTAB proceeding. The Federal Circuit, however, recently applied a narrow interpretation to the estoppel provision which jeopardizes the ability of PTAB proceedings to replace district court litigation.

While it would be easy to place all the blame on the Federal Circuit for defanging the estoppel provision, this Note argues that the failure of PTAB proceedings to substitute for district court litigation ultimately stems from poor drafting within the America Invents Act. The combination of broad Patent and Trademark Office (PTO) substantive rulemaking power, unreviewable PTAB decisions to institute, and a sweeping estoppel provision doomed PTAB proceedings to failure. This Note offers that Congress must update the language of the statute itself in order to effectively address the issues-presented by this combination.

INTRODUCTION

Addressing a conference of intellectual property attorneys, Chief Judge Rader of the Federal Circuit called the PTAB a "death squad" for patents that "kill[s] property rights." (1) At the time he made this statement, the label--ominous as it was--had some measure of truth to it. (2) Judge Rader was referring to the common critique that once the PTAB chooses to "institute," (3) or initiate, review on the validity of a patent, (4) petitioners typically succeeded in invalidating at least one "claim," or component, of that patent. (5) By and large, however, labels of the PTAB being a "death squad" were unwarranted (6) and the administrative proceedings before the PTAB were effectively serving their purpose (7) as a cheaper alternative to district court litigation. (8) That was so until recent developments in patent law that have rendered the label "death squad" uncannily accurate, albeit not for the reasons cited by Judge Rader.

Before the PTAB existed, patent litigation was immensely expensive. (9) Congress enacted the America Invents Act (10) to provide some reprieve from these large and rising costs. The America Invents Act created the PTAB and proceedings before it, which are intended to serve as a faster and more cost-effective substitute for district court litigation. (11) Instead of spending years and millions of dollars litigating the validity of a patent in a patent infringement suit, post-America Invents Act, would-be patent infringers can file a petition to challenge the validity of that patent before the PTAB. (12) These proceedings not only enable the petitioner to save money, but also guarantee the petitioner will receive a decision within a year. (13) Petitioners that choose this route, however, must also contend with an estoppel provision limiting what challenges they can raise in subsequent district court litigation. For example, if petitioners bring an inter partes review (IPR) proceeding (14)--the most common proceeding before the PTAB, (15) allowing petitioners to challenge the validity of a patent for novelty and nonobviousness (16)--they cannot later challenge the validity of that patent on "any ground that the petitioner raised or reasonably could have raised during that inter partes review." (17) Petitioners who seek out the advantages of IPR proceedings are thus bound by those decisions, and cannot later relitigate novelty and nonobviousness at the district court level. (18)

This estoppel provision may seem harsh on its face. As this Note will argue, this harshness is necessary to ensure that IPR proceedings before the PTAB are a complete substitute for district court litigation on novelty and nonobviousness grounds. …

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