Post-Grant Review at the PTAB: What Petitioners and Patent Owners are Doing and What Lies Ahead? (Live MBHB Webinar)

Tues., March 14, 2017 | 10:00-11:15 a.m. CT | Live MBHB Webinar via WebEx

In September 2012, the Leahy-Smith America Invents Act (“AIA”) introduced several new post-issuance procedures for challenging the validity of a granted patent at the U.S. Patent and Trademark Office. Inter partes review (“IPR”) and Covered Business Method patent review (“CBM”) were immediately available, and their utilization since that time has exceeded expectations. It is not an exaggeration to say that these proceeding have changed the landscape of patent litigation. A third mechanism, post-grant review (“PGR”), was also made available at that time, but because PGR petitions can only be filed for patents that were examined under the new First-Inventor-to-File scheme established by the AIA, it has not yet been significantly utilized.

That is beginning to change, somewhat. The first PGR petition, LaRose Industries, LLC v. Choon’s Design Inc., was filed on August 5, 2014, but was terminated shortly thereafter before any institution decision. Since that time, there have been fewer than 50 PGR petitions filed. In fact, one of the first final written decisions for a PGR proceeding occurred as recently as November 14, 2016. In this case, Altaire Pharmacueticals, Inc. v. Paragon BioTeck, Inc., the PTAB determined that the petitioner had not met its burden of proving unpatentability of the challenged claims. It is possible that the slow adoption of PGRs can be attributed solely to the limited number of patents available thus far, but it is also possible that potential petitioners are gun-shy due to limited discovery available in PGR proceedings to assist with proving, for example, dates and accessibility of prior art that is not a patent or published application, and the estoppel provisions that are perceived as draconian. But decisions from the Federal judiciary related to IPRs and CBMs may signal that these estoppel provisions will not be as severe as originally feared.

Join us as we discuss the following topics:

  • An overview of PGR-proceeding mechanics, and how they differ from IPRs

  • A review of the PGR petitions filed to date, identifying any potential trends

  • An analysis of strategies used by PGR petitioners, and used by patent owners seeking to avoid institution, including how petitioners and patent owners are addressing asserted prior art that is not a patent or published application

  • A discussion of how we think the PGR estoppel provision might be applied from a review of Federal Circuit and district court cases applying the comparable provision for IPR proceedings


Presenter(s): MBHB partners Dr. Andrew Williams, Ph.D. and James L. Lovsin


Access an archived audio version of this webinar here.


NOTE: MCLE credit is not available for this archived recording.

McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.