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America Invents Act Post-Grant Oppositions After Two Years

September 23, 2014

Stuart Meyer, Fenwick & West patent partner, was featured in a Bloomberg BNA Patent, Trademark & Copyright Journal article assessing the Patent Trial and Appeal Board’s (PTAB) handling of post-grant opposition proceedings two years after it was enabled by the America Invents Act.

In regards to the filing of petitions, ‘‘The most important takeaway from the first two years of PTAB proceedings is that these actions are extraordinarily front-loaded,” Meyer said. “It is quite difficult, if not impossible, to bring up new factual issues or propound newly thought-up legal arguments late in the proceedings.”

That holds true for oral arguments as well, Meyer asserted, because the proceedings not only ‘‘preclude new arguments, but even preclude presenting prior arguments in markedly different ways than they were previously presented.’’ He added that ‘‘this is being enforced much more strictly than is typical in court trial practice.’’

While the timing and coordination of filing petitions remains tricky, a no less important question is how many petitions to file against the same patent. Meyer advised against filing more than one petition with multiple grounds alleging unpatentability, because the PTAB tends to focus on one argument and declare the rest redundant. ‘‘Including more than two grounds presents risks that the Patent and Trademark Office will cull the grounds for you,” Meyer said.

For a patent owner in a PTAB trial, discovery remains the biggest hurdle to overcome. ‘‘The PTAB has been true to the notion that as a streamlined alternative to litigation, these proceedings will entertain only very limited, highly focused discovery,” said Meyer, adding ‘‘Virtually every attempt to bend the rules in order to enjoy discovery freedoms similar to those available under the Federal Rules of Civil Procedure has failed.’’

The full article, analyzing the full petition process, is available through the Bloomberg BNA Patent, Trademark & Copyright Journal (subscription required).