Although most of the provisions of the House of Representatives’ recent anti-patent troll bill (Innovation Act of 2013, October 23, 2013) are directed to discouraging patent trolls from filing Federal district court infringement actions, there are a few provisions that potentially affect inter partes review (IPR) and post grant review (PGR). These include:
• Clarifying a broad definition of “used in the practice, administration, or management of a financial product or service” for the PGR transitional program for Covered Business Methods (CBM).
• Expanding the type of prior art that can be relied upon in the transitional CBM PGR program to include 102(e) secret prior art and 102(d) prior patent prior art.
• Eliminating the 8-year sunset provision for the transitional CBM PGR program.
• Removing “reasonably could have been raised” from the estoppel provisions.
• Providing that the claim scope in IPR and PGR would be the Philips v. AWH (Fed. Cir. 2005) (en banc) standard used in district court litigation, rather than the Broadest Reasonable Interpretation (BRI) standard that the USPTO currently uses in IPR and PGR proceedings.
The first four provisions identified above are certainly favorable to a defendant seeking to invalidate a troll’s patent using IPR or PGR.
On the other hand, the use of the Philips standard, as opposed to the BRI standard, for claim construction clearly disadvantages the petitioner in an IPR and PGR. The BRI standard currently used in USPTO proceedings makes it more likely for a petitioner to show unpatentability at the USPTO than to show invalidity in a district court. This claim scope provision, if passed by Congress, would undoubtedly take some of the teeth out of IPR and PGR filings.
John M. Bird is a partner in the Washington, DC Office of Sughrue Mion PLLC. His focus is on the protection and enforcement of designs and a wide range of electrical and mechanical technologies, including analytical/measurement systems, medical devices, HVAC systems, printers/copiers, telecommunications systems, data recording mediums, semiconductor fabrication, bearings, welding processes, sports equipment, footwear, and various automobile components, such as tires, transmissions, engines, fuel-injection systems, motors, lamps, steering systems, connectors/wiring, valves, and control/monitoring systems.
See his full biography here.