America Invents Act (AIA) trials are proceedings challenging patents at the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (Office). Since AIA trials became effective on September 16, 2012, more than 14,000 AIA trials have been filed, and for those reaching a final written decision, the number of adverse decisions to a patent owner (PO) vastly exceeds the number of favorable decisions. 1 A PO can take steps during prosecution and after grant to make patents more resistant to AIA trials.

Background on AIA trials

Inter partes reviews (IPRs) and post-grant reviews (PGRs) are the types of AIA trials currently available. PGRs can be filed within nine months of grant to challenge patents having an earliest effective filing date of March 15, 2012. A PGR can be used to challenge a patent for being unpatentable over prior lack of patentable subject matter and failure to comply with 35 U.S.C. § 112 except for best mode. IPRs can be filed to challenge any patent on prior art grounds at any time except for the nine-month window for patents challengeable by PGRs. The key requirements for IPRs and PGRs 2 are summarized below left.

 

IPR

PGR

Ground(s)3 3 Anticipation/obviousness over prior art patents and printed publications. Anticipation/obviousness over prior art patents and printed publications.

Patentable subject matter; failure to comply with 35 U.S.C. § 112 (e.g., lack of enablement, lack of written description, and indefiniteness) except for lack of best mode.
Institution threshold 4 Reasonable likelihood that the petitioner one would prevail with respect to at least one challenged claim. More likely than not that at least challenged claim is unpatentable.
Petition word count 5 14,000 18,700
Fees due at time of filing (up to 20 claims) 6 Request fee (RF): $19,000

Post-institution fee (PIF): $22,500*


RF: $20,000

PIF: $27,500*
Excess claim fees RF: $375 for each claim over 20

PIF: $750 for each claim over 20*
RF: $475 for each claim over 20

PIF: $1,050 for each claim over 20*
*Fee refundable if not instituted

The filing of a petition specifying the grounds of unpatentability initiates an AIA trial. An AIA trial is instituted if the PTAB determines that one of the petitioned grounds meets the relevant threshold; all grounds raised are assessed in an instituted AIA trial. For an instituted AIA trial, 7 the PTAB will issue a final written decision unless it is terminated by settlement or request for adverse judgment. A final written decision indicating that a claim is unpatentable results in the Office issuing a certificate canceling that claim.

When an AIA trial reaches a final written decision, the petitioner is estopped from asserting any ground of unpatentability that was "raised or reasonably could have [been] raised" during the AIA trial in another AIA trail, a civil action, or an International Trade Commission proceeding. 8 Thus, from a PO's perspective, the best AIA trial outcome would be (1) denial of institution or (2) a final written decision finding all claims patentable and attachment of estoppel.

Claim strategies to make patents more resistant to a challenge and increase likelihood of AIA trial survival

An AIA trial is limited to the grounds of unpatentability raised in the petition. AIA trial petitions have a strict word count limit. The fees are tied to the number of challenged claims, with excess fees due when more than 20 claims are challenged. Accordingly, an AIA trial petitioner has to carefully choose which claims to challenge and economize the words used for each ground of challenge. While multiple petitions can be filed concurrently, doing so increases costs significantly.

The basic U.S. patent application filing fee includes 20 claims, three of which can be independent. Additional dependent claims can be added for $100/claim; additional independent claims can be added for $480/claim.9 Each claim above 20 challenged in an IPR petition and a PGR petition costs $1,025 and $1,525, respectively, of which $750 and $1,050, respectively, are refundable if institution is denied.

Thus, to make a patent more AIA trial resistant and/or to increase the likelihood of surviving an AIA trial, during prosecution the number of claims should be maximized. At the very minimum, a patent should contain 20 claims. It is far too common for new U.S. patent applications to contain only 15 claims, with even fewer claims

" A PO may want to consider adding dependent claims, as about five additional dependent claims can be added for the price of each new independent claim."

ultimately granting. Depending on a patent's commercial value, including additional claims beyond 20 is advisable. The more claims a patent contains, the fewer words an AIA trial petitioner has to challenge each claim, the more difficult it is to challenge all claims and the more an AIA trial will cost.

When introducing additional claims, a PO should consider introducing claims of varying claim scope around the heart of the invention to avoid having all claims be susceptible to the same grounds of attack. A PO may also want to consider including additional claim categories, such as means-plus-function claims. During prosecution, patent examiners are often amenable to adding claims after allowance. Since AIA trials do not differentiate between independent and dependent claims, a PO may want to consider adding dependent claims, as about five additional dependent claims can be added for the price of each new independent claim. Such claim strategies should help a PO prevent AIA trial institution and may increase the likelihood of a claim surviving AIA trial challenge.

Prosecution and post-grant strategies to make a patent more resistant to challenge

Pursuant to 35 U.S.C. § 325(d), if an AIA trial petition relies on "the same or substantially the same prior art or arguments [that] previously were presented to the Office," the PTAB has the discretionary power to deny institution.10 For the discretion to apply, "the art and arguments must have been previously presented to the Office during proceedings pertaining to the challenged patent" and "the [] Office must have considered and decided that question on the merits."11 If the Office considered the art, institution is warranted when the petitioner "demonstrate[s] that the Office erred in a manner material to the patentability of challenged claims."12 For this assessment, the PTAB considers factors such as:

  1. the similarities and material differences between the asserted art and the prior art involved during examination;
  2. the cumulative nature of the asserted art and the prior art evaluated during examination;
  3. the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;
  4. the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art;
  5. whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and
  6. the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.13

While Section 325(d) does not define what constitutes "same or substantially the same prior art or arguments," according to the PTAB, "[p]reviously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent."14 The PTAB considers "proceeding" to encompass examination of underlying patent applications, reexaminations/ reissues of the patent or other AIA trials.15

Since Section 325(d) is a powerful tool to prevent institution of an AIA trial, during prosecution a robust procedure needs to be implemented to ensure that all relevant art has been (1)

"Taking such steps should reduce the possibility an AIA trial will be instituted based on art that was of record during prosecution."

submitted to the Office and (2) properly considered. For example, merely combining references considered by the examiner differently does not warrant institution of an IPR. Listing a reference in a large IIDS without any indication that it was actually considered may be insufficient to deny institution.17 Such robust procedures should include a consistent procedure for filing an IDS. In addition, where necessary, applicants should consider clarifying the record to ensure that the examiner properly appreciates the relevance of a reference by, for example, interviewing the case or correcting inconsistencies in the record in an Office Action response. Taking such steps should reduce the possibility an AIA trial will be instituted based on art that was of record during prosecution.

Potentially relevant art often becomes available after the grant of a U.S .patent by, for example, being cited during the prosecution in a related non-U.S. patent application. Such art provides an attractive basis for an AIA trial challenge, as U.S. claims and claims in other jurisdictions are often similar. A PO can still immunize a granted patent against such art by having the Office consider the art in supplemental examination (SE).

A request for SE, which is akin to an IDS, can be filed at any time after grant of a patent to have the Office consider up to 12 pieces of information believed to be relevant, per request.18 From requesting SE (including the fees for supplemental examination ($4,620) and ex parte reexamination ($12,700), in total $17,320), the Office has three months to conduct SE and issue a certificate indicating whether the information raises a substantial new question of patentability (SNQ).19 If there is no SNQ, SE is complete and the ex parte reexamination fee ($12,700) is refunded.20 If there is an SNQ, ex parte reexamination is ordered.

The SNQ threshold for SE is much lower than the threshold for AIA trials. Accordingly, a SE certificate indicating that there is no SNQ makes it highly unlikely that the information considered during SE will be sufficient basis for an AIA trial. A PO can rely on SE to have the Office consider art post-grant without reopening prosecution and thus decrease the likelihood that an AIA trial relying on this art is instituted. Of course, the risk with SE is that ex parte reexamination is ordered.

In more extreme cases, a PO can also consider the more traditional routes for reopening prosecution after grant by filing a reissue application or requesting ex parte reexamination. However, these traditional routes should be considered only if there is art raising a serious question of patentability.

Conclusion

To make a patent more resistant to challenge in AIA trials, patentees should maximize the number of claims. Patentees should also take appropriate steps to ensure that art is properly considered during prosecution because doing so increases the likelihood that an AIA trial relying on such art is not instituted. Post-grant, patentees can have the Office consider information in SE. In certain scenarios, it may be

"The SNQ threshold for SE is much lower than the threshold for AIA trials. "

more preferable to reopen prosecution than risk an AIA trial.

Footnotes

1 As of March 13, according to Docket Navigator,

14,169 AIA trials were filed, of which 3,739 resulted in a finding of unpatentable/canceled; only 1,425 resulted in a finding of not unpatentable.

2 35 U.S.C. § 311.

3 35 U.S.C. § 311(b); 35 U.S.C. § 321(b).

4 35 U.S.C. § 314(a); 35 U.S.C. § 324(a).

5 37 C.F.R. § 42.42(a).

6 37 C.F.R. §§ 42.15(a), (b).

7 SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).

8 35 U.S.C. § 315(e) (estoppel in IPR); 35 U.S.C. § 315(e); accord California Inst. of Tech. v. Broadcom Ltd. 25 F.4th 976 (Fed. Cir. 2022).

9 37 C.F.R. §§ 1.16(h), (i) (large entity rate).

10 35 U.S.C. § 325(d).

11 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential);In re Vivint, Inc., 14 F.4th 1342, 1349 (Fed. Cir. 2021).

12 Advanced Bionics, Paper 6 at 8.

13 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 6 at 16-17 (PTAB Dec. 15, 2017) (precedential in relevant part).

14 Advanced Bionics, Paper 6 at 7-8.

15 Id. at 8.

16 Becton, Paper 6 at 27.

17 Adello Biologics LLC v. Amgen, Inc., PGR2019-00001, Paper 13 at 11 (PTAB Apr. 19, 2019).

18 35 U.S.C. § 257(a); 37 C.F.R. § 1.605(a).

19 35 U.S.C. § 257(a); 37 C.F.R. § 1.610.

20 37 C.F.R. § 1.625.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.