House Committee Approves Innovation Act With Changes to AIA Post-Grant Proceedings

On the heels of the Senate Judiciary Committee approving the PATENT Act, the House Judiciary Committee approved its own patent reform bill, known as the Innovation Act, on June 11, 2015. Several provisions in the Innovation Act impact AIA post-grant proceedings.

The Innovation Act includes several of the same changes regarding post-grant proceedings as the PATENT Act. For example, the Innovation Act changes the claim construction standard in AIA proceedings from the “broadest reasonable interpretation” standard to the Phillips standard used in district courts, and requires the USPTO to consider any prior district court constructions. The Act also allows the patent owner to submit new testimonial evidence with its preliminary response and allows the petitioner to file a reply to new issues raised in the preliminary response.

In IPRs and PGRs that result in a final written decision, the AIA estops petitioners from asserting grounds that the petitioner “raised or reasonably could have raised” during the proceeding in a later district court or ITC proceeding. The Innovation Act limits the estoppel in PGRs to the grounds petitioner “raised” in the PGR proceeding. The “raised or reasonably could have raised” estoppel would continue to apply in IPRs.

The Innovation Act also requires the petitioner to certify that (1) it does not own and will not acquire a financial instrument designed to hedge a drop in stock value as a result of the petition; and (2) it has not demanded a payment from the patent owner in exchange for a commitment not to file the petition, unless the petitioner has been sued for or charged with infringement of the patent.

Next, the Innovation Act sets forth certain PTAB institution decisions as precedential. In these decisions, the USPTO denied institution of IPRs under 35 U.S.C. § 325(d) based on the petition raising substantially the same prior art or arguments previously presented to the USPTO.

The AIA limits the scope of prior art in CBM review proceedings to § 102(a) art, which includes patents and printed publications that issued or published before the invention. The Innovation Act expands the scope of prior art to include § 102(e) prior art, which includes certain patents and application publications that issued or published after, but have an effective filing date before, the invention.

Lastly, the Innovation Act permits the USPTO to waive payment of the filing fee for CBM review proceedings.