IPR/PGR Proceedings: Litigation or Prosecution?

IPR/PGR proceedings share many similarities with other trial proceedings, such as district court proceedings. Like other traditional trial proceedings, a challenger in an IPR/PGR proceeding is required to bear the burden of showing unpatentability. See 35 U.S.C. §§ 316(e) and 326(e).  Also, petitioners and patent owners in an IPR/PGR proceeding are afforded many trial-like procedural mechanisms including opportunities for limited document discovery, protective orders, motion practice, and direct examination (via declaration) and cross examination (via deposition of declarants), with the same Federal Rules of Evidence applicable in district court litigation. See 37 C.F.R. §§ 42.51 (discovery), 42.54 (protective orders), 42.20-25 (motions practice), 42.53 (taking testimony), and 42.62 (applicability of the Federal Rules of Evidence).

Unlike in typical patent litigation proceedings, however, patent owners involved in an IPR/PGR proceeding are permitted to amend the challenged claims. See 35 U.S.C. §§ 316(a)(9) and 326(a)(9); 37 C.F.R. §§ 42.121 and 42.221. Indeed, the USPTO recognizes that, like in other matters before the USPTO, “it is expected that amendments to a patent will be sought.”  77 Fed. Reg. 48618 (August 14, 2012). The Federal Circuit has explicitly stated that strategically amending or surrendering claim scope are the types of patent prosecution activities that involve competitive decision making that would necessitate a patent prosecution bar. See In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1380 (Fed. Cir. 2010).

Despite the quasi-litigation and prosecution aspects of IPR/PGR proceedings, and consistent with Congress, the Board considers an IPR to be a “trial, adjudicatory in nature and constituting litigation.” ScentAir Technologies, Inc. v. Prolitec., Inc., IPR2013-00179 (JL), Paper 9 (April 16, 2013); 157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl). Based on the Board’s view in ScentAir, statutory provisions, the legislative history of the AIA, and comments by the USPTO, it is likely that the new AIA post-issuance challenges will be considered outside the scope of typical prosecution bar provisions found in district court protective orders. To avoid any confusion, parties in patent infringement litigations that anticipate AIA post-issuance challenges should consider introducing protective orders with prosecution bar provisions that not only bar litigation counsel’s participation in prosecution and reexamination activities, but also expressly bar participation in any IPR/PGR proceeding involving the patent(s)-at-issue in the litigation.