Since the signing of the America Invents Act (AIA) in 2011, the most surprising aspect has been the overwhelming use of the Patent Trial and Appeal Board (PTAB). InsideCounsel interviewed Finnegan attorney Kathleen A. Daley to discuss which industries benefit from the PTAB, emerging industries that may be using the PTAB, the PTAB’s impact on future patent reform, and why the PTAB’s decisions have been in favor of patent challengers.
Daley believes that although all industries can benefit from PTAB proceedings, the electrical and computer technology industries have particularly benefited the most from post-grant proceedings at the PTAB. She says, “Given that a large percentage of district court litigation involves the electrical and computer technologies, it stands to reason that more companies in those areas have sought out the PTAB to decide patent validity.” Daley also notes that the companies that hold the majority of patents are in the electrical and computer industries and the defendants in those cases are advocates for a cheaper option to litigation. However, recently biotechnology and pharmaceutical companies have also been using post-grant proceedings.
According to Daley, the PTAB will have a significant impact on patent reform in the future. There is currently a patent reform bill that includes a change to the standard that the PTAB uses to construe claims. Daley says, “This bill would make the PTAB construe claims in post-grant proceeding using the same standard as in district court and would require the PTAB to consider any claim construction that a district court has already made. This would be amount to a rejection of the claim construction standard that the Federal Circuit announced for post-grant proceedings in its decision in In re Cuozzo.” Additionally, many believe that the current standard that the Patent and Trademark Office has in place for amending claims in inter partes review proceedings is too strict. As a result, Congress has been asked to step in which will hopefully lead to improvements in the process.
InsideCounsel also asked Daley why the PTAB’s decisions have been in favor of patent challengers. Daley believes the early success of patent challengers was due to the fact that weaker patents were being challenged, but patent owners are beginning to have more success before the PTAB.
