Jonathan Stroud

The America Invents Act of 2011 created three powerful patent review regimes: transitional covered business method post-grant reviews (CBMs), popular inter partes reviews (IPRs), and nascent post-grant reviews (PGRs). Few parties have filed PGRs to date, as only a small percentage of new patents are currently eligible for the procedure. As more patents become eligible, PGRs are set to create a system of review where the Patent Office grants patents that are then immediately available for… Show more

The America Invents Act of 2011 created three powerful patent review regimes: transitional covered business method post-grant reviews (CBMs), popular inter partes reviews (IPRs), and nascent post-grant reviews (PGRs). Few parties have filed PGRs to date, as only a small percentage of new patents are currently eligible for the procedure. As more patents become eligible, PGRs are set to create a system of review where the Patent Office grants patents that are then immediately available for adversarial review—a system that holds the promise of PGR popularity and widespread usage akin to IPRs.

We analyze PGR’s nuances, the key differences between the procedure and IPRs, and conclude that PGRs will disproportionately affect software and business method patent-seekers. Our analysis suggests that, contrary to prior worries related to estoppel, the ability to review claims under Section 101 and 112 efficiently and expertly is what sets PGR apart from other patent review trial regimes. Evaluating claims under Section 101, we discuss the American Bar Association’s Post-Alice Task Force’s two-year study—conducted by over eighty volunteers analyzing district court suits and office actions—on the impact of the Supreme Court’s Alice Corp. v. CLS Bank decision. We conclude that the high cost of filing PGRs set by the Office is not consonant with the economics of preemptory challenges immediately post-grant, discouraging use and frustrating Congress’ goals for the program. We suggest solutions.
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Federal Article III judges may stay civil litigation. Stays are most appropriate where another court or body may resolve a part of or the entire dispute. Some statutes guide the courts on when to stay; some case law and appellate precedent guide judges on when a stay is sought. But the interlocutory nature of such decisions makes precedential decisions scarce. The Patent Trial and Appeal Board (PTAB), an administrative body tasked with patent post-grant review, efficiently reviews patentability… Show more

Federal Article III judges may stay civil litigation. Stays are most appropriate where another court or body may resolve a part of or the entire dispute. Some statutes guide the courts on when to stay; some case law and appellate precedent guide judges on when a stay is sought. But the interlocutory nature of such decisions makes precedential decisions scarce. The Patent Trial and Appeal Board (PTAB), an administrative body tasked with patent post-grant review, efficiently reviews patentability of and can estopp later validity determinations. Stays in light of these proceedings are particularly favored. While it will be some time before a body of precedent develops surrounding these stays, one appellate judge from the patent-focused United States Court of Appeals for the Federal Circuit, sitting by designation, issued a district court decision in a contentious district exhaustively compiling district court stay cases and offering a guide for judges determining whether to stay. I analyze that decision. Show less

Tasked in 2011 with creating three powerful new patent review trial regimes, the U.S. Patent and Trademark Office—through the efforts of their freshly empowered quasi-judicial body, the Patent Trial and Appeal Board—set to creating a fast-paced trial with minimal discovery and maximum efficiency. In the first two years of existence, the proceedings have proved potent, holding unpatentable many of the claims that reach decisions on the merits. Yet a small subsection of petitions never make it… Show more

Tasked in 2011 with creating three powerful new patent review trial regimes, the U.S. Patent and Trademark Office—through the efforts of their freshly empowered quasi-judicial body, the Patent Trial and Appeal Board—set to creating a fast-paced trial with minimal discovery and maximum efficiency. In the first two years of existence, the proceedings have proved potent, holding unpatentable many of the claims that reach decisions on the merits. Yet a small subsection of petitions never make it past the starting gate, resulting in wasted time and effort on the parts of petitioners—and likely sighs of relief from the rights-holders. Parties on both sides of a petition can learn volumes by looking to the first 100 denials of institution. In a regime where so many petitions have been granted, knowing the ones that haven’t could be the key to success. Show less

U.S. Patent and Trademark Office, pursuant to statute, has created new, fast-paced patent review procedures tasked with reviewing patents speedily, justly, and efficiently. In their first two years, parties have flocked to the proceedings, with over 2,000 petitions filed. Yet parties, practitioners, rights-holders, and litigants may not realize that these trials may also challenge design patents. Indeed, a handful of design patents have been challenged, resulting in one notable case in the… Show more

U.S. Patent and Trademark Office, pursuant to statute, has created new, fast-paced patent review procedures tasked with reviewing patents speedily, justly, and efficiently. In their first two years, parties have flocked to the proceedings, with over 2,000 petitions filed. Yet parties, practitioners, rights-holders, and litigants may not realize that these trials may also challenge design patents. Indeed, a handful of design patents have been challenged, resulting in one notable case in the design being held unpatentable. With different operative law, design patents present unique challenges in inter partes (IPR) and post-grant review (PGR). We analyze the handful of design patents, attempting to shed light on how the PTAB will implement this variation on a theme. Show less

The system grows complex, and small patent-seeking entities suffer. The Leahy–Smith America Invents Act changed everything—notably by ushering in a number of new post-grant review procedures, thus increasing the complexity of an already-complex system of patenting. Instituted on Sept. 16, 2012, post-grant review procedures have left small entities behind. Analysis of Inter Partes Review (IPR) filings shows that small entities are already grossly underrepresented. This trend is likely to… Show more

The system grows complex, and small patent-seeking entities suffer. The Leahy–Smith America Invents Act changed everything—notably by ushering in a number of new post-grant review procedures, thus increasing the complexity of an already-complex system of patenting. Instituted on Sept. 16, 2012, post-grant review procedures have left small entities behind. Analysis of Inter Partes Review (IPR) filings shows that small entities are already grossly underrepresented. This trend is likely to continue unless the PTO makes a significant commitment to level the playing field.

We suggest means of doing so.

The article details the legislative history and the history of the reexamination regime, examines the relevant pending petitions, and argues that small entities are underrepresented by the new regulations and the early petitions. It provides up-to-date statistics on IPR review and the related stay proceedings in a clear, concise, and easy-to-digest format, and seeks to explain this new, complicated area so practitioners, patentees, and judges can grow familiar with it.
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Summarizing the 2013 patent law decisions of the U.S. Court of Appeals for the Federal Circuit, the authors offer insight into the various legal implications those decisions augur.

Innovator companies sued for infringement over computer-implemented method patents have a new means for quick and relatively low-cost resolution. By utilizing the recently enacted post-grant review procedures at the Patent and Trademark Office created by the America Invents Act, software disputes can be resolved quickly and relatively cheaply compared to the rigors of full trial. While there are no easy answers, post-grant review procedures provide parties with the opportunity to lower costs… Show more

Innovator companies sued for infringement over computer-implemented method patents have a new means for quick and relatively low-cost resolution. By utilizing the recently enacted post-grant review procedures at the Patent and Trademark Office created by the America Invents Act, software disputes can be resolved quickly and relatively cheaply compared to the rigors of full trial. While there are no easy answers, post-grant review procedures provide parties with the opportunity to lower costs while defensively protecting their own often-nascent software innovations from predatory suit. Show less

Is the resurgence of trade secret actions at the U.S. International Trade Commission (ITC) justified?

In the wake of TianRui Group Co. v. ITC (TianRui), savvy companies have sought to use the ITC's unique forum to protect their domestic U.S. market and achieve unique discovery goals. They thus enter international disputes with the bargaining chip of threatened litigation backed up by a powerful remedy and broad jurisdiction. The follow-on investigations of Certain Rubber Resins and… Show more

Is the resurgence of trade secret actions at the U.S. International Trade Commission (ITC) justified?

In the wake of TianRui Group Co. v. ITC (TianRui), savvy companies have sought to use the ITC's unique forum to protect their domestic U.S. market and achieve unique discovery goals. They thus enter international disputes with the bargaining chip of threatened litigation backed up by a powerful remedy and broad jurisdiction. The follow-on investigations of Certain Rubber Resins and Processes for Manufacturing Same, Certain Robotic Toys and Components Thereof, and Certain Paper Shredders, Certain Process for Manufacturing or Related to Same, all demonstrate the value such actions provide. The resurgence is justified. Show less

By formulating the 2010 Biosimilars Act broadly, Congress has given the FDA wide flexibility to regulate. It has mandated the use of guidance documents, a less costly and time-consuming form of regulating than formal or even informal rulemaking. This guidance mandate has the advantage of increased flexibility and a faster turnaround time than traditional notice-and-comment rulemaking. Nevertheless, if the FDA does not use that flexibility judiciously, the Biosimilars Act may not achieve actual… Show more

By formulating the 2010 Biosimilars Act broadly, Congress has given the FDA wide flexibility to regulate. It has mandated the use of guidance documents, a less costly and time-consuming form of regulating than formal or even informal rulemaking. This guidance mandate has the advantage of increased flexibility and a faster turnaround time than traditional notice-and-comment rulemaking. Nevertheless, if the FDA does not use that flexibility judiciously, the Biosimilars Act may not achieve actual reductions in the cost of prescription biological drugs or significantly affect the cost of health care. This article recommends using notice-and-comment procedures to establish product-class-specific guidance, while retaining flexibility within product classes for clinical requirements, and discourages the FDA from using two-sided biostatistical testing.

NOTE: Cited in the N.Y.U. Law Review, The Stanford Technology Law Journal, the Administrative Law Review, and the Marquette Intellectual Property Law Review. Show less

The America Invents Act ushered in a host of new patent reforms meant to reform the way we litigate patents. One often-overlooked addition, Supplemental Examination, was meant to cure charges of inequitable conduct prior to litigation by allowing patent owners to submit prior art, publications, and short statements to enter into the record. Thus far, few parties have used the procedure. We analyze the law of inequitable conduct, the Supplemental Examination procedure, and discuss potential… Show more

The America Invents Act ushered in a host of new patent reforms meant to reform the way we litigate patents. One often-overlooked addition, Supplemental Examination, was meant to cure charges of inequitable conduct prior to litigation by allowing patent owners to submit prior art, publications, and short statements to enter into the record. Thus far, few parties have used the procedure. We analyze the law of inequitable conduct, the Supplemental Examination procedure, and discuss potential reasons and reforms. Show less