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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Different Thresholds for New Post Grant Proceedings

Posted On: Apr. 9, 2012   By: Scott A. McKeown

post grant standardsPost Grant Review Has a Higher Threshold Than Inter Partes Review

The threshold necessary for initiating an Inter Partes Review (IPR) is prescribed by statute as a reasonable likelihood that a petitioner will prevail (RLP) with respect to at least one challenged claim. On the other hand, the threshold necessary to trigger a Post Grant Review (PGR) is prescribed by statute as more likely than not that a challenged claim is unpatentable. Absent review of the legislative history, it is far from straightforward as to the difference in these standards. Fortunately, the PTO has issued an explanation clarifying the difference.On the AIA micro-site, Chief Judge Smith explained the difference as follows:

Comparing the two standards, the “reasonable likelihood” standard is lower than the “more likely than not” standard.  The reasonable likelihood standard allows for the exercise of discretion but encompasses a 50/50 chance whereas the “more likely than not” standard requires greater than a 50% chance of prevailing.

Petitioners are encouraged to clearly set forth the best ground of unpatentability as to each challenged claims to facilitate early resolution of the issues.  In instituting an IPR or PGR, the Board may take into account whether the same or substantially same prior art or arguments previously were presented to the Office.  35 U.S.C. 315(d) and 325(d).  Additionally, the Board may also go forward on challenged claims that are unpatentable based on obviousness where challenge is based on anticipation.

I am not sure there is a significant enough difference between the two standards to make much of  an impact between grant rates. Yet, with the broader estoppel effect and more liberal discovery practice in PGR, the higher threshold standard provides yet another reason to avoid this proceeding in favor of IPR, given the option.

2 Responses to “Different Thresholds for New Post Grant Proceedings”

  1. Scott: There is a big procedural difference between the threshold standards for IPR and PGR. The PGR standard creates a civil presumption that imposes an evidentiary obligation on the patent owner under FRE 301, while the IPR standard does not.

    Paraphrasing §324(a), the Director must consider the invalidity allegations and evidence submitted with the petition to determine whether such information, if “not rebutted, would demonstrate that it is more likely than not” that a claim or claims is unpatentable. Two things stand out from this standard. First, the phrase “more likely than not” is a traditional plain language formulation of the preponderance of evidence standard when it is given in a jury instruction. Second, the phrase “if not rebutted” implies that the challenged claim is presumed to be invalid based upon the evidence in the petition.

    This presumption creates a shift in the order and sufficiency of evidence during the PGR trial. Whether the PTAB specifically invokes FRE 301, or simply applies the “if not rebutted” language of §324(a), for each claim in which the Director has made a determination to institute PGR, the evidentiary burden lies with the patent owner to come forward with evidence sufficient to rebut the presumption of invalidity.

    Also note how nicely this standard dovetails with the estoppel rules. If the petitioner alleges invalidity of multiple claims, and the Director determines that the petition has only met the threshold as to a few of the claims, no estoppel attaches to the claims that were in the petition but not accepted for the trial. Consequently, the petitioner has no estoppel concern except as to claims in which he has submitted sufficient evidence to create a presumption of invalidity. This is compelled by the language of §325(e) and supported by the proposed regulations [Sec. 42.71(c)(1)].

  2. Thanks John, good points.

    The current prima facie showing required of the Office is much the same in this regard. I’m just not sure that the differing standards between IPR and PGR will have much impact in practice.