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PTAB Trial Proceedings Will Outpace Copending Litigation

Posted By Scott A. McKeown On 28 January 2013 @ 7:24 In Business Method Patent Challenge, Inter Partes Review, Patent Trial & Appeal Board, Post-Grant Review | Comments Disabled

PTAB SPEED [1]First IPRs Advancing at Light Speed

The PTAB has now issued several decisions [2] instituting trials. The initial decisions suggest that post-grant practitioners may in many instances receive a final written decision in about a year from petition filing (rather than about 18 months as initially projected [3]) and that the PTAB decisions instituting trials will provide useful findings regarding claim construction roughly 4-5 months from the time of petition filing.

For instance, the PTAB granted the IPR petition filed by Garmin in early January and has the oral hearing set for August 16th.  That should yield a final written decision in 12-13 months from the filing date of the petition. In that case the patent owner waived its right to file a preliminary response but waited almost the full three months before it did so. If the patent owner had promptly filed a waiver of the preliminary response that would have sped up the entire process by about three months.

This suggests that the PTAB intends to remain true to its stated intention of moving these patentability trials along at a brisk pace (even faster than that required by the controlling statute, 12-18 months from institution). The PTAB is well aware that it is intended by Congress to provide an efficient and relatively quick alternative to litigation and, consistent with that directive, the PTAB is outpacing the statutory 18 month timeline (link to earlier post) by a substantial margin.

Just as significantly, the decision instituting trial (here [4]) included a detailed analysis and interpretation of the claims. In the decision to institute, the PTAB interpreted the claims in a manner that may refute a broader stance being advocated by the Patentee in a co-pending litigation. That denial may aid the petitioner in presenting their claim construction positions in the upcoming Markman hearing, especially given that the PTAB was giving the terms their broadest reasonable interpretation.

The Garmin case provides cause for optimism that the PTAB in fact will prove to be both a speedy and an effective forum. In upcoming post-grant proceedings we hope to see similar schedules and thorough decisions which provide the parties substantial guidance on the Patent Office’s view concerning the broadest reasonable claim interpretation.

This would substantially simplify litigation by causing patent owners to abandon unduly broad claim constructions and promptly providing district courts with a final written decision concerning validity. The former will drive many early settlements. The latter will enable district court litigants to focus discovery on the issues which survive post-grant trial scrutiny. Especially where the district court stays litigation pending the PTAB proceeding, this will go a long way toward ensuring that district court and ITC litigation is confined to those issues which require extensive discovery or trial.


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[1] Image: http://www.patentspostgrant.com/wp-content/uploads/2013/01/PTAB-SPEED.jpg

[2] several decisions: http://www.patentspostgrant.com/lang/en/2013/01/first-aia-patentability-trial-ordered

[3] initially projected: http://www.patentspostgrant.com/lang/en/2011/10/how-long-will-inter-partes-review-really-take

[4] here: http://www.patentspostgrant.com/wp-content/uploads/2013/01/notice-15.pdf

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