Making Patents More Resistant To Challenge In An AIA Trial

• Published date: 24 June 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Ice Miller LLP
• Author: Mr Fabian M. Koenigbauer

America Invents Act (AIA) trials are proceedings challenging patents at the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (Office). Since AIA trials became effective on September 16, 2012, more than 14,000 AIA trials have been filed, and for those reaching a final written decision, the number of adverse decisions to a patent owner (PO) vastly exceeds the number of favorable decisions. ¹ A PO can take steps during prosecution and after grant to make patents more resistant to AIA trials.

Background on AIA trials

Inter partes reviews (IPRs) and post-grant reviews (PGRs) are the types of AIA trials currently available. PGRs can be filed within nine months of grant to challenge patents having an earliest effective filing date of March 15, 2012. A PGR can be used to challenge a patent for being unpatentable over prior lack of patentable subject matter and failure to comply with 35 U.S.C. § 112 except for best mode. IPRs can be filed to challenge any patent on prior art grounds at any time except for the nine-month window for patents challengeable by PGRs. The key requirements for IPRs and PGRs ² are summarized below left.

	IPR	PGR
Ground(s)3 3	Anticipation/obviousness over prior art patents and printed publications.	Anticipation/obviousness over prior art patents and printed publications.; Patentable subject matter; failure to comply with 35 U.S.C. § 112 (e.g., lack of enablement, lack of written description, and indefiniteness) except for lack of best mode.
Institution threshold 4	Reasonable likelihood that the petitioner one would prevail with respect to at least one challenged claim.	More likely than not that at least challenged claim is unpatentable.
Petition word count 5	14,000	18,700
Fees due at time of filing (up to 20 claims) 6	Request fee (RF): $19,000; Post-institution fee (PIF): $22,500*	RF: $20,000; PIF: $27,500*
Excess claim fees	RF: $375 for each claim over 20; PIF: $750 for each claim over 20*	RF: $475 for each claim over 20; PIF: $1,050 for each claim over 20*
*Fee refundable if not instituted

The filing of a petition specifying the grounds of unpatentability initiates an AIA trial. An AIA trial is instituted if the PTAB determines that one of the petitioned grounds meets the relevant threshold; all grounds raised are assessed in an instituted AIA trial. For an instituted AIA trial, ⁷ the PTAB will issue a final written decision unless it is terminated by settlement or request for adverse judgment. A final written decision indicating that a claim is unpatentable results in the Office issuing a certificate canceling that claim.

When an AIA trial reaches a final written decision, the petitioner is estopped from asserting any ground of unpatentability that was "raised or reasonably could have [been] raised" during the AIA trial in another AIA trail, a civil action, or an International Trade Commission proceeding. ⁸ Thus, from a PO's perspective, the best AIA trial outcome would be (1) denial of institution...