The post-America Invents Act (AIA) landscape has fundamentally changed how inventors with patents can challenge later-filed patents with overlapping or similar claims as their own.
Pre-AIA, the first to invent, not the first to file, was entitled to a United States patent. Original inventors had a statutory process by which they could challenge others' patents with overlapping or similar claims. Under 35 U.S.C. § 135(a) (pre-AIA), an inventor could file an interference proceeding with the U.S. Patent and Trademark Office (USPTO) within a year from the patent application's publication date or the patent's issuance date.
These proceedings were "priority contests" to determine original inventorship in overlapping claims. Both inventors would submit evidence suggesting that they invented the claimed invention first. Then, the USPTO would determine the "first person to invent."
But, when the United States switched to a first-to-file system under the AIA in 2013, interference proceedings were all but removed for applications filed after the AIA, which the U.S. Court of Appeals for the Federal Circuit recently confirmed in its July 14, 2023, decision in SNIPR Technologies Limited v. Rockefeller University.
In SNIPR, the Patent Trial and Appeal Board (PTAB) declared an interference between claims of a pure AIA patent and claims of a pure pre-AIA application. When SNIPR, the AIA patent owner, moved to terminate the interference, the PTAB found that pre-AIA law required an interference because the pre-AIA application must comply with pre-AIA section 102(g). The Federal Circuit reversed, finding that pure AIA patents cannot be part of an interference.
Although Congress removed interference proceedings from the statutory provisions of the AIA, inventors retained a recourse against later filers with overlapping claims. The AIA established the PTAB, which permitted challengers to petition for post-grant review (PGR) or inter partes review (IPR) proceedings.
Under the AIA, challengers may petition for PGRs in the nine months immediately following issuance of a patent. In a PGR, challengers may allege patent invalidity on any ground, for example: (1) patent ineligible subject matter (§ 101); (2) anticipation (§ 102); (3) obviousness (§ 103); and written description/enablement issues (§ 112). In an IPR, meanwhile, challengers may only challenge a patent on novelty and obviousness grounds, and the challenger must wait until after nine months from the issuance of the patent.
In contrast, interference proceedings pit one patent or application against another. In these proceedings, claims overlap in scope by design — a party may copy another's claims to invoke an interference — and issues of anticipation or obviousness are not addressed. Instead, the parties dispute whether the first inventor was diligent between the second inventor's invention and reduction to practice. Strong evidence in these cases includes lab notebooks or regular work on a patent application, not additional prior art closely related to the challenged claims.
So, post-AIA inventors have many options to choose from when challenging another inventor, but those options do not relate to invention. This article explores the different avenues on which an original inventor may challenge another inventor's similar or overlapping claims in a post-AIA world, the potential setbacks of these options, and the risk of retaliation by opposing and outside parties.
As this article shows, these AIA proceedings carry greater risk for a competing patent owner than interference proceedings, so a risk averse patent owner likely will not use them in place of an interference. This article will not address section 112 challenges because such arguments are not implicated when a petitioner has overlapping claims with a competing patent.
As an example, Company A invents a rectangular airplane wing and files a patent application in 2017 claiming a leading edge, a trailing edge, at least one spar, at least one rib, and an enveloping skin. Then, Company B files a patent application in 2018 with identical claims for the rectangular airplane wing, which the Patent Office grants, despite Company A's earlier filing. In a post-AIA world, what options does Company A have given that Company B has obtained a patent, even though Company A filed its patent application first?
PGR option: subject-matter eligibility challenge
Challengers can argue ineligibility through PGRs. But, a PGR challenging on subject-matter grounds would be risky, with unintended consequences for Company A. In our example, Company A's claims overlap with Company B's, so if Company A's specification does not sufficiently explain how the claims add significantly more to the alleged ineligible concept, the petitioner's own eligibility arguments may later be used to invalidate their claims. For that reason, a subject matter eligibility challenge via PGR would rarely be a good replacement for pre-AIA interference practice.
With respect to subject matter eligibility challenges, interference and PGR proceedings bear little resemblance. Subject matter eligibility is not available through interferences, and the inventorship and diligence questions at issue during interference proceedings do not implicate subject matter eligibility. Interferences do not have the risk PGRs introduce to the challenger.
PGR or IPR option: anticipation challenge
Petitioners can challenge a granted patent on anticipation or obviousness grounds in either a PGR or an IPR. Continuing with our example, where two patents overlap in their claims (as claims in an interference would), Company A may use its own patent as prior art, but this comes with risk.
For example, if an anticipation challenge is unsuccessful, then Company A will have difficulty asserting that it does not infringe. Company A could be held to any admissions about the challenged claims of Company B, possibly covering the patent or product of Company A. This may be a risk with intentionally overlapping claims in an interference as well, if both competitors could infringe the disputed claims.
But, the inverse is also true, in that Company B cannot reasonably take directly contradictory positions during later district court proceedings, if Company B distinguished its claims over those of Company A in the PGR/IPR. This potential benefit to Company A is impossible in interference proceedings, where the parties do not dispute claim scope.
On the other hand, Company B may not be estopped from defending the validity of surviving claims in later district court proceedings. In IOENGINE, LLC v. PayPal Holdings, Inc., a 2022 decision, the District of Delaware found a patent owner was not estopped from arguing that certain limitations were not found in the prior art, even though the PTAB found that they were, because of the differing standards of proof in PTAB and district court proceedings.
PGR or IPR option: obviousness challenge
To build a stronger PTAB case, Company A may want to use prior art references other than its own patent — alone or in combination with its own patent. In such case, Company A may implicate its own patent, if it finds a reference that reads on Company B's patent but also predates Company A's patent because that same reference will read on some claims of Company A's patent.
Even if such a reference does not read on every claim limitation of Company A's claims, it may motivate Company B (or outside parties) to challenge Company A's claims as obvious. Finding prior art to invalidate one set of claims but not another may prove particularly challenging.
Obviousness thus adds potential risk and reward to IPRs/PGRs over interferences. In interferences, there is no other prior art, and the contest turns on the first inventor's diligence, not on claim scope.
Petitioners may face retaliation in the form of infringement claims
Finally, no matter which route Company A takes — PGR, IPR, or interference—it must be wary of retaliation by Company B. IPR, PGR, and interference proceedings are not anonymous and bring Company A's practices to the attention of Company B. Accordingly, Company B may retaliate by filing infringement claims against Company A.
If Company A brings a PGR or IPR challenge, regardless of its current patent rights, it may have to litigate out of the infringement claims, which can be costly. Indeed, the legal questions opened by Company A's PGR or IPR challenge may significantly add to its costs. Thus, Company A may risk more harm than good and more attention to their patent and practices by bringing a PTAB proceeding.
For post-AIA patents, there is no true replacement for an interference
For pre-AIA patents and applications, interference proceedings remain a powerful tool to decide entitlement to overlapping claims. Indeed, for pre-AIA patents, to consolidate patent ownership or remove a competitive patent owner, interference proceedings are often invaluable.
But, for post-AIA patents, there are few solutions. Indeed, IPR and PGR proceedings have not significantly replaced interference proceedings for challenging another's patent having overlapping claim scope.
A careful practitioner must weigh these benefits and drawbacks before bringing a PTAB challenge in the place of a pre-AIA interference proceeding. Weighing these options, a risk averse patent owner in Company A's position will likely forgo using its own patent in PTAB proceedings, to replace an interference.
Orginally published by Westlaw Today
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
