June 15, 2016

“4 Things To Know About PGRs After 1st-Ever Final Decisions,” Law360, June 15, 2016

Law360, New York (June 15, 2016, 9:54 PM ET) — The Patent Trial and Appeal Board’s first-ever post-grant review decisions this week put a spotlight on the powerful America Invents Act proceedings, which have been little-used to date. It will take time before PGRs become widespread, but Monday’s decisions illustrate the ways they can be used and what litigants need to know about them, attorneys say.

PGRs Give Challengers More Weapons

The PTAB decided Monday that the American Simmental Association, a cattle breeding industry group, had shown that all the claims of two Leachman Cattle of Colorado LLC livestock valuation patents are invalid for claiming only abstract ideas under the U.S. Supreme Court’s Alice decision. That result sums up the power of PGRs.

There is a possibility that the courts will limit the estoppel effect to grounds the PTAB actually decides in a PGR, but the reach of estoppel is the “big unanswered question” about PGRs, Kamholz said. It will likely be quite some time before a case presents the opportunity for the courts to resolve it.

Given the estoppel risk, some challengers may shy away from PGRs, said Matthew Cutler of Harness IP & Pierce PLC. Companies may ask themselves, “Why go down the PGR path? If I’m unsuccessful, I’m going to lose any defense I could bring in litigation,” he said.

One of the main advantages of PGRs is the ability to challenge patents under Section 101, but district judges have been granting Alice motions at a rapid clip in infringement litigation lately. That could further blunt the appeal of PGRs, Cutler said.

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