The 2011 America Invents Act created provisions for Inter Partes Review (“IPR”) and Post Grant Review (“PGR”) of patents in an attempt to resolve patent validity issues without costly litigation. According to PTO statistics, to date, nearly 50,000 patent claims have been challenged under IPR, and nearly 11,000 (22.4%) of those claims have been invalidated. On June 13, 2016, the Patent Trial and Appeal Board (“PTAB”) issued its first two PGR decisions, holding all challenged claims unpatentable subject matter based on Alice, Corp. v. CLS Bank. On June 20, 2016, in Cuozzo Speed Technologies v. Lee, the Supreme Court upheld the PTAB’s interpretation of two key elements of IPR. The Court held that (1) decisions to institute IPR proceedings are non-appealable, and (2) that the PTO has the authority to determine claim meaning and validity under its “broadest reasonable construction” standard. This validation of the PTAB’s IPR procedures and authority, along with the rate of patent invalidation, is making some patent owners feel under siege, while other potential defendants see these results as salutary to the health of innovation and economic activity.
Important outstanding questions about the constitutionality of IPR and PGR, remain, however. On July 13th at 1:00 p.m. Eastern, the Federalist Society will host a Teleforum call with patent experts who will debate whether invalidations of patents under PGR and IPR qualify as takings under the 5th Amendment of the U.S. Constitution. Our experts will also discuss whether separation of powers problems arise from the fact that the administrative law judges passing on the validity of patents under IPR and PGR are not Article III judges.
Professor Greg Dolin will discuss the argument that he and Professor Irina Manta make in their recent article, Taking Patents. Professor Camilla Hrdy and Ben Picozzi will illuminate the arguments on the other side.