Two recent events will drive big changes in ongoing and future post-grant trials (IPR, PGR and CBM). The PTAB has just announced that it intends to abandon the “broadest reasonable” claim interpretation standard in favor of the “plain and ordinary meaning” standard used in district court litigation. This change mutes what has historically been an important advantage for petitioners: the ability to challenge the validity of claims based on a claim construction that (a) made it easier to show invalidity than the claim construction standard used in court; (b) did not require the petitioner to commit to a claim construction applicable to an infringement trial; and (c) allowed the petitioner to use the patent owner’s assertion of broad claim scope against it, even if the petitioner contested that claim scope in court. The change could go into effect as early as July 8, and would apply to pending as well as future post-grant trials.
This comes on the heels of the Supreme Court’s decision in SAS Institute Inc. v. Iancu, mandating that the PTAB institute a trial on all challenged claims or none. The PTAB applied that holding to ongoing as well as future post-grant trials. Moreover, the PTAB is broadly interpreting SAS to require that, if a trial is instituted, it be instituted on all claims and all grounds presented in the petition. Thus, if the petitioner shows that it is reasonably likely to prevail on a single claim on a single ground, the PTAB will institute a trial on all claims on all grounds in the petition, unless it exercises discretion not to have a trial at all.
This change in institution procedures is a mixed bag for petitioners. On the one hand, it creates the opportunity of having a trial on prior art that raises different or possibly even contradictory considerations, such that the petitioner has multiple opportunities to prevail and can adapt to counter-arguments made by the patent owner by emphasizing one ground over another during trial. On the other hand, having a trial on claims for which the PTAB would have, under its prior practice, found no reasonable likelihood of prevailing is potentially a liability, as estoppel against future challenges will now attach to those claims, too.
Those anticipating making post-grant challenges need to prepare a case aligned to current PTAB practices. That may mean devoting more time to selecting and justifying the appropriate claim construction. Careful petitioners, however, should explore other options, including building a case of invalidity that can prevail without an affirmative commitment on the precise reach of the claims, such as by showing that the embodiments of the invention described in the patent were unpatentable. As another option, petitioners may offer multiple grounds relying on different claim interpretations. Indeed, a petition might be structured with grounds that present claim interpretations of varying scope, forcing the patent owner to advocate for a claim interpretation, which could have benefits in the post-grant trial or related litigation or both.
For those with ongoing post-grant trials, now is the time for a fresh look at the case. Those impacted by SAS have likely been notified by the PTAB, and should be actively evaluating how to adapt to claims and grounds that were not previously in the trial. The possibility of conducting that trial under a different claim construction standard—possibly one for which there is scant evidence in the record—poses great risks for petitioners, and perhaps incredible opportunities for patent owners. For petitioners blindsided by the change in rules, extreme measures may even be warranted in some cases, such as requesting the PTAB vacate its institution decision.
In this time of many changes, it is important to be in close contact with an experienced post-grant practitioner who can put these changes into action for your case.