By Matthew L. Cutler, Principal
Despite the overwhelming popularity of IPR proceedings since their inception, about three and a half years ago, Post Grant Review has, to date, been little used. There are probably valid reasons for this low popularity, including the limited (current) subset of patents subject to PGR, the broader estoppel associated with PGR (as compared to IPR), and the fact that 35 USC § 101 challenges are now relatively quick and inexpensive at the district court level, in view of the Alice decision. Regardless, many have been anticipating the first Final Written Decisions from PGR proceedings to see this next chapter in the game-changing world of post-grant proceedings.
Perhaps unsurprisingly, however, the first PGR Final Written Decisions are largely reminiscent of IPR/CBM decisions. See, e.g., Am. Simmental Assoc. v. Leachman Cattle of CO., LLC, PGR2015-00003 (June 13, 2016). For example, like the majority of decisions from IPR, the Patent Owner lost its claims. Further, Patent Owner’s Motion to Amend was denied for failing to meet the burdens of the Board jurisprudence, including Idle Free. The details of the decisions were also similar to PGR’s well-known predecessors. To that end, the claim construction analysis played a central role, with the Board undertaking a detailed and thorough analysis.
Indeed, the only major difference between the first PGR decisions and those we have come to know via IPR proceedings is the subject matter of the dispute, which is unique to PGR. For example, Petitioner challenged the claims-at-issue under an obviousness analysis using a prior art reference that was neither a patent nor a printed publication. Such an unpatentability ground is, of course, inappropriate for IPR petitions. Ultimately, this ground was denied because insufficient corroborating evidence of testimony regarding the prior art was put forth by the Petitioner.
Patent Owner did not have the same success, however, with the second main challenge ground – a challenge that the claims failed to recite statutory subject matter. In this analysis, and pursuant to the first step of the Alice test, the Board found that the claims were directed to an abstract idea; specifically, “a fundamental economic practice…long prevalent in our system of commerce.” Opinion at 29. Pursuant to the second step of the Alice analysis, the Board determined that the claims failed to recite “significantly more.” Instead, they merely claimed generic computer hardware used in a conventional manner. As such, all of the challenge claims were deemed unpatentable.
So, PGR is off and running, and the news is just as positive for Petitioners as the results of the majority of IPR proceedings.