June 13, 2016
Today the Patent Trial and Appeal Board (PTAB) issued its first two final written decisions in post-grant review proceedings. The decisions both involved challenges by American Simmental Association to patents held by Leachman Cattle of Colorado, LLC.
Unlike inter partes review proceedings, post-grant review proceedings allow the PTAB to review the patentability of any claims in a patent on any ground that could be raised as a defense under 35 U.S.C. § 282(b)(2) or (3) in infringement litigation. In today’s decisions, in addition to challenging the patents over prior art, the challenger asserted that the petitioner’s two patents were invalid under 35 U.S.C. § 101. The PTAB agreed with the petitioner and invalidated the challenged claims of the patents at issue.
Post-grant review proceedings are available only for patents that are subject to the “first inventor to file” provisions of the American Invents Act (AIA). Additionally, such petitions may be filed no later than nine months after the date of the patent grant. The AIA was enacted relatively recently, and only a small number of patents are eligible for post-grant review. For this reason, it is unsurprising that there have been relatively few post-grant review proceedings. Today’s decisions are noteworthy primarily because they are the first final decisions that have been reached to date.
Fitch Even will continue to provide updates on patent post-issuance proceedings in future alerts.
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