Supreme Court Appeal: Correcting AIA

Challenging AIA Procedures: Seeking Clarity from the Supreme Court

An appeal recently filed for a Writ of Certiorari calls upon the United States Supreme Court to address and rectify the treatment of two crucial components of the America Invents Act (AIA) — 35 U.S.C. § 314(d) and 35 U.S.C. § 325(d). The case prompts a clarification of the AIA procedures’ role within the broader patent system, specifically questioning whether a patent’s title can ever find reprieve or be endlessly subjected to duplicative challenges.

The Significance of Various Procedures Rule

The Various Procedures rule, outlined in § 325(d), instructs the Patent Trial and Appeal Board (PTAB) to consider whether the same or substantially the same prior art or arguments were previously presented to the Office when deciding on an inter partes review (IPR). However, inconsistencies in the PTAB’s application of § 325(d) have surfaced, creating confusion and unpredictability.

Inconsistencies in PTAB Decisions

Despite the rule, the PTAB has at times allowed IPRs to proceed, even when prior art references were not previously raised against the patent. This conflicting approach raises questions about the PTAB’s adherence to the Various Procedures rule.

A Case of Persistent Challenges

The case at hand dates back to 2000 when the Patent Office granted U.S. Patent No. 6,158,011. Over 16 years, the patent faced multiple challenges, including PTO reconsiderations, court decisions, and a precedential Federal Circuit ruling, affirming its validity each time. However, in 2015, a new challenge emerged when Cisco initiated an IPR, marking the tenth review of the patent’s validity.

PTAB’s Misapplication of § 325(d)

In this case, the PTAB, rather than denying Cisco’s request as duplicative under the Various Procedures rule, chose to conduct a fresh review. The PTAB justified its decision by emphasizing that Cisco was not the same party that had prompted earlier PTO reviews. This decision, however, goes against the clear text and intent of § 325(d).

Congressional Intent and Protecting Patent Owners

Congress, in enacting § 325(d), intended to prevent harassment of patent owners through repeated challenges. The PTAB’s misinterpretation of the rule and the Federal Circuit’s reluctance to review such decisions jeopardize the quiet title to patent owners sought by Congress.

Supreme Court’s Consideration

The appeal poses crucial questions for the Supreme Court’s consideration:

1. Can courts review an agency’s decision on the applicability of the § 325(d) rule when it does not involve an assessment of the IPR’s substantive merits?
2. Did the Board err in initiating an IPR under § 325(d) when the same prior art and arguments were presented in earlier PTO reviews, even without the same party involvement?

Preserving Consistency in the Patent System

The uncertainty surrounding the Various Procedures rule undermines a foundational element of the patent system — consistency. If left unaddressed, it could compromise the incentives for innovation and investment that the patent system aims to foster.

In conclusion, the battle to invalidate claims until a patent owner loses and claims are discredited contradicts the very purpose of the § 325(d) Various Procedures rule. It is essential to address these concerns to uphold the foundational goals of patent system: To promote the progress of science and useful arts (U.S. CONST., Art. I, § 8).