All Patents Are Not Created Equal: Sovereign Immunity

By Vern Norviel, Charles Andres, and Xiaozhen “Shawn” Yu

©2018. Published in Landslide, Vol. 10, No. 3, Janusry/February 2018, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

The America Invents Act (AIA) created new US post-grant patent challenge proceedings—including inter partes review (IPR). Conducted in the United States Patent and Trademark Office (USPTO), post-grant challenges are adjudicated by administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB). Post-grant challenges have proved popular with patent challengers because: they are faster and cheaper than traditional district court litigation;1 the standard to invalidate a patent is lower than that employed by district courts;2 claim interpretation is broader—potentially opening up claims to a wider prior art pool;3 the ability to amend claims is practically nonexistent;4 and APJs are perceived as being more technologically savvy than judges and juries sitting in federal district courts.5

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