August 04, 2014 Articles

Partial Institution by PTAB Violates the AIA—And There Is a Simple Solution

The partial institution of a trial on only a subset of the challenged claims violates the AIA and needs to be corrected, before we need to revisit cases that have already been decided

By Tim Wilson and John Sieman

The Problem of Partial Institution

The America Invents Act (AIA) created several new and important administrative procedures to challenge issued patents: post grant review (PGR), inter partes review (IPR), and transitional covered business method reviews (CBM). The Patent and Trial Appeal Board (PTAB) at the United States Patent and Trademark Office (PTO) runs these trials under rules promulgated by the PTOPTO. In the less than two years since the post-grant trials became available, parties have made increasing use of these trials, especially IPR and CBM. Under a statutory requirement to complete the trials within one year of institution, the PTO has taken steps to narrow proceedings as much as possible to ensure their timely completion. But at least one of these narrowing steps violates the AIA itself and must be corrected: the partial institution of a trial on only a subset of the challenged claims. According to the PTAB, as of April 2, 2014, 10 out of 52 CBM institution decisions and 90 out of 416 IPR institution decisions involved partial institution. AIA Trial Roundtables at 25.

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