On June 21, 2017, Senator Chris Coons (D-Del.) introduced the STRONGER Patents Act of 2017 in the Senate. STRONGER is an acronym for “Support Technology and Research for Our Nation’s Growth and Economic Resilience.” The bill was co-sponsored by Senators Tom Cotton (R-Ark.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Haw.). In a press release by Sen. Coons, the STRONGER Patents Act purports “to protect and support inventors and innovators and ensure that our patent system protects this essential property right.” According to the press release, the STRONGER Patents Act is an “improvement” of Sen. Coons’ STRONG Patents Act of 2015, which was not voted on by the full Senate in the last Congressional term.
The STRONGER Patents Act seeks to significantly change several aspects of post-grant review proceedings implemented by the America Invents Act (AIA) of 2011. In his press release, Sen. Coons states that the bill intends to make “the post-issuance proceedings before the Patent Trial and Appeal Board (PTAB) more fair and efficient.” The bill asserts that “unintended consequences of the [AIA] are continuing to become evident, including the strategic filing of post-grant review proceedings to depress stock prices and extort settlements, the filing of repetitive petitions for inter partes and post-grant reviews that have the effect of harassing patent owners, and the unnecessary duplication of work by the district courts of the United States and the Patent Trial and Appeal Board.”
Comparison with Current AIA Trial Practice
The following table illustrates several of the significant changes that the STRONGER Patents Act proposes to make to the current implementation of AIA trial proceedings, including inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review.[1]
| Current AIA Trial Practice | Proposed Changes in STRONGER Patents Act | |
| Claim Construction | Broadest reasonable interpretation for unexpired patents | Phillips claim construction used in district court and ITC trials |
| Presumption of validity? | No | Yes |
| Burden of Proof | Preponderance of evidence | Clear and convincing |
| Who may challenge? | Any third party who is not time-barred or estopped(for CBMs only, the petitioner must be sued for infringement of the patent, or charged with infringement of the patent). | For IPRs, the petitioner must be sued for infringement of the patent, or charged with infringement of the patent (i.e., the petitioner would have standing to bring a declaratory judgment action in federal district court). For PGRs, the petitioner must demonstrate a reasonable possibility of (i) being sued for infringement of the patent, or charged with infringement of the patent, or (ii) having a competitive harm related to the validity of the patent. |
| How many petitions may be filed against a patent? | There is no formal limit, but the PTAB has discretion to deny multiple or follow-on petitions under §§ 314(a), 324(a) or 325(d). | The PTAB may not institute review for a claim of a patent if an IPR or PGR has previously been instituted with respect to that claim. |
| Is a decision not to institute review appealable? | No | No |
| Is a decision to institute review appealable? | No | Patent owners have a limited right to appeal decisions to institute. Patent owners may not appeal the PTAB’s determination in the institution decision that a challenged claim is likely unpatentable. An appeal of an institution decision does not stay an instituted IPR or PRG unless ordered by the Federal Circuit. |
| Scope of estoppel | A petitioner who, in a final written decision, is unsuccessful challenging a claim in an IPR or PGR is estopped from raising or maintaining any ground of challenge for that claim that the petitioner raised or reasonably could have raised during the concluded IPR or PGR proceeding. | A petitioner who files an IPR or PGR petition against a claim of a patent may not file another IPR or PGR petition against the same patent unless the petitioner is later charged with infringement of additional claims of the patent. If an IPR petition is instituted for a claim, the petitioner may not challenge that claim in a district court or ITC proceeding on any anticipation or obviousness ground based on patents or printed publications. |
Additional Proposed Changes
The STRONGER Patents Act also proposes the following changes to current AIA trial practice.
- Real Party-in-Interest. A person or other entity that makes financial contributions to the preparation or conduct of an IPR or PGR constitutes a real party-in-interest. The bill also expands the scope of available discovery to determine whether an unnamed party may be a real party-in-interest to an IPR or PGR petition.
- Restriction on Parallel Review and Priority for District Court and ITC Validity Determinations. If a district court or the ITC has previously entered a final judgment that decides the validity of a claim with respect to 35 U.S.C. §§ 102 or 103, the PTAB may not institute an IPR or PGR with respect to that claim. If a district court or the ITC enters a final judgment that decides the validity of a claim with respect to 35 U.S.C. §§ 102 or 103 after an IPR or PGR petition has been instituted, the PTAB must stay the IPR or PGR proceeding with respect to that claim pending a final decision of the district court or ITC and any appeal of that final decision. If the district court or ITC upholds the validity of the claim, the PTAB must terminate the instituted IPR or PGR.
- Different Panels for Institution and Trial Phases. Section 104 of the bill provides that a member of the PTAB who participated in a decision to institute an IPR or PGR is ineligible to participate in the trial phase of the review. Thus, any member of the PTAB who participates in a panel decision to institute an IPR or PGR may not conduct the trial or participate in preparing the final written decision. Under current AIA trial practice, the same PTAB panel often issues the institution and final written decisions, which has led to objections that the institution panel is biased to decide in favor of the petitioner. The Federal Circuit has held that “the PTO’s assignment of the institution and final decisions to one panel of the Board does not violate due process under governing Supreme Court precedent.” Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1029 (Fed. Cir. 2016).
- Expedited Examination for Amendments to Challenged Claims. If a patent owner elects to pursue a motion to amend in an instituted trial, the PTAB may order an expedited patentability report from an examiner on proposed substitute claims. Alternatively, in lieu of issuing a final written decision for a claim that is proposed to be amended, the PTAB may order an expedited reexamination of the proposed substitute claim.
The STRONGER Patents Act Weakens the Ability to Challenge Patents under the AIA
In its current form, the STRONGER Patents Act would bring about significant changes to current AIA trial practice. For instance, the bill would permit only one IPR or PGR petition to be instituted against a claim of a patent, even if additional parties are later accused of infringing that claim after the initial petition challenging the claim was instituted. Similarly, a petitioner who challenges one or more claims of a patent in an IPR or PGR petition would be prevented from filing another petition against the patent, unless that petitioner is later sued for or charged with infringement of additional claims of the patent. Thus, as proposed in the bill, petitioners would not be permitted to file multiple petitions against the same patent. This could make challenging patents with a large number of claims (or very lengthy claims) difficult or impossible. The bill would also substantially limit the ability to present multiple grounds of challenge against the same patent.
These restrictions on the number of challenges that can be presented promote the concept of quiet title in patents, which may improve certainty in investing in patented technologies. However, these restrictions may be undesirable for industries such as the high tech industry whose companies often face multiple infringement accusations at different times during the term of a patent. Practitioners before the PTAB will keep an interested eye on how this bill progresses through Congress.
The text of the bill can be accessed here.
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[1] For the sake of brevity, the term “petitioner” in the above table includes an entity that challenges a patent in an IPR, PGR or CBM, that entity’s real party-in-interest, or any privy of that entity.