A Free Bite at the Apple: How Flawed Statutory Drafting Has Undermined the Purpose of the Patent Trial and Appeal Board

by Rebecca Gentilli

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Abstract

In the years before Congress passed the America Invents Act, patent litigation became exorbitantly expensive. Congress created three types of proceedings before the Patent Trial and Appeal Board (PTAB), which were intended to provide a cheaper and more cost-effective alternative to district court litigation over patent validity. A major factor in ensuring that the PTAB proceedings effectively substituted for district court litigation was a harsh estoppel provision that prevented any petitioner from relitigating any issue which was raised or reasonably could have been raised during the PTAB proceeding. The Federal Circuit, however, recently applied a narrow interpretation to the estoppel provision which jeopardizes the ability of PTAB proceedings to replace district court litigation.

While it would be easy to place all the blame on the Federal Circuit for defanging the estoppel provision, this Note argues that the failure of PTAB proceedings to substitute for district court litigation ultimately stems from poor drafting within the America Invents Act. The combination of broad Patent and Trademark Office (PTO) substantive rulemaking power, unreviewable PTAB decisions to institute, and a sweeping estoppel provision doomed PTAB proceedings to failure. This Note offers that Congress must update the language of the statute itself in order to effectively address the issues presented by this combination.

A Free Bite at the Apple: How Flawed Statutory Drafting Has Undermined the Purpose of the Patent Trial and Appeal Board

by Rebecca Gentilli

Click here for a PDF file of this article

Abstract

In the years before Congress passed the America Invents Act, patent litigation became exorbitantly expensive. Congress created three types of proceedings before the Patent Trial and Appeal Board (PTAB), which were intended to provide a cheaper and more cost-effective alternative to district court litigation over patent validity. A major factor in ensuring that the PTAB proceedings effectively substituted for district court litigation was a harsh estoppel provision that prevented any petitioner from relitigating any issue which was raised or reasonably could have been raised during the PTAB proceeding. The Federal Circuit, however, recently applied a narrow interpretation to the estoppel provision which jeopardizes the ability of PTAB proceedings to replace district court litigation.

While it would be easy to place all the blame on the Federal Circuit for defanging the estoppel provision, this Note argues that the failure of PTAB proceedings to substitute for district court litigation ultimately stems from poor drafting within the America Invents Act. The combination of broad Patent and Trademark Office (PTO) substantive rulemaking power, unreviewable PTAB decisions to institute, and a sweeping estoppel provision doomed PTAB proceedings to failure. This Note offers that Congress must update the language of the statute itself in order to effectively address the issues presented by this combination.