Returning to Litigation Topics
Back to litigation. Let’s briefly review what I’ve covered so far. In Episode 103, I talked about an overview of patent litigation. In Episodes 104 and 105, I discussed cease and desist letters. In Episode 106, I went over what goes into a patent infringement complaint. In Episode 109, I talked about how to respond to a patent infringement complaint. You’ll notice that some episode numbers are skipped—those covered other topics outside of litigation.
This episode serves as a bit of a review and continuation of material I discussed a while ago, specifically in Episodes 77 through 82, which focused on post-grant procedures.
Two Types of Courts That Hear Patent Issues
Why am I returning to this now? Because it’s important to understand that there are really two kinds of forums that handle patent issues.
One system is through the Patent Office itself, and that’s called the Patent Trial and Appeal Board (PTAB). These aren’t traditional courts, and there has been a lot of debate about their authority. The PTAB makes decisions about whether patents are valid, but it’s not what’s called an Article III court.
An Article III court is what most people think of as a federal court. Article III of the U.S. Constitution establishes the judicial branch. Some people questioned whether it was even constitutional to have this separate system like the PTAB making such decisions. But in 2018, the Supreme Court ruled that it was indeed constitutional.
Why Having Two Systems Matters
Why is this important? Because the USPTO (via the PTAB) cannot decide infringement—it can only decide whether a patent was validly granted. It can invalidate patents, but it cannot determine whether someone is infringing.
In contrast, an Article III court, like a federal district court, is where two parties face off when one is accusing the other of patent infringement and is seeking damages.
So, imagine the scenario: someone sues you for patent infringement in a federal court. The judge or jury there might say that the patent is valid. But then, you go to the USPTO and ask the PTAB to declare the patent invalid. Now you could have two different rulings—one saying the patent is valid, the other saying it’s not. And if the patent is invalid, then the infringement case in court should collapse. That’s the kind of conflict this episode addresses.
Shifting the Case to the Patent Office
Let’s say you’ve just been sued for patent infringement. You don’t think the patent is valid, and you want to avoid the high cost of going through a full trial in district court. One option is to ask the Patent Office to review the patent again through what’s called a post-grant hearing.
Once this request is made, the trial court is generally supposed to stay—or pause—what it’s doing and wait for the Patent Office to decide on the validity of the patent. If the patent is found invalid, then there’s no need to continue with the trial, because there’s no valid patent to sue over.
But if the patent is found valid by the Patent Trial and Appeal Board, then the trial in federal court can resume and determine whether infringement occurred.
Post-Grant Options: IPR and CBM
I previously discussed five main ways that a patent can be challenged at the Patent Office. The most common is Inter Partes Review (IPR), which I talked about in Episode 77.
There’s also Covered Business Method Review (CBM), which I covered in Episode 78.
These are the main post-grant tools used to pause district court litigation. Once the defendant files an IPR or CBM petition, they will usually ask the district court to stay the trial.
To “stay” means to temporarily halt the litigation process. The USPTO is supposed to make a decision on the petition within 18 months of the request. Based on what happens in that review, the trial court will then decide whether to continue the trial or whether the case is effectively over.
Why This Matters in Patent Litigation
This is one step in the patent litigation process that you should be aware of, because it can temporarily shift the case out of the trial court and back to the Patent Office—a potentially more cost-effective and efficient venue for challenging a patent’s validity.
Two Important Acronyms: ADS and IDS
(This information was at the beginning of the audio podcast episode)
I want to briefly mention two more patent acronyms that you might come across. I did an entire episode on patent acronyms, and I actually forgot two of the most common ones.
These are ADS and IDS. ADS stands for Application Data Sheet. I had an entire episode on how to fill one out, but basically, it’s just a form the Patent Office uses to gather your contact information and other basic details.
The other acronym is IDS, which stands for Information Disclosure Statement. This is a list of patents, patent applications, and other documents that you are required to disclose to the Patent Office if you think those documents are relevant to your invention and could impact patentability. So, if you are improving on a known device, you must include that known device in your IDS.
I’m Adam Diament, and until next time, keep on inventing.