Steve Underwood presents “The Untimely Death of the IPR?” at the MIPLA January Luncheon on January 30, 2018

The 2011 America Invents Act brought to shareholders in the patent community seemingly potent alternatives to the extraordinary expense and uncertainty of patent litigation in the United States District Court system. Now approaching their fifth year, Inter Partes Reviews and, to a lesser extent, Post-Grant Reviews and Covered Business Method Reviews, allow parties to bring challenges regarding the validity of a United States patent directly before the Patent Trial and Appeal Board of the United States Patent and Trademark Office, an administrative body comprised of administrative law judges, rather than before Article III judges. While these alternatives still enjoy significant popularity today, recent developments may cause invalidity seekers to reconsider. Additionally, the United States Supreme Court is presently considering whether or not these alternatives are even constitutional, and may strike them down.

In his January talk at the Michigan Intellectual Property Law Association (MIPLA), Mr. Underwood will address the history of post-grant proceedings before the United States Patent and Trademark Office, particularly in the context of the America Invents Act, and compare these proceedings to patent litigation in the federal district courts. He will also discuss the impact of the Federal Circuit’s recent decision in Aqua Products, Inc. v. Matal, which reversed the rule placing on the patentee the burden of persuasion that amendments to patent claims presented during such post-grant proceedings were patentable. Presumably, the ability to amend patent claims during these post-grant proceedings will become more liberal and commonplace, potentially lowering the risk of a finding of patent invalidity. Mr. Underwood will conclude by exploring the potentially devastating impact of the Supreme Court’s consideration of the constitutionality of such post-grant proceedings in the context of the patent owner’s right to a jury trial on the issue of invalidity under the Seventh Amendment in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.

Details about the luncheon can be found here.