Post-Grant Review of U.S. Patents: A Primer
Requires Subscription or Fee PDF


Post-Grant Review


The validity of an issued U.S. patent may be challenged in a number of forums including the courts and before the United States Patent & Trademark Office. With the enactment of the Leahy-Smith America Invents Act in 2011, a number of important changes to post-grant review of patents have occurred. This article provides an overview of available options.
Requires Subscription or Fee PDF


U.S.C. § 319.

U.S.C. § 311(a)–(b) (2012).

See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015) (invalidating claims to amplifying and detecting naturally-occurring DNA because amplification steps are conventional).

U.S.C. § 314(a).

U.S.C. § 311(c).

U.S.C. § 315(a)(1), (b).

U.S.C. § 315(a)(3).

U.S.C. §§ 316(a)(11), 326(a)(11).

U.S.C. § 314(a)(11) (2012).

U.S.C. § 317(a)–(b) (2012).

U.S.C. § 316(e). at 12.

LegalMetric Inter Partes Review Report (March 07, 2016).

U.S.C. § 312(a) (2000); 35 U.S.C. 314(a).

CFR 41.61(a).

U.S.C. § 321(b).

U.S.C. § 321(c).

U.S.C. § 324(a). at 12.

CFR 42.302(a).

See 37 C.F.R. § 42.300 (2014).

U.S.C. § 325(e).

U.S.C. § 325(e).

See, e.g., Harmonic Inc. v. Avid Tech., Inc., No. 2015-1072, 2016 WL 798192, at *7 (Fed. Cir. Mar. 1, 2016) (finding that the Federal Circuit does not have authority to review the PTAB’s decision to institute review on only a subset of grounds raised in the petition).

See Dell Inc. v. Electronics & Telecommunications Research Institute, IPR2015-00549 (PTAB March 26, 2015) (permitting a second IPR on grounds raised in the petition for the first IPR but on which the first IPR was not instituted).

See, e.g., St. Jude Med., Cardology Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375-76 (Fed. Cir. 2014) (denying appeal of decision not to institute for lack of jurisdiction).

See In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268, 1279–80 (Fed.Cir.2015); cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (2016).

In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015) cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (2016).

Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).

U.S.C. §§ 141(c).

Kirkendall v. Dep’t of the Army, 573 F.3d 1318, 1321 (Fed. Cir. 2009).

Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).

C.F.R. § 42.51(b)(1).

See, e.g., Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, No. IPR2012-00001, 2013 WL 2023626, at *4 (P.T.A.B. Mar. 5, 2013).

U.S.C. § 1337(b)(1).

U.S.C. § 1295(a)(6).

U.S.C. § 1337(d).

See Sealed Air Corp. v. Int’l Trade Comm’n, 645 F.2d 976, 985 (C.C.P.A. 1981) (“An exclusion order operates against goods, not parties. Accordingly, that [limited exclusion] order was not contingent upon a determination of personal or in personam jurisdiction over a foreign manufacturer. The Tariff Act of 1930 (Act) and its predecessor, the Tariff Act of 1922, were intended to provide an adequate remedy for domestic industries against unfair methods of competition and unfair acts instigated by foreign concerns operating beyond the in personam jurisdiction of domestic courtsâ€).

See Am. Intellectual Prop. Law Ass'n, Report of the Economic Survey 37–38 (2015).

U.S.C. §§ 316(a)(11), 326(a)(11).

Ex Parte Reexamination Filing Data, U.S. Patent and Trademark Office (Sept. 30, 2014) available at ex_parte_historical_stats_roll_up_EOY2014.pdf

U.S.C. § 1337(b)(1).

LegalMetric Nationwide Patent Litigation Report (April 2015) at 32.

Unless specified by prior arrangement, the author agrees to the following terms and assurances:

  1. For myself and on behalf of the other authors listed on this work, I assign to thinkBiotech LLC the copyright* in the contribution for the full term throughout the world.
  2. I/we further give to the following assurances
    1. I am the sole author of the contribution, or, if not, I have the written authority of the other authors to transfer the copyright* to thinkBiotech LLC and give these warranties;
    2. I and (where appropriate) the other authors are entitled to transfer the copyright to thinkBiotech LLC and no one else would be entitled to prevent us from publishing the contribution;
    3. To the best of my/our knowledge, all the facts in the contribution are true and accurate;
    4. The content of the contribution is entirely original to me (and where appropriate to the other authors) or, if not, the written permission of the owner of the copyright in any material copied from elsewhere has been obtained for all media (all such permissions to be attached to the contribution as supplementary files);
    5. Nothing in the contribution is obscene or libellous;
    6. Nothing in the contribution infringes any duty of confidentiality which I/or the other authors may owe to anyone else.
    7. I and/or the other authors have obtained the appropriate clearances from my/our employer(s) or other concerned institution(s).
* Works by US government employees prepared as part of official duties are in the public domain and the authors are therefore exempt from copyright assignment.