Patent Trial And Appeal Board Research Articles

The Patent Trial and Appeals Board

This Viewpoint summarizes the role of the Patent Trial and Appeal Board (PTAB) in reforming the drug patent process to avoid erroneously granted patents; highlights how other reform efforts, such as the PREVAIL Act, actually weaken the PTAB; and suggests changes to strengthen the PTAB and promote generic availability and reduced health care costs.

Patent law reform and innovation: An empirical assessment of the last 20 years

We ask whether four of the most important U.S. patent system reforms of the last 20 years—elimination of presumptive injunctive relief for victorious patent enforcers in eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006); creation of the Patent Trial and Appeal Board (PTAB) in the America Invents Act; restriction of software’s eligibility for patent protection in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014); and limitation of patent enforcers’ choice of forum in TC Heartland, LLC v. Kraft Foods Grp. Brands, LLC, 137 S. Ct. 1514 (2017)—had a measurable impact on innovation in the U.S. Specifically, we use a sample of publicly traded firms to construct firm-level measures of innovation and exposure to each reform and adopt a variety of difference-in-differences approaches that assesses how innovation-related activities changed post-reform at relatively exposed versus relatively unexposed firms. We find: a positive association between eBay and R&D spending by firms that were relatively more exposed to patent litigation prior to the Court’s decision; a positive association between the introduction of PTAB proceedings and R&D expenditures by firms that innovate in tech classes where PTAB has been most active; a positive association between Alice and R&D spending by software firms; and a positive association between TC Heartland and R&D spending by firms that thereafter could not be sued in the Eastern District of Texas, a court long associated with opportunistic forum shopping.

Immaculate Conception? Priority and Invention in the CRISPR Patent Dispute.

The U.S. Patent Trial and Appeal Board (PTAB), in an interference proceeding decided in February 2022, concluded that researchers at the Broad Institute (Cambridge, MA) were the first to "conceive" of using single-guide RNA CRISPR-Cas9 genome editing in eukaryotic cells in 2012. The PTAB reached this verdict even though competing researchers at the University of California, Berkeley, among other institutions, could document the idea 7 months earlier. Understanding the basis for the PTAB's decision turns on patent law's particular "conception" requirement. In this study, I explain that requirement, detail the PTAB's interference decision, and discuss the decision's practical effects on CRISPR technology and routine science.

The Effect of New Information on Patent Litigation: Evidence from U.S. Inter Partes Review

We analyze how new information concerning the validity of a patent impacts the settlement of patent infringement litigation. A party accused of patent infringement in the U.S. may---in parallel with defending itself in court---additionally challenge the validity of the allegedly infringed patent by petitioning the Patent Trial and Appeal Board (PTAB), an administrative tribunal within the U.S. Patent and Trademark Office. PTAB proceedings generate new information concerning the validity of challenged patents at several points in time, and we study empirically the resulting effect on settlement of concurrent litigation. Using data on U.S. district court cases (filed 2011-2016) and parallel PTAB validity challenges (filed 2012-2017), we examine each of the three main events that comprise a PTAB proceeding: (i) the filing of a petition to challenge a patent's validity, (ii) PTAB's decision to (i.e., grant) or deny the petition based on its assessment of a reasonable likelihood of invalidity, and (iii) PTAB's final determination of the patent's validity. We find that all three decision points have large, positive effects on the settlement of parallel court proceedings. We further find that the effect of PTAB's initial decision is driven by settlements that follow a decision to institute the petition. This suggests that accused infringers can leverage the threat of a final decision invalidating the challenged patents to induce settlement, which may lead to a lower rate of patent invalidation than is socially optimal.

Argentum Pharm. LLC v. Novartis Pharm. Corp. United States Court of Appeals of the Federal Circuit, 2020 956 F.3d 1374

Argentum Pharm. LLC v. Novartis Pharm. Corp. United States Court of Appeals of the Federal Circuit, 2020 956 F.3d 1374

Key Takeaways from "The Intersection of University Inventions and Recent Cases at the Patent Trial and Appeal Board (PTAB)"

This article provides a brief summary of the discussion, presentation, and knowledge shared during the Eight Annual Meeting of the National Academy of Inventors held in Houston, Texas, in April 2019. The panel, "The Intersection of University Inventions and Recent Cases at the Patent Trial and Appeal Board (PTAB)," focused on university inventions and the PTAB, with perspectives from a university technology transfer office, a PTAB administrative patent judge, and attorneys practicing before the United States Patent and Trademark Office (USPTO) and in Federal District Court. The panel was led by Andrew Maas of Louisiana State University and included Kalyan Deshpande of the USPTO; Kyle Friesen of Shook, Hardy & Bacon; and Jay Yates of Patterson + Sheridan. The panel busted myths and provided helpful information and perspective on the PTAB.

The New World of Agency Adjudication

In 1946, the Administrative Procedure Act (APA) set forth the criteria for “formal” adjudication, requiring an administrative law judge to make the initial determination and the agency head to have the final word. That is the lost world. Today, the vast majority of agency adjudications Congress has created are not paradigmatic “formal” adjudications as set forth in the APA. It turns out that there is great diversity in the procedures by which federal agencies adjudicate. This new world involves a variety of less-independent administrative judges, hearing officers, and other agency personnel adjudicating disputes. But, like in the lost world, the agency head retains final decision-making authority. In 2011, Congress created yet another novel agency tribunal — the Patent Trial and Appeal Board (PTAB) — to adjudicate patent validity disputes between private parties. Questions abound concerning the PTAB’s proper place in the modern administrative state, as its features depart from the textbook accounts of APA-governed “formal” adjudication. Many of these questions are working their way through the Federal Circuit and to the Supreme Court. Indeed, the Supreme Court recently held in Oil States Energy Services that PTAB adjudication does not unconstitutionally strip parties of their property rights in issued patents—while expressly leaving open many questions concerning the limits of administrative adjudication. This Article situates PTAB adjudication within administrative law’s larger landscape of agency adjudication. By surveying this new world of agency adjudication, we find that PTAB adjudication is not extraordinary. But we also identify one core feature of modern agency adjudication that is absent at the PTAB: the Director of the Patent and Trademark Office lacks final decision-making authority. To be sure, the Director has some power to influence outcomes: in the past, she has ordered rehearing of cases and stacked the board with administrative patent judges who share her substantive vision. But these second-best means of agency-head control raise problems of their own, including constitutional questions and inefficiencies in agency performance. This Article concludes by exploring alternative mechanisms that would remedy the lack of agency-head review at the PTAB.

Oilfield Service Patent Contests Get Heated

From the highest courts of the US judicial branch to the C-suite, contests involving patents have recently come to the fore in the innovation-hungry US oilfield services industry, even as filings and litigation have recently declined. In the past few months, the US Supreme Court has ruled on two disputes involving oilfield services firms, providing guidance on the extent to which patent protection applies beyond US borders and reaffirming a controversial process by which a patent’s validity is reexamined. The decisions come as companies adopt a more tactical approach in their pursuit and defense of intellectual property (IP). The most recent ruling, which came in June, found that Schlumberger’s geophysical services subsidiary WesternGeco could recover lost profits for infringement abroad of four of its US patents by rival Ion Geophysical. The technology in question involved control systems for marine seismic streamer steering devices, separately falling under WesternGeco’s Q-Marine brand and Ion’s DigiFin brand. Ion was shipping the components overseas to customers, which then assembled the technology for their own use. The first chapter of the saga came in 2012 when a federal jury ruled in favor of WesternGeco in its infringement suit against Ion, finding that the practice caused WesternGeco to lose multiple survey contracts. The case was turned on its head, however, when an appeal by Ion resulted in the US Court of Appeals for the Federal Circuit reversing the lost profit award. A subsequent appeal by WesternGeco elevated the case to the US Supreme Court. While Ion’s appeal was pending, the companies were involved in separate proceedings, initiated by Petroleum Geo-Services, that challenged the validity of the WesternGeco patents before the Patent Trial and Appeal Board (PTAB) under a process called inter partes review (IPR). Challenged in the other US Supreme Court decision this year involving oilfield service firms, IPR is a procedure that takes a patent challenge to the US Patent and Trademark Office (USPTO) rather than before a jury in a district court. The PTAB invalidated the four patent claims that formed the basis for the federal jury verdict, and, upon appeal by WesternGeco, the Federal Circuit in May determined that three of the four patents were invalid. Meanwhile, in the original case, the US Supreme Court in June ruled in a 7–2 decision that infringement did occur under Section 271 of the Patent Act—which covers the exporting of components for a patented invention for assembly abroad—and that WesternGeco was in fact entitled to lost-profit damages for infringement. The court determined that “the conduct in this case that is relevant to the statutory focus clearly occurred in the United States.” In a subsequent statement to JPT, Schlumberger said it was “pleased” with the high court’s decision. “More importantly,” the company said, the ruling “reinforces our position that, as a technology innovator, we receive the full protection of the Patent Act against those who infringe US patents.”

Interference proceedings and innovation goals of the CRISPR-Cas9 patent

... The United States' Patent Trial and Appeal Board (PTAB), formerly US Patent and Trademark Office’s Board of Patent Appeals and Interferences (BPAI),1 decided a highly contested interference proceeding concerning the Type-II CRISPR-Cas9 gene editing technology in February 2017.2Clustered regularly interspaced short palindromic repeats (CRISPR) has been hailed as one of the most important innovations of bio-science in the 21st century.3 It allows scientists to edit gene sequences in an effective manner, akin to a word processor. This is a sharp improvement from pre-existing methods like Transcription Activator-Like Effector Nucleases (TALENs) and Zinc-Finger Nucleases (ZFNs) in biological research.4 CRISPR is an adaptive immune process first noticed in bacteria. Jennifer Doudna, of the University of California, and Emmanuelle Charpentier, now at the Max Planck Institute for Infection Biology, published an article in 2012 demonstrating the use of this process to edit genome sequences in vitro (‘Jinek 2012’).5 By delivering a synthetic RNA protein, the CRISPR-Cas9 enzyme could be guided to a specific gene site. The process enabled them to remove specific genes or add new ones and change the genetic sequencing. Doudna and Charpentier filed for a patent before the USPTO in March 2013.

Tribal Sovereign Immunity as a Defense in Overcoming IPR Challenges of Brand Name Pharmaceutical Patent Validity at PTAB – Effects on the Industry

Tribal sovereignty has been recognized by the American government since the establishment of the United States and tribal sovereign immunity has been a part of American jurisprudence for over a century. Tribal sovereign immunity continues to play an important role in modern times, especially in the last few years with the rise of inter partes review (IPR) proceedings stemming from the America Invents Act of 2011. IPR proceedings are filed with the United States Patent and Trademark Office (USPTO) and heard by the Patent Trial and Appeal Board (PTAB) as an alternative to or in conjunction with traditional patent litigation in the U.S. Court of Appeals for the Federal Circuit. Therefore, patent owners may have to defend their patents both at PTAB and in federal court.PTAB has recently granted its first motion to consider the issue of tribal sovereign immunity as it relates to patents covering the branded drug Restasis®. This case involves two giants of the pharmaceutical industry: Allergan PLC (Allergan), a brand name drug manufacturer who holds the Restasis® patents, and Mylan N.V. (Mylan), a generic pharmaceutical company.

The New World of Agency Adjudication

In 1946, the Administrative Procedure Act (APA) set forth the criteria for “formal” adjudication, requiring an administrative law judge to make the initial determination and the agency head to have the final word. That is the lost world. Today, the vast majority of agency adjudications Congress has created are not paradigmatic “formal” adjudications as set forth in the APA. It turns out that there is great diversity in the procedures by which federal agencies adjudicate. This new world involves a variety of less-independent administrative judges, hearing officers, and other agency personnel adjudicating disputes. But, like in the lost world, the agency head retains final decision-making authority. In 2011, Congress created yet another novel agency tribunal — the Patent Trial and Appeal Board (PTAB) — to adjudicate patent validity disputes between private parties. Questions abound concerning the PTAB’s proper place in the modern administrative state, as its features depart from the textbook accounts of APA-governed “formal” adjudication. Many of these questions are working their way through the Federal Circuit and to the Supreme Court. Indeed, the Supreme Court recently held in Oil States Energy Services that PTAB adjudication does not unconstitutionally strip parties of their property rights in issued patents—while expressly leaving open many questions concerning the limits of administrative adjudication. This Article situates PTAB adjudication within administrative law’s larger landscape of agency adjudication. By surveying this new world of agency adjudication, we find that PTAB adjudication is not extraordinary. But we also identify one core feature of modern agency adjudication that is absent at the PTAB: the Director of the Patent and Trademark Office lacks final decision-making authority. To be sure, the Director has some power to influence outcomes: in the past, she has ordered rehearing of cases and stacked the board with administrative patent judges who share her substantive vision. But these second-best means of agency-head control raise problems of their own, including constitutional questions and inefficiencies in agency performance. This Article concludes by exploring alternative mechanisms that would remedy the lack of agency-head review at the PTAB.

The Scope of IPR Estoppel: A Statutory, Historical, and Policy Approach

When Congress implemented inter partes review (IPR) and other patent post-grant proceedings through the passage of the America Invents Act (AIA) in 2011, it provided that petitioners would be estopped in later proceedings from raising grounds for invalidity that they “raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2). However, substantial uncertainty in courts’ interpretation of this provision causes an enormous impact on an accused patent infringer’s decision of whether and on what grounds to petition for review. One reading of the statutory estoppel provision suggests that “during that inter partes review” refers to the time period after institution of the IPR and before a final decision from the Patent Trial and Appeal Board (PTAB). However, although the Federal Circuit has generally favored a textualist reading of this statute, it has yet to address how the estoppel standard would apply to grounds that the petitioner chose not to include in the petition for IPR. Lower courts have taken widely divergent approaches in this and various other factual scenarios where estoppel might apply, with some courts assessing legislative history to determine that Congress intended estoppel to apply broadly to any grounds that could have been raised in the petition. These courts often engage in complex assessments of what prior art the petitioner should have known about and added to the petition, which adds unnecessary complexity and cost to their determinations. This Article will explain that a narrow, textualist reading of the IPR estoppel provision is consistent with Supreme Court precedent on statutory interpretation and is justified in light of the strict limits on IPR petitions adopted by the PTAB—limits that Congress did not foresee and which effectively restrict the grounds for invalidity that a petitioner may raise during the IPR. When the Federal Circuit or the Supreme Court next has occasion to consider this issue, it should hold that IPR estoppel applies narrowly only to grounds actually raised and instituted.

The "Broadest Reasonable Interpretation" and Applying Issue Preclusion to Administrative Patent Claim Construction

Inventions are tangible. Yet patents comprise words, and words are imprecise. Thus, disputes over patents involve a process known as “claim construction,” which formally clarifies the meaning of a patent claim’s words and, therefore, the scope of the underlying property right. Adversarial claim construction commonly occurs in various Article III and Article I settings, such as district courts or the Patent Trial and Appeal Board (PTAB). When these proceedings ignore each other’s claim constructions, a patent’s scope can become inconsistent and unpredictable. The doctrine of issue preclusion could help with this problem. The Supreme Court recently reemphasized in B & B Hardware v. Hargis Industries that administrative decisions can have issue preclusive effect. But district courts and the PTAB use formally different legal standards in claim construction, where the district court takes a narrower view of a patent’s scope. This Note contends that a claim construction determination made by the PTAB under the “broadest reasonable interpretation” standard should, indeed, be the broadest reasonable interpretation of a claim. To facilitate uniformity and public notice, issue preclusion should be applied such that the PTAB’s “broadest reasonable interpretation” is an outer interpretive bound of a patent’s scope in subsequent district court litigation.

Patent Validity Review in an Article I Tribunal is Unconstitutional Under the Public Rights Doctrine

In 2011, Congress passed legislation authorizing the Patent and Trademark Office (PTO) to institute an inter partes review (IPR) of issued patents. Congress sought to solve a problem driven by a narrative that criticized low patent quality and suggested that the solution would be after grant patent reviews in the PTO. This experiment in patent validity review in the PTO, an executive agency, and the Patent Trial and Appeal Board (PTAB), an Article I tribunal in the PTO, has been unsuccessful. The evidence shows that 76% of patents in which a patent review is instituted result in cancellation of challenged claims in the PTAB, compared to 28% of patents invalidated in U.S. district courts. The main reason for the disparity in patent invalidity rates lies in the application of low standards for due process in the PTO. Unlike in the Article III courts, which maintain high standards for due process, PTAB sustains minimum standards of due process. The justification for patent validity review in an executive agency lies in Congressional power to establish an Article I tribunal to resolve matters that may involve a public right. The public rights doctrine is specified in a line of Supreme Court cases from Murray’s Lessee (1856) to Stern (2011). While a strong case can be made that patents embody private property rights, that patent disputes are between private parties and that patents are adjudicated in common law in federal courts by judges and juries, even if one grants the argument that patent validity review in an Article I tribunal may be made according to the public rights exception jurisprudence, the actual procedures employed by PTAB illustrate that IPRs are unconstitutional according to any standard of application of the public rights doctrine. The chief constraints of the public rights doctrine involve consent and due process by an Article I tribunal and review of tribunal determinations by an Article III court. None of these features are present in the PTAB review of issued patents. In fact, the PTAB has shown a massive number of institutional abuses of IPRs that have undermined its legitimacy and negated its determinations. This paper elucidates the public rights doctrine by reviewing in detail the Supreme Court jurisprudence. The argument is advanced that even if the public rights doctrine is applicable – an assumption that is historically unjustified in light of the application of private rights in common law to patent validity review in the last two hundred and twenty five years – the PTO and the PTAB do not satisfy any of the public rights tests of legitimacy. Consequently, the review of patent validity in an Article I tribunal such as PTAB is unconstitutional. The Court should restore the exclusive domain for patent validity review to Article III courts in order to preserve the independence of the judiciary and the separation of powers.

Delayed entry settlements at the patent office

The Patent Trial and Appeal Board (PTAB) is a recently-formed division of the Patent Office in which patents can be challenged as invalid, and which differs from federal courts in a number of respects. We investigate whether monopolist-patentees and their prospective rivals are using the PTAB—which has not previously received antitrust attention—as a platform for striking settlements that delay the rivals’ entry. Such settlements are common in pharmaceutical markets, and are typically antitrust violations in cases where the patentee pays the challenger (“pay for delay”). However, problematic statutory inducements lead to excessively-delayed competition even in lieu of such payments. Our empirical findings suggest that delayed entry settlements are now commonly executed in the PTAB, and that they comprise a large majority of all PTAB settlements reached between pharmaceutical rivals. Further, nearly half of the delayed entry settlements were reached after the relevant patent claims were deemed “reasonably likely” to be invalid.

The Hatch-Waxman Act, Post-Grant Review, and the PTAB: A New Sort of Competition

In FTC v. Actavis, the Supreme Court declined to adopt a rule making reverse payment settlements per se unlawful under the antitrust laws. Instead, the Court concluded that such settlements could be unlawful under the rule of reason. The Court’s decision further fueled an already-existing debate about the proper treatment of various elements of reverse payment settlements under the antitrust laws. This debate suggests that the Actavis decision has not fully resolved the “turducken” problem presented by these sorts of cases. Difficult questions of antitrust law remain contained within what ultimately began as a patent lawsuit. In addition, it suggests that settlements will not necessarily become any less likely, but instead may become more complex in order to obfuscate the purpose and value of the settlement. As a result, the public will continue to be deprived of the benefit of having a determination as to the validity of the underlying patent claims. And consumers will continue to be harmed by sustained and illegitimate monopoly prices.This Article finds hope in the new inter partes review (IPR) procedure before the Patent Trial and Appeal Board (PTAB) introduced as a part of the America Invents Act (AIA). The IPR procedure offers a few benefits: a faster determination; litigation proceeding in parallel to district court litigation, which can effect competition among tribunals as well as competition among generic drug manufacturers seeking FDA approval; and a more favorable standard for interpreting patent claims.But these features alone are not enough to deter settlement and effect earlier generic entry, so this Article proposes a few additional changes. First, I propose that the PTO issue a rule requiring that, whenever the patent claims at issue cover a drug already approved for marketing by the FDA, the PTAB be required to proceed to a final written decision, regardless of whether the parties settle. Second, I propose that the Hatch-Waxman Act be amended to make the 180-day exclusivity period contestable, such that it may be awarded to the applicant for FDA approval that first obtains a determination, whether before a federal district court or the PTAB. Third, and finally, I propose that the Hatch-Waxman Act be amended so that determinations by the PTAB invalidating patent claims effect the same consequences as a federal district court determination invalidating a patent.

Brief of Professor Dmitry Karshedt as Amicus Curiae Supporting Petitioner in Oil States Energy, LLC v. Greene's Energy Group, LLC

Petitioner Oil States Energy Services sued respondent Greene’s Energy Group in a district court on several counts, including patent infringement. Greene’s then petitioned the U.S. Patent and Trademark Office (PTO) to challenge the validity of the patent claims asserted in the litigation. The PTO cancelled the claims, and the Court of Appeals for the Federal Circuit summarily affirmed that determination. Had this Court not granted certiorari, the petitioner’s patent infringement cause of action would have been extinguished by the PTO’s decision. The error made by the Federal Circuit in the opinions that bound the court in the instant case, and repeated by respondents in certiorari briefing, lies in the attempt to classify patents as either public or private rights in a categorical manner – that is, in isolation from any particular cause of action. This framing is improper because, under this Court’s precedents, the question whether a case involves a private right that must be adjudicated by an Article III tribunal relates to a particular legal action or claim, not the underlying privilege or property interest. Under the correct approach, which takes into account the context in which the PTO makes its invalidity decisions, the Inter Partes Review (IPR) statute at issue in this case should be held unconstitutional because it empowers an agency to resolve a claim of private right: an action for patent infringement. The cause of action for patent infringement is a private right because it has long been recognized as a species of trespass claim by which the plaintiff typically seeks, among other remedies, monetary relief for past harm from another private party. Because of its historic characterization as a trespass, infringement has a close kinship to common-law claims that this Court has recognized as private rights that cannot be adjudicated outside Article III courts. Invalidity is one of several, enumerated affirmative defenses that a defendant in a patent case may plead in response to an allegation of patent infringement. The IPR statute effectively removes this affirmative defense to infringement from Article III courts, and empowers the Patent Trial and Appeal Board (PTAB), an arm of the PTO, to decide it. In many cases, including one involving these very litigants, a determination of invalidity by the PTAB has extinguished parallel district court actions for patent infringement. This delegation of judicial power over such causes of action to a body that is not a part of the judiciary, and not an adjunct to an Article III court, is constitutionally forbidden by this Court’s precedents. The IPR statute offends the doctrine of separation of powers for another, closely related reason: It effectively grants to the PTAB the power to direct that pending cases be dismissed. Although Congress can constitutionally abate extant claims by amending applicable law while the litigation is pending, Congress in this case delegated to an agency the power to extinguish a claim by adjudicating an affirmative defense in favor of a defendant. Because the PTAB here fully resolved a claim concurrently pending in a district court, it violated the rule that coordinate branches cannot direct Article III courts to dispose of specific cases in a particular way. The doctrine of separation of powers exists in part to prevent abuses that might eventuate if claims of private rights are adjudicated outside Article III courts. By empowering the Executive Branch to resolve such disputes in the patent infringement context, the IPR statute weakens Article III safeguards of impartial adjudication, and therefore contravenes separation of powers principles.

Analytics of Patent Case Rulings: Empirical Evaluation of Models for Legal Relevance

Recent progress in incorporating word order and semantics to the decades-old, tried-and-tested bag-of-words representation of text meaning has yielded promising results in computational text classification and analysis. This development, and the availability of a large number of legal rulings from the PTAB (Patent Trial and Appeal Board) motivated us to revisit possibilities for practical, computational models of legal relevance - starting with this narrow and approachable niche of jurisprudence. We present results from our analysis and experiments towards this goal using a corpus of approximately 8000 rulings from the PTAB. This work makes three important contributions towards the development of models for legal relevance semantics: (a) Using state-of-art Natural Language Processing (NLP) methods, we characterize the diversity and types of semantic relationships that are implicit in practical judgments of legal relevance at the PTAB (b) We achieve new state-of-art results on practical information retrieval using our customized semantic representations on this corpus (c) We outline promising avenues for future work in the area - including preliminary evidence from human-in-loop interaction, and new forms of text representation developed using input from over a hundred interviews with practitioners in the field. Finally, we argue that PTAB relevance is a practical and realistic baseline for performance measurement - with the desirable property of evaluating NLP improvements against “real world” legal judgement.

Inventive steps: the CRISPR patent dispute and scientific progress: The recent patent decisions about CRISPR tell us a lot about how advances in biology are actually made-and how they are not.

Recent decisions by patent offices in the USA and Europe concerning the revolutionary gene‐editing technology, CRISPR/Cas9, have shed light on the importance—and puzzles—of one particular area of patent law: “nonobviousness”, as it known in the USA, or, in Europe, the “inventive step”. In February 2017, the US Patent Trial and Appeal Board (PTAB) found that the work of Feng Zhang, a researcher at the Broad Institute in Cambridge, MA, USA, constituted a “nonobvious” advance over the celebrated work of Jennifer Doudna of the University of California, Berkeley (USA) and Emmanuelle Charpentier, then at Umea University, Sweden [1]. As a consequence, the Broad Institute will be able to keep its US patents covering the technology irrespective of how Doudna and Charpentier's patent application proceeds. By contrast, the European Patent Office (EPO) announced that it had granted Doudna and Charpentier's European patent application covering broad uses of CRISPR/Cas9 in essentially any cell type, despite the US Patent Office's decision to the contrary [2]. Other parties—including the Broad Institute—will be able to challenge Doudna and Charpentier's European patent. But for now, the EPO's decision is an implicit recognition that Doudna and Charpentier's work was, itself, a major “inventive step” over the work that came before it. Patent law does not always neatly align itself with the realities of biological research. But these competing decisions have put those differences on parade. The US decision in particular—and even the nature of the controversy between the two US research institutions—has been widely criticized by scientists. One prominent researcher, Michael Eisen from the University of California, Berkeley, has taken particular issue with the PTAB's articulation of the typical manner in which molecular biologists adapt discoveries to different cell systems. “[O]ne can believe that it was obvious that CRISPR would work in eukaryotic cells, …

Fee Shifting for PTAB Proceedings

Fee shifting in patent litigation has been a hot topic in recent years. In Octane Fitness v. ICON and Highmark v. Allcare, the Supreme Court made it easier to shift fees under 35 U.S.C. § 285, which allows courts to award reasonable attorney’s fees to prevailing parties in patent cases. Moreover, several bills have been introduced in Congress since 2013 that would expand courts’ power beyond the parameters of § 285. Various aspects of these proposals have been heavily debated, including whether fee shifting should be mandatory or discretionary, how to recover fees from the “real party in interest,” and whether to adopt a one-way or two-way fee shifting scheme. These sort of design choices regarding a fee shifting regime are not simply about who should pay for patent litigation. Fee shifting schemes also provide a roadmap from lawmakers about whether and how litigation ought to proceed. Fee shifting regimes, in other words, are used to influence litigation conduct. Thus, if Congress is going to alter the fee shifting landscape for patent litigation, it must make careful choices in order to incentivize certain types of patent disputes, while simultaneously discouraging others. This Article does not advocate for a new fee shifting regime for patent litigation, nor does it endeavor to design one. Instead, it focuses on one narrow but important question about fee shifting in patent cases that has received surprisingly little attention: whether prevailing parties should be able to recover attorney’s fees incurred for litigation before the Patent Trial and Appeal Board (PTAB) — the administrative tribunal of the U.S. Patent & Trademark Office that was created by the America Invents Act (AIA). With the steep rise in both PTAB proceedings (post-AIA) and fee motions (post-Octane/Highmark), district courts are bound to face this question more frequently. While the U.S. Court of Appeals for the Federal Circuit has allowed for the recovery of such fees in the past, the Federal Circuit’s analysis was flawed in light of Supreme Court precedent. Thus, this Article proposes that Congress enact legislation allowing parties who prevail at the PTAB to recover their attorney’s fees.