Post-Grant Reviews under the America Invents ActJanuary 5, 2017

The America Invents Act implemented the Post-grant Review (PGR) process as a new means of challenging existing patents. PGR differs from Inter Partes Review (IPR) in that PGR allows for a wider array of invalidity challenges. One example of a new challenge allowed under PGR is the ability to challenge the claims as being indefinite. However, Post-grant Review is only available for patents filed on or after March 16, 2013, the date the America Invents Act took effect.

In recent weeks a number of patents have suffered significant defeats during PGR. Tinnus Enterprises LLC sued Telebrands Corp. in the Eastern District of Texas claiming its “Balloon Bonanza”and “Battle Balloons”toys infringed U.S. Patent No. 9,051,066. Tinnus’ U.S. Patent No. 9,051,066 is directed towards a system and method for filling containers with fluids, more specifically to a system and method of filling inflatable containers such as balloons with water. In response to the suit, Telebrands asked the Patent Trial and Appeal Board (PTAB) to analyze U.S. Patent No. 9,051,066 under Post-grant review. The PTAB recently issued a decision stating that Telebrands “has demonstrated by a preponderance of evidence that [12 claims] of the [patent] are unpatentable‚¬, holding that the 12 claims in the patent were invalid as indefinite. Specifically, the PTAB appeared to take issue with the use of the terms “filled”and “substantially filled.‚¬

This is an example of how attempting to broaden the scope of the claims by including less specific terms such as “substantially”can get you into trouble. When the claims were drafted, it is likely that the applicant was seeking to broaden the scope of the claims by including the term “substantially”to capture additional potential infringers. However, under PGR, the specification failed to adequately support and provide the necessary metes and bounds for defining “substantially filled‚¬. This does not mean that the use of broadening terms such as “substantially”are bad in all instances, the drafter must simply be careful to adequately describe and provide sufficient details in the specification to define the term for those skilled in the art.   

In a second instance, US Endodontics was sued in Tennessee federal court in 2014 for infringing two related Gold Standard patents. The lawsuit was filed by a company called Dentsply International Inc., a dental products maker that is the exclusive licensee. At issue was Gold Standard’s U.S. Patent Number 8,876,991, which is directed towards a dental instrument designed to overcome problems that occur during cleaning and enlarging a curved root canal. US Endodontics requested the PTAB analyze the patent under PGR. Dentsply attempted to avoid the challenge under PGR by arguing that U.S. Patent Number 8,876,991 was entitled to an earlier effective filing date that pre-dated the America Invents Act. However, the PTAB held that the prior disclosures did not support the claims of U.S. Patent Number 8,876,991, therefore, U.S. Patent Number 8,876,991 was not entitled to an early filing date and was subject to PGR. Ultimately the PTAB held that US Endodontics “has shown by a preponderance of the evidence that [five claims] of the [patent] are unpatentable.”The PTAB found that the patent to be lacking with regard to the written description, as well as lacking enablement.

Again, this shows the importance of the carefully drafting written description during the application process. Had the prior applications supported the disclosures of U.S. Patent Number 8,876,991, Dentsply may have been able to avoid PGR altogether. Furthermore, no matter how well-crafted your claims may be, the patent may ultimately be worthless if there is insufficient description and detail in the specification.