Sec. 103. Post-grant review
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Section 326(a) of title 35, United States Code, is amended— in paragraph (9), by inserting after substitute claims, the following: including the standard for how substitute claims should be construed, ; in paragraph (11), by striking ; and and inserting a semicolon; in paragraph (12), by striking the period at the end and inserting ; and ; and by adding at the end the following: providing that for all purposes under this chapter— each challenged claim of a patent shall be construed as the claim would be construed under section 282(b) in an action to invalidate a patent, including by construing each challenged claim of the patent in accordance with— the ordinary and customary meaning of the claim as understood by a person having ordinary skill in the art to which the claimed invention pertains; and the prosecution history pertaining to the patent; and if a court has previously construed a challenged claim of a patent or a challenged claim term in a civil action to which the patent owner was a party, the Office shall consider that claim construction. .
Section 326(e) of title 35, United States Code, is amended to read as follows: The presumption of validity under section 282(a) shall apply to a previously issued claim that is challenged during a proceeding under this chapter. In a post-grant review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability of a previously issue claim by clear and convincing evidence. . Section 321 of title 35, United States Code, is amended by adding at the end the following:
In this subsection, the term charged with infringement means a real and substantial controversy regarding infringement of a patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court. A person may not file with the Office a petition to institute a post-grant review of the patent unless the person, or a real party in interest or privy of the person, demonstrates— a reasonable possibility of being— sued for infringement of the patent; or charged with infringement under the patent; or a competitive harm related to the validity of the patent. .
Section 324(a) of title 35, United States Code, is amended to read as follows: Subject to paragraph (2), the Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Director may not authorize a post-grant review to be instituted on a claim challenged in a petition if the Director has previously instituted an inter partes or post-grant review with respect to that claim. .
Section 324 of title 35, United States Code, is amended by striking subsection
(e)and inserting the following: A determination by the Director not to institute a post-grant review under this section shall be final and nonappealable. A determination by the Director to institute a post-grant review under this section may be appealed to the United States Court of Appeals for the Federal Circuit. A party shall file a notice of interlocutory appeal under paragraph
(1)not later than 7 days after the date on which the Director enters the institution decision. An interlocutory appeal filed under paragraph
(1)may challenge the institution decision on any basis except for the determination made under section 324(a)(1). An interlocutory appeal filed under paragraph
(1)shall not stay proceedings in the post-grant review unless the Director or the United States Court of Appeals for the Federal Circuit so orders. An interlocutory appeal filed under paragraph
(1)may be granted at the discretion of the United States Court of Appeals for the Federal Circuit, which may include consideration of whether— the institution decision appears to be in error and mere institution presents a risk of immediate, irreparable injury to the patent owner; the institution decision presents an unsettled and fundamental issue of law, important both to the specific proceeding and generally, that is likely to evade end-of-the-proceeding review; or the institution decision is manifestly erroneous. . Section 325(e)(1) of title 35, United States Code, is amended to read as follows: A person petitioning for a post-grant review of a claim in a patent under this chapter, or the real party in interest or privy of the petitioner, may not petition for a subsequent post-grant review before the Office with respect to that patent on any ground that the petitioner raised or reasonably could have raised in the initial petition, unless, after the filing of the initial petition, the petitioner, or the real party in interest or privy of the petitioner, is charged with infringement of additional claims of the patent. . Section 325 of title 35, United States Code, is amended by adding at the end the following: For purposes of this chapter, a person that directly or through an affiliate, subsidiary, or proxy, makes a financial contribution to the preparation for, or conduct during, a post-grant review on behalf of the petitioner shall be considered a real party in interest of the petitioner. . Section 326(a)(5) of title 35, United States Code, is amended to read as follows: setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to— the deposition of witnesses submitting affidavits or declarations; evidence identifying the petitioner's real parties in interest; and what is otherwise necessary in the interest of justice; . Section 325 of title 35, United States Code, as amended by subsection (h), is amended— by redesignating subsections
(c)through
(g)as subsections
(d)through (h), respectively; and by inserting after subsection
(b)the following: A post-grant review of a patent claim may not be instituted if, in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 ( 19 U.S.C. 1337 ), a court has entered a final judgment— that decides the validity of the patent claim with respect to section 102 or 103; and from which an appeal under section 1295 of title 28 may be taken, or from which an appeal under section 1295 of title 28 was previously available but is no longer available. If, in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 ( 19 U.S.C. 1337 ), a court has entered a final judgment that decides the validity of a patent claim with respect to section 102 or 103 and from which an appeal under section 1295 of title 28 may be taken, the Patent Trial and Appeal Board shall stay any ongoing post-grant review of that patent claim pending a final decision of the court or Commission, as applicable. If the validity of a patent claim described in subparagraph
(A)is finally upheld by a court or the International Trade Commission, as applicable, the Patent Trial and Appeal Board shall terminate the post-grant review. . Chapter 32 of title 35, United States Code, is amended— in section 326(a)(11), by striking section 325(c) and inserting section 325(d) ; and in section 327(a), by striking section 325(e) and inserting section 325(f) . Chapter 32 of title 35, United States Code, is amended by inserting after section 326 the following: During a post-grant review instituted under this chapter, the patent owner may move to take one or more of the following actions with respect to any challenged patent claim being reviewed: Cancel the claim. Propose a reasonable number of substitute claims whose patentability will be adjudicated by the Patent Trial and Appeal Board in accordance with subsection (c). Propose a reasonable number of substitute claims to be examined in an expedited PGR reexamination in accordance with subsection (d). An amendment to a patent under this section may not enlarge the scope of the claims of the patent or introduce new matter. For each challenged claim for which the patent owner seeks to propose a reasonable number of substitute claims, the patent owner shall be required to make a prima facie showing that each substitute claim— responds to each ground of unpatentability on which the post-grant review was instituted; meets the written description requirement under section 112(a); and meets the requirement under subsection
(b)of this section. The petitioner may respond to the patent owner’s initial motion under paragraph
(1)by presenting new evidence. The patent owner shall have not less than 1 opportunity to respond to any new evidence presented under subparagraph (A). Upon the filing of a motion under paragraph (1), the Patent Trial and Appeal Board, in its discretion, may order an expedited patentability report from a patent examiner on a substitute claim. In ordering an expedited patentability report, the Patent Trial and Appeal Board may— order examination of any ground of patentability that is assessed by a patent examiner under chapter 12; and request a non-binding recommendation as to the patentability of a substitute claim. Any party to the post-grant review may file supplemental briefing, including new evidence, addressing the expedited patentability report. The production of the expedited patentability report shall be expedited. The ordering of a patentability report shall constitute good cause, for purposes of section 326(a)(11), to extend the 1-year period for the post-grant review. A patent owner shall be entitled to a substitute claim if the prima facie showing required under paragraph
(1)is not rebutted. If additional evidence of record is presented, the patent owner shall be entitled to a substitute claim unless a preponderance of that evidence proves that the patent owner is not so entitled. Upon issuing a final written decision with respect to each challenged claim, the Patent Trial and Appeal Board may order an expedited PGR reexamination to be conducted under section (d)(2) to consider a substitute claim in lieu of issuing a final written decision on that claim. The Patent Trial and Appeal Board may consider additional motions to amend upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 327 if the patent owner makes the prima facie showing required under paragraph (1). If the Director determines to institute a post-grant review on a challenged claim under section 324, a patent owner may, before any further substantive briefing on the patentability of an instituted claim, move to terminate the post-grant review in favor of an expedited PGR reexamination under paragraph
(2)of this subsection. A patent owner shall be required to show good cause for why an expedited PGR reexamination would further the goals of the patent system, including consideration of whether there are substantial— investments in research directly related to the claimed invention; secondary indicia of non-obviousness, such as commercial success, long-felt but unsolved needs, or failures of persons skilled in the art to develop the claimed invention; or changes in case law governing relevant substantive patentability requirements since the patent was issued. The opening motion and opposition briefs under this paragraph may include new evidence, and further rebuttal evidence may be allowed at the discretion of the Patent Trial and Appeal Board. If the Patent Trial and Appeal Board grants a motion filed under paragraph (1), the patent owner shall cancel each instituted claim and submit a reasonable number of substitute claims for consideration by the patent examiner in an expedited PGR examination under this paragraph. A patent examiner shall complete an expedited PGR examination, excluding any time for appeals, within 18 months. Consideration of the substitute claims in an expedited PGR examination shall follow the procedures established for initial examination under sections 132 and 133, subject to subsection
(b)of this section and modified as necessary to ensure that the procedures are expedited. If the final decision of a patent examiner in an expedited PGR examination is adverse to the patentability of a substitute claim, the patent owner may appeal the decision to the Patent Trial and Appeal Board under section 134(c). If the final decision in an appeal of an expedited PGR reexamination to the Patent Trial and Appeal Board under section 134(c) is adverse to the patentability of a substitute claim, the patent owner may appeal the decision to the United States Court of Appeals for the Federal Circuit in accordance with sections 141 through 144. If the patent examiner determines in an expedited PGR examination that a substitute claim is patentable, and the time for appeal has expired or any appeal proceeding has terminated, the Director shall issue and publish a certificate incorporating in the patent the substitute claim. Any substitute claim determined to be patentable and incorporated into a patent following an expedited PGR examination shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by the substitute claim, or who made substantial preparation therefor, prior to issuance of a certificate under subparagraph (E). . Section 134 of title 35, United States Code, is amended by adding at the end the following: A patent owner may appeal from the final rejection of any substitute claim by the primary examiner in an expedited PGR examination under section 326A(d) to the Patent Trial and Appeal Board, having once paid the fee for such appeal. . Section 141 of title 35, United States Code, is amended— by redesignating subsections
(c)and
(d)as subsections
(d)and (e); and by inserting after subsection
(b)the following: A patent owner who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134(c) of an expedited PGR examination may appeal the Board’s decision to the United States Court of Appeals for the Federal Circuit. . Section 326 of title 35, United States Code, is amended— in subsection (a)(9), by striking subsection
(d)each place that term appears and inserting section 326A ; by striking subsection (d); and by redesignating subsection
(e)as subsection (d). Section 328(a) of title 35, United States Code, is amended— by striking If and inserting Except as provided in section 326A(c)(5), if ; and by striking section 326(d) and inserting section 326A . The table of sections for chapter 32 of title 35, United States Code, is amended by inserting after the item relating to section 326 the following: 326A. Post-grant review amendment practice. .
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Sec. 103
Post-grant review
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