Sec. 806. 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 new paragraph: 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 issued claim by clear and convincing evidence. . Section 321 of title 35, United States Code, is amended by adding at the end the following new subsection:
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 a 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 review 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 on the likelihood that the petitioner will prevail under subsection (a)(1) shall be final and nonappealable. A determination by the Director not to institute a post-grant review under this section shall be final and nonappealable. Any aspect of a determination by the Director to institute a post-grant review under this section, other than a determination described in paragraph (1)(A), may be reviewed during an appeal of a final written decision issued under section 328(a). . 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 new subsection: 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 subsections
(f)and (g), is further amended— by redesignating subsections
(c)through
(g)as subsections
(d)through (h), respectively; and by inserting after subsection
(b)the following new subsection: 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. 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) .
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Sec. 806
Post-grant review
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