In 2011, Congress passed the America Invents Act ("AIA"), which established new ways to challenge the validity of an issued patent before the U.S. Patent and Trademark Office ("PTO"). These procedures were seen by many as a cheaper alternative to litigation in court and have become popular. Over 1,600 inter partes review ("IPR") petitions were filed with the PTO in 2018 alone. While these AIA procedures take place outside the U.S. court system, the PTO's decision can be appealed to the U.S. Court of Appeals for the Federal Circuit – in certain circumstances. In AVX Corporation v. Presidio Components, Inc., the Federal Circuit examined when a party challenging a patent at the PTO can appeal the PTO's decision to uphold the patent. The court found that a nonspeculative interest in using the claimed features would permit such an appeal.
As explained below, the Federal Circuit's decision contains mixed messages for a party considering challenging a patent at the PTO. On the one hand, a party may be unable to appeal a decision upholding the patent. On the other hand, the court suggested that the same party may not be restrained by the AIA estoppel provisions from challenging the same patent in a later litigation. These competing considerations should be balanced before initiating a patent challenge before the PTO.
Please read a full analysis of this decision here.
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