United States: Reaching A Milestone: Filing Of The First Ever Petition For A Post-Grant Review

On August 5, 2014, a milestone was reached for AIA trials. For the first time, a petition for a Post Grant Review (PGR) was filed.1 As was the case with the first covered business method review2, the first PGR will likely be quite instructive to practitioners as to how the Patent Trial and Appeals Board (PTAB) will conduct these proceedings.

PGRs are only available for patents that are filed under the AIA's first-to-file provisions (i.e. patents that issue from applications that contain a claim having a filing date on or after March 16, 2013). PGRs are not limited to prior art as the basis for patent invalidity; lack of patentable subject matter and failure to comply with 35 U.S.C. § 112 may also be used as a basis for patent invalidity. However, a PGR has to be filed no later than nine months after the issuance of the patent. As with an inter partes review (IPR), the filing of a PGR gives rise to estoppel for any grounds of invalidity that was raised or could have been raised in during the PGR. 3

The first PGR concerns U.S. Patent No. 8,684,420 (the '420 patent), which issued on April 1, 2014 based on an application filed on July 26, 2013. The '420 patent claims priority to a provisional application filed in 2010. Generally, the '420 patent is directed to a kit and a device for creating a linked item, which is commercially sold as a Rainbow Loom® product. On August 5, 2014, LaRose Industries, LLC (LaRose) petitioned for PGR alleging that all but one of the claims of the '420 patent are unpatentable under 35 U.S.C. §§ 102, 103, and 112.4 Specifically, LaRose alleged that these claims are invalid for being indefinite, not being enabled, and for failing to comply with written description requirement.5 Moreover, the claims were also allegedly anticipated and obvious.

As is not uncommon with AIA trials, LaRose and patent owner Choon's Design (Choon) are also currently involved in a patent infringement litigation in the Eastern District of Michigan. In the District Court litigation, Choon initially alleged infringement of related patent U.S. 8,485,565 (the '565 patent). The '420 patent is a continuation of an application which is a continuation of the '565 patent.  Choon amended the complaint to include the '420 patent once it issued.

The first PGR petition presents an interesting threshold issue for the PTAB. As discussed, a PGR is only available for patent subject to the first-to-file provisions of the AIA. However, the '420 patent has a priority claim back to 2010 – before the critical March 16, 2013 date. Thus, if the '420 patent is entitled to the priority claim, its validity cannot be challenged via a PGR. To establish that the '420 patent can be challenged by a PGR, LaRose's petition outlined in much detail why the '420 patent is not entitled to the priority date. Since this is the first time that the PTAB will have to analyze the issue as to whether a patent may be challenged via a PGR, it is likely that the PTAB response to the Petition (i.e., either the Decision to Institute or the Denial of the Petition) will provide an analytical framework for subsequent PGR petitioners to follow.

Also of interest in the first PGR is the potential issue of patentee estoppel. Pursuant to 37 C.F.R. § 43.73(d)(3), a patentee is "precluded from taking action inconsistent with the adverse judgment [in an AIA trial], including obtaining in any patent... that is not patentably distinct from a finally refused or canceled claim...." LaRose previously challenged the validity of the '565 patent via an IPR.6  The outcome of the IPR was a Final Written Decision with an adverse judgment against the patent owner.7 Specifically, the IPR was resolved by the patent owner filing a Disclaimer to allow cancellation of the claims being challenged in the IPR and requesting that the adverse judgment be issued.8 As such, Choon, the patent owner, is subject to the estoppel provision of 37 C.F.R. § 43.73(d)(3).

In what may likely be the first instance of 37 C.F.R. § 43.73(d)(3) being invoked by a petitioner, LaRose is trying to rely on this adverse judgment to allege that Choon is estopped from contesting the invalidity of the claims of the '420 patent. Specifically, LaRose alleges that the claims of the '420 patent are not patentably distinct over those of the '565 patent. LaRose also alleges that Choon acquiesced to the claims being patentably indistinct because Choon filed a terminal disclaimer in the'420 patent to overcome an obviousness-type double patenting rejection over the '565 patent.

Thus, the first PGR presents significant issues of first impression to the PTAB. Not only will the first PGR likely serve as a model for subsequent PGRs, LaRose' petition will also provide an analytical framework as to how to apply patentee estoppel and how to conduct a priority analysis.


1 PGR2014-00008 

2 SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001

3 35 U.S.C. § 325(e)(1).

4 PGR2014-00008, Paper 1 at 1. 

5 Id. 

6 PGR2014-0008, Paper 1 at pg. 39.

7 Id.

8 Id.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions