AIA Review Filings Dip in 2023 as Stakeholders Debate PTAB Reform Proposal

The Patent Trial and Appeal Board (PTAB) saw 1,188 petitions for America Invents Act (AIA) review in 2023, including 1,154 petitions for inter partes review (IPR) and 34 petitions for post-grant review (PGR). Filings were 12.5% lower than in 2022, which saw 1,358 petitions.

In the fourth quarter, 278 petitions for AIA review were filed with the PTAB, including 270 IPR petitions and eight PGR petitions. Filings in Q4 were 15.8% lower than Q4 last year (when 330 petitions were filed) but were 5.3% higher than in Q3 2023 (which saw 264 petitions).

That decline came against the backdrop of a familiar debate that continued to simmer in 2023: the question of whether the PTAB needs reform, and if so, what measures should be taken. Among those under consideration is a legislative proposal: the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act, introduced in July. The bill would make a series of significant changes favored by some patent holders, including the imposition of a standing requirement (limiting who may file a PTAB petition), the further expansion of IPR estoppel (requiring that defendants choose between challenging validity at the PTAB or in district court), and new restrictions on the filing of multiple petitions against the same patent. The PREVAIL Act would also require the PTAB to use the same, higher evidentiary standard as district courts for a showing of invalidity, mandate that the Board use the same claim construction standard as district courts, and bar the USPTO director from influencing the outcome of PTAB decisions (though Vidal implemented interim rules to this effect in May 2022 and has recently proposed final rules to formalize the practice).

The Senate IP Subcommittee held a hearing on the PREVAIL Act in early November. Witnesses offered competing takes on the proposal, possibly reflecting the lack of broader consensus that has hamstrung similar bills in the past. Representative Lamar Smith (R-TX), the House cosponsor of the AIA, argued that IPR has come to be used inconsistently with the intent behind the law that created it and that changes should be made to ensure that IPR operates as an alternative to, not in addition to, district court litigation. In contrast, Joseph Matal, who previously performed the duties of the USPTO director (essentially, though not formally, serving as acting director), pushed back on points made as to the PTAB’s alleged hostility to patents. Matal also asserted that while some limits are appropriate to prevent gamesmanship, the proposed bill goes too far—objecting to particular changes, including limits on estoppel, the imposition of a heightened evidentiary standard, and the creation of a standing requirement, among others. Additionally, AIA review practitioner Michelle Armond offered her own, more data-focused take on outcomes at the PTAB now that they have “settled down” and expressed support for reassessing the burden of proof and provisions related to “duplicative litigation”.

See RPX’s fourth-quarter review for more on the PTAB, including a series of internal changes made by the USPTO in response to stakeholder feedback.