Found Patentable -or- Not Proven Unpatentable

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by Dennis Crouch

In an Inter Partes Review (IPR), the PTAB generally focuses on whether or not the claims have been proven unpatentable.  If the patentee, the PTAB has a general approach of issuing a declaratory order that the claims “have not been shown, by a preponderance of the evidence, to be unpatentable.”  The evidentiary-and-burden caveats from the PTAB leave substantial wiggle room about whether the claims are valid or invalid in any more abstract sense.  We would be better off if the PTAB was able to make a positive statement — concluding that the claims are patentable.

The AIA calls for the Board to “issue a final written decision with respect to the  patentability of any patent claim challenged by the petitioner.”  35 U.S.C. § 318(a).  This portion of the statute suggests to me that the Board’s declaration should be a  more direct decision about patentability.  That interpretation is bolstered by  § 318(b) which suggest that every challenged claim will have either been “determined to be unpatentable” or “determined to be patentable.”

Section 318(b) referred to above particularly calls upon the USPTO director to receive the Board’s decision and then issue an Inter Partes Review Certificate “canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.”  Following the language of the statute, the PTO Director has a practice stating that claims maintained by the PTAB “are found patentable.”  Thus, the Official Certificate appears to makes a claim about patentability (as required by the statute) rather than merely about the level of evidence provided.

In some ways, this is all semantics, but I would suggest that can matter quite a lot to a later tribunal to see a positive statement of patentability as opposed to a caveat filled statement regarding a claim not-proven-unpatentable. At the same time, asking the PTAB to positively rule on patentability suggests opening-the-door to broader patentability questions.

24 thoughts on “Found Patentable -or- Not Proven Unpatentable

  1. 7

    Since an IPR does not have a preclusive effect as to grounds for invalidity that could not have been raised in the IPR, such as failure to comply with 35 U.S.C. § 112 or invalidity due to a prior sale or prior public use, the IPR statute does not empower the USPTO to proclaim that a patent is valid in an absolute sense.
    A federal court is also bound by the particular facts brought before it by the parties, so that such a statement in court decisions is also questionable. It carries weight only insofar that a retrial is precluded by the doctrines of res judicata or issue preclusion.
    There does not appear to be any necessity to state that a patent is valid in view of the protections already in place against retrial of the same issues. Stating that a patent has not been proven invalid in the case at hand seems to be sufficient to convey the outcome without the risk of false assumptions that may arise under the emphatic statement that a patent has been proven valid.

  2. 6

    It’s just semantics and the PTO probably felt constrained by the statutory language governing IPR certificates. Saying the claims were “found patentable” after an IPR Final Written Decision suggests the PTAB did more than it actually did. All the PTAB did in this scenario is reject the specific prior art challenges raised this particular IPR petition, and it doesn’t preclude different challenges from other IPR petitioners in the future. The “found patentable” language suggests the PTAB conducted some kind of searching and independent review, which obviously it didn’t. The PTAB has very little latitude to deviate from the specific grounds raised by IPR petitioner, in contrast to reexamination where examiners have freedom to raise new prior art and issue rejections beyond what the third party requester proposed.

    Incidentally this “found patentable” language is somewhat similar to what the PTO says in reexamination, where certificates say “the patentability of claims xxxx is confirmed.”

  3. 5

    Option C. Not “securing to inventors the exclusive right to their discoveries.”

  4. 4

    This kind of conclusion is similar to criminal cases. A person is found “not guilty” rather than “innocent.” They imply very different things. “Innocent” implies that the person didn’t commit the crime while “not guilty” implies that the prosecution has not proven their case beyond a reasonable doubt. The same goes here with patentability. There is no way to ensure that every possible bit of invalidating prior art has been considered in an IPR (or during examination), so the best conclusion is that the patent has not been proven unpatentable. That does not preclude the possibility that invalidating prior art could be found in the future. Look at how many times anticipatory prior art is found in IPRs. That clear means that something failed during examination. Maybe the Examiner missed the reference or may the Examiner interpreted it incorrectly. Either way, the end result is that claims that should not have been issued were allowed.

    1. 4.1

      Yes, Dvan, I agree. In England, we have just seen a patent validity issued at trial, where the testimony of the witnesses under cross-examination in front of the eyes of the judge (sitting alone) was decisive to the outcome, whether the inventor’s pre-filing “field trial” made his seed drill “available to the public” prior to the date of the claim. For me, the outcome is very unsatisfactory. I am sceptical of the way the witnesses were examined in court.

      I wonder, is this English trial relevant to the other thread, how to cure the nuisance of “low quality” patents. You see, the EPO looked at essentially the same patent, the same claim, in just as hotly disputed opposition proceedings, and went about its business in a very different way.

      link to

      1. 4.1.1

        For someone so “around the block,” your views are based alarmingly on your ‘feelings.’

  5. 3

    I think IPRs could be made a lot more palatable if there had to be a showing that the prior art was substantially different than the prior art used in examination or that there was an error in examination.

    But the game now is to use similar arguments over and over again with different but equivalent prior art.

    1. 3.1

      I think that technically speaking, what you seek is supposed to be how it is.

      I recall some discussion of the significance of the level that had to be reached with any asserted art, and that level most definitely was not to be any “merely equivalent” art.

      (But as noted by Justice Gorsuch, we already have ‘political abuses’ in the current system)….

      1. 3.1.1

        Yes, plus the statutory IPR estoppel provisions and the frequent denials of similar or follow-on IPRs

  6. 2

    The PTO issued the patent in the first place, meaning that the claims are patentable. The IPR should say “nothing has changed.”

    Giving the efficient infringers serial bites at the apple is just not fair. And, if the goal of the patent system is to disseminate information about new inventions (including how to make and how to use), adding so much burden to applicants in disclosing that information is counterproductive.

    Furthermore, the facts that the applicant thought the invention was new, the PTO thought it was new after the initial exam, and the IPR did not find otherwise means that whatever additional searching for prior art must be looking for art that those of ordinary skill are not aware of.

    How does it help the dissemination of knowledge to kill the incentive to disseminate by relying on prior art that those of ordinary skill are not aware of?

    1. 2.1


      You do recall that PHOSITA is a legal fiction, and that any touchstone with what any real person would actually do vis a vis finding prior art is not on the table, right?

      That legal fiction aspect has to do with “State of the Art” as well as ‘finding.’

      1. 2.1.1

        Oh, I understand that current law says that a patent can be attacked using obscure prior art that nobody has paid any attention to in a long time.

        My point is that there is no public policy reason for that to be the case, and the public policy of incentivizing making information available by putting the info in a patent should outweigh that archaic standard.


          I disagree with the assertion that there is no public policy reasoning – and already indicated one above: That legal fiction aspect has to do with “State of the Art” as well as ‘finding.’

          The use of the term ‘archaic’ indicates that you may believe that ‘re-patenting’ is a viable concept.

          Otherwise, it appears to be an emotive word on something that you may simply dislike (as opposed to there NOT being a policy reason for).

          I remain unpersuaded by your reply.


            Public policy usually means a policy intended to help the public in general or a subset of the general public.

            I don’t see where ” That legal fiction aspect has to do with “State of the Art” as well as ‘finding.'” constitutes a public policy. Can you enlighten me, or reconsider?


              Sure – it has to do with the fact that the Quid Pro Quo is only offered for things not within the state of the art (regardless — to a certain degree — of any actual real person ‘using’ the state of the art).

              What you appear to want is something other than a patent (per se) – a type of ‘inducement’ to use what may in fact be within the state of the art but just not being actively used.

              I can see potential value in that, but such is simply beyond the concepts of patent law.


                I agree that “the Quid Pro Quo is only offered for things not within the state of the art”

                But if those practicing in the art are not aware of something and in fact it is so obscure that even searching with the benefit of the hindsight provided by patentee’s disclosure only turns it up after hours and hours of expert searching, how can it be said to be within the state of the art?

                1. Because as a factual matter, it IS within the state of the art.

                  You now seem to not want to treat PHOSITA as a legal construct.

                  It should be clear that you are the one veering away from established patent policy.

                  As I noted, it is not that I do not see some value in what you want – but we both should be clear that what you want is not what patent law provides.

                  In other words, what you want would be met by a legal re-calibration of what the legal fiction of PHOSITA entails.

                  Personally, we have bigger fish to fry with eligibility fixes.

                2. That used to be the law of ‘secret prior art’ – secret prior art was not prior art to a patent claim. Google got them to change the law on that one. The amendments to section 102 as I recall. Or was it infringement ? Secret prior internal use can’t be stopped by a patent claim.

                3. iwasthere,

                  Secret prior art has always been a ‘real thing.’

                  Now mind you, the Office sua sponte decided at one point to change its processing of such, but there was no ‘case law’ change on this point.

                  What you may be thinking of is the change in the AIA to provide a new defense to those who do not partake in the patent system and instead want to ‘hog for themselves’ innovation by keeping Trade Secrets with the Prior User Right (an item much akin to a submarine, that need only surface after another party DOES partake in the Quid Pro Quo, goes through the process of obtaining patent protection, and then goes to assert against someone who has documented and provable Trade Secret coverage. In that case, the patent remains good against the rest of the world, and the party that had chosen NOT to partake in the patent Quid Pro Quo is rewarded by being able to free-ride on the coattails of the party that DID partake in the patent system.

                  Yet another abominable aspect of the AIA.

  7. 1

    meh – this appears to be word play on the notion of what a challenge to validity may result in.

    One must ask if there is a big (or any) difference from validity, there be ONLY a possibility of presumption, as one must leave room for prior art that simply has not been uncovered.

    There is a reason why courts have NEVER used the “positive statement” and to the extent that “patentable” and “valid” are in sync, the supposition of “We would be better off if the PTAB was able to make a positive statement” is simply not true.

    1. 1.1

      Even if there is an overlap (see 35 USC 282(b)(2): providing for defense of “invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability”), by statute the defense raised in district courts is “invalidity” and so the result is either “invalid” or “not invalid.”

      In contrast, before the PTO, 35 USC 102 provides that “a person shall be entitled to a patent unless” a condition of patentability is not met. Therefore, it seems that if the examiner or IPR petitioner does not show unpatentability, then the outcome of the PTO proceeding is “patentable.”

      Given the wording of the various provisions in the patent statute, it seems that “invalidity” is an after-the-fact determination of “unpatentability” and so those terms are synonymous. But a determination by the PTO that the invention is “patentable” (i.e., able to be patented) is not the same as a declaration by a court that the patent is “valid.”

      1. 1.1.1

        I hear you – and note the “prospective” effect of “able to be” while what we are dealing with is beyond the point of “prospective” and thus, that semantic aspect cannot be applied.

        I do credit some of this (potential) confusion to Congress, for creating a mechanism for pulling an already granted item back into the Executive Branch (and — strictly at the institution decision point, enacting a taking of one of the sticks in the bundle of patent property rights: the existence and level of the presumption of validity).

        Thus, in an odd sense, with the presumption removed by being back in the Executive Branch domain of the Patent Office, there is a ‘shadow’ of prospectiveness invoked.

        Also recall that this AIA mechanism was passed as an alternative to the Article III process, and thus (likely) meant to NOT invoke prospective aspects.

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