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ARTICLE · 07 MARCH 2023

A Petitioner's Guide: Navigating Uncertainty On PGR Eligibility

Jones Day
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Samsung Electronics Co. ("Samsung") recently faced the issue of determining whether U.S. Patent No. 11,163,823 ("the ‘823 patent") is a pre- or post-AIA patent.

United StatesIntellectual Property
Ashvi Patel
Ashvi Patel
Joshua Nightingale
Joshua Nightingale
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Samsung Electronics Co. ("Samsung") recently faced the issue of determining whether U.S. Patent No. 11,163,823 ("the '823 patent") is a pre- or post-AIA patent. Hedging its bets, Samsung concurrently filed two petitions—one requesting inter partes review (IPR) of the '823 patent and the other petition requesting post-grant review (PGR). As detailed below, the PTAB found the '823 patent to be PGR-eligible, instituted PGR, and denied the IPR petition.

In 2011, the U.S. patent system was modernized to better align with the rest of the world through the enactment of the America Invents Act ("AIA"). Among other changes, the AIA changed the U.S. patent system from a first-to-invent system to a first-inventor-to-file system. Additionally, the AIA created the IPR and PGR procedures for contesting the patentability of patents. PGRs must be filed within nine months of a patent being issued and are only eligible for first-inventor-to-file (post-AIA) patents, meaning patents

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