PGR May Be The Place For Your 112 Case

Deciding Between PTAB & District Court Venues for 112 Challenges

With an increasing number of issued patents eligible for Post Grant Review (PGR), patent challengers find themselves assessing whether PGR is worth the added estoppel risk.  That is, where a first-inventor-to-file patent is still within 9-months of issuance (PGR window), should a challenger opt for PGR, or await the availability of IPR after the 9th month?

As with many legal questions, the answer is -"it depends."

Because PGR allows for more than just patent and printed publication based challenges (most notably, 112 and 101), the "reasonably could have been raised" estoppel of PGR has a much larger footprint relative to that of IPR.  As such, a patent challenger may opt to wait out the 9-month window to instead pursue IPR, especially in the predictable arts where prior art challenges are typically the best form of validity challenges.  However, in the unpredictable arts, 112 challenges such as