Researching The 2011 America Invents Act (AIA)

In an effort to weed out invalid patents, the 2011 America Invents Act provided a new proceeding that enables third parties to challenge the validity of newly issued patents. Professor Shubha Ghosh, the Crandall Melvin Professor of Law at Syracuse University College of Law, is gathering data about these proceedings.

Professor Ghosh has started a research project involving a new development under the 2011 America Invents Act (AIA), the introduction of administrative procedures for third parties to challenge the validity of recently issued patents, specifically inter partes review.

While this procedure was implemented to weed out invalid patents, parties can settle an inter partes review proceeding (IPR) under section 317 if approved by the Patent Trial and Appeals Board (PTAB). Although the details of the settlement are not disclosed, one can identify the parties and the technologies involved. There have been over five hundred approvals by the PTAB since the implementation of the IPR proceeding in 2011.

This paper examines which companies are repeat players in IPR settlements, which industries are represented systematically in section 317 settlements, and what technologies are involved. This data isĀ compared with the larger population of adjudicated IPR proceedings to identify patterns in settlement.

Professor Ghosh presented preliminary findings atĀ  PatCon7, an annual meeting of patent scholars and practitioners held this year at Northwestern Law School. In his presentation, he showed that many of settlements occur when the patent owner is a nonpracticing entity and in the context of ongoing, complex litigation involving multiple patent infringers. Future work will examine how the timing of the settlements synchronize with critical events in concurrent patent litigation, such as summary judgment or litigation settlements.

Professor Ghosh will collaborate with practitioners he met at the Conference by combining more complete data sets on patent litigation and 317 settlements. This research project will lay a foundation for analysis of settlements of post-grant reviews, another innovation under the AIA.