On August 5, 2014, LaRose Industries, LLC (“LaRose”) filed a petition seeking a post-grant review of U.S. Patent No. 8,684,420 (“the ‘420 Patent”), generally directed to a loom used to weave elastic items together to form wearable articles, such as bracelets.  See PGR2014-00008, Paper 1 .  The petition marks a milestone for the new post-grant proceedings created by the America Invents Act (AIA) in that it is the first-ever petition for a non-Covered Business Method Post-Grant Review (PGR).  This case is also noteworthy because of the issues it presents related to the effect of introducing arguably new subject matter into the claims of a transition patent application (i.e., a patent application filed on or after March 16, 2013 that claims priority to an application filed before March 16, 2013).

Similar to Inter Partes Reviews (IPRs) and Covered Business Method Reviews (CBMs), PGRs allow non-patent owners to challenge the validity of issued patents before the Patent Trial and Appeal Board (PTAB) in an expedited, trial-type setting.  PGRs, however, have several notable differences that offer unique advantages compared to IPRs and CBMs.  For example, unlike IPRs, PGRs may rely upon any ground of invalidity available under 35 U.S.C. § 282 to invalidate a patent, including unpatentable subject matter (35 U.S.C. § 101) and indefiniteness (35 U.S.C. § 112).  Additionally, PGRs are not limited to specific technologies, as are CBMs, which are only available for certain “covered business method patents.”

LaRose’s petition seeks to invalidate Claims 1-7 and 9-16 of the ‘420 Patent on numerous grounds, including, among others, indefiniteness, lack of written description, and lack of enablement – grounds that are unavailable in IPRs.  Additionally, because the ‘420 Patent is directed to a mechanical device, it is not subject to a CBM review.  As a result, PGR is the only post-grant proceeding in which the ‘420 Patent can be challenged on all of the grounds asserted in LaRose’s petition.

LaRose’s petition also highlights another notable difference between IPRs, CBMs, and PGRs – namely, that PGRs are only available for patents subject to the AIA’s First-Inventor-to-File provisions.  That is, PGRs are only available for patents that issue from applications that contain or contained at any time: (A) a claim to a claimed invention that has an effective filing date on or after March 16, 2013 or (B) a specific reference to such a patent. 

The ‘420 Patent was filed on July 26, 2013 but, through a series of continuation applications, claims priority to U.S. Patent No. 8,485,565 (“the ‘565 Patent”), which has a filing date of September 8, 2011 – before March 16, 2013.  Thus, if the claims of the ‘420 Patent are entitled to the filing date of the ‘565 Patent, the ‘420 Patent is not available for PGR.  In an attempt to avoid this result, LaRose asserts in its petition that the claims of the ‘420 Patent introduce several new claim limitations that are not supported by the ‘565 Patent, and thus have an effective filing date after March 16, 2013. 

Before the PTAB can rule on the merits of LaRose’s invalidity arguments, it will have to resolve the threshold issue of whether the ‘420 Patent qualifies for PGR.  In doing so, the Board will likely have to interpret and apply several provisions of the AIA related to the effective filing date of transition patent applications.  This case is therefore likely to provide some guidance on the effect of introducing arguably new subject into the claims of transition patent applications.