Adjudicating 35 U.S.C. § 112(A): The "Person of Ordinary Skill in the Art" Conundrum and How to Address It

A viable alternative for adjudicating issues under 35 U.S.C. § 112(a) of the Patent Act is needed due to the difficulties of trying these issues to a lay jury. Congress agreed when it enacted the America Invents Act (“AIA”), which created alternative proceedings for challenging patent validity post-grant, including post-grant review (“PGR”) and inter partes review (“IPR”). In theory, PGR proceedings permit the Patent Trial and Appeal Board of the United States Patent and Trademark Office to adjudicate whether one or more claims of a patent are valid on § 112 grounds. In practice, history has shown that the limitations the AIA put on filing PGR petitions have made PGRs an unviable alternative to traditional litigation. Due to concerns associated with relaxing the limitations put on PGR petitions, IPR proceedings should be broadened to permit § 112(a) challenges when a petitioner has been sued in federal court. Limiting IPR expansion to cases where the petitioner has been sued addresses these concerns and better aligns the law with Congress’s original intent to pro- vide a limited but viable alternative to trying § 112(a) grounds to a lay jury.