By Matthew L. Cutler, Principal
At long last, a Petitioner has dipped its toes in the Post-Grant Review waters, filing the first ever PGR petition in LaRose Industries, LLC v. Choon’s Design Inc., PGR2014-00008. The popular “Rainbow Loom” is the commercial embodiment of the patent claims at issue.
The patent at issue is, of course, a “first to file,” post-AIA patent, having been filed after March 13, 2013 (US Patent No. 8,684,420). Jurisdictional basis for a Post-Grant Review may, however, be at issue, as the patent claims priority to numerous earlier-filed patents. Petitioner argues, however, that the claims are based on new subject matter that was added in the post-AIA application. See, e.g., Petition at 5, 23-36.
The bases for the petition include 35 USC §§ 102, 103, and 112. The first ground discussed in the petition is a challenge under §112 that the challenged claims lack written description support in the specification (Petition at 45), are indefinite (Id. at 46-47), and are not enabled (Id. at 48). Also particular to Post Grant Review procedures is the assertion in the Petition that the challenged claims are anticipated by the commercial embodiment of a competitive product. Inter Partes Review procedures are, of course, limited to 102 and 103 grounds based on patents and printed publications. Here, the actual sale of a product is serving as the basis for the 102 challenge – proper subject matter for a PGR.
Another new era in patent litigation has begun and we look forward to watching the developments in this and future PGR proceedings.