Finally, the “PGR” portion of this site is starting to gain some momentum as Accord Healthcare brought the second ever Post Grant Review Petition. Accord Healthcare, Inc. v. Helsinn Healthcare S.A., et al., IPR2014-00010. Accord challenges the validity of the patent-in-suit pursuant to 35 U.S.C. § 112(a) (lack of written description and enablement) and 35 U.S.C. § 112(b) (failure to particularly point out and distinctly claim the subject matter the inventors regard as the invention).
As the “theory” of Post Grant Review has been discussed and evaluated, § 112 grounds, like those raised in this PGR, were considered ripe opportunities for challenges in these new proceedings. The underlying downside of such action, however, was the strong estoppel that attaches to Post Grant Review that will cripple future attempts to challenge the validity of the patent-at-issue. As compared to IPR, where the estoppel can only apply to §§ 102 and 103 grounds, based on printed publications or patents, in a PGR, the estoppel extends to all grounds of invalidity that were raised, or reasonably could have been raised.
Where a § 112 defense is a Petitioner’s best defense, though, it seems likely that such defense will be given a more thorough and competent review at the PTAB, with its stable of technically-oriented and patent-savvy judges, than it would with the typical district court judge in federal court litigation.