By Ashvi Patel and Josh Nightingale

Samsung Electronics Co. (“Samsung”) recently faced the issue of determining whether U.S. Patent No. 11,163,823 (“the ‘823 patent”) is a pre- or post-AIA patent.  Hedging its bets, Samsung concurrently filed two petitions—one requesting inter partes review (IPR) of the ‘823 patent and the other petition requesting post-grant review (PGR).  As detailed below, the PTAB found the ‘823 patent to be PGR-eligible, instituted PGR, and denied the IPR petition.

In 2011, the U.S. patent system was modernized to better align with the rest of the world through the enactment of the America Invents Act (“AIA”).  Among other changes, the AIA changed the U.S. patent system from a first-to-invent system to a first-inventor-to-file system.  Additionally, the AIA created the IPR and PGR procedures for contesting the patentability of patents.  PGRs must be filed within nine months of a patent being issued and are only eligible for first-inventor-to-file (post-AIA) patents, meaning patents with an effective filing date on or after March 16, 2013.  In contrast, IPR is available for pre- and post-AIA patents but must be filed after 9 months of issuance for post-AIA patents.

Patent owner Memoryweb sued Samsung in district court for alleged infringement of the ‘823 patent.  The ‘823 patent was filed on August 8, 2019 but claims priority to a prior application filed in 2011.  Accordingly, the ‘823 patent is a “transition patent”—i.e., a patent filed on or after March 16, 2013 that claims priority to an application filed before March 16, 2013.  The ‘823 patent would therefore be eligible for PGR only if it contained a claim not supported by the 2011 priority application.

To preemptively address any argument that it selected the wrong flavor of PTAB trial, Samsung filed concurrent IPR and PGR petitions against the ‘823 patent.  Memoryweb stipulated as to the patent’s eligibility for PGR, but the PTAB stated that it must analyze the issue itself.  Based on its analysis, the PTAB agreed that the ‘823 patent is a first-inventor-to-file patent subject to PGR and ultimately instituted the PGR while denying the IPR petition as being premature.


Samsung’s strategy of filing concurrent IPR and PGR petitions can be a model for other petitioners facing uncertainty as to whether a patent is eligible for PGR.  This belt-and-suspenders approach allows the petitioner to hedge its bets and should be considered in appropriate situations.



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Josh Nightingale represents leading domestic and international technology companies in high-stakes patent litigation. His litigation matters before U.S. district courts, the USPTO's Patent Trial and Appeal Board (PTAB), and the Federal Circuit have involved a variety of technologies across numerous industries, including semiconductors, electrical circuits, computer software, LED lighting, vacuum hoses, and telecommunications.