Judge Rader Says PREVAIL Act Will Bring Much-Needed Balance to PTAB Proceedings

“While Judge Rader said the bill would not itself achieve true balance at the PTAB… the PREVAIL Act would benefit the many members of US Inventor facing a gauntlet of well-resourced petitioners challenging their critical patent rights.”

PTABOn August 2, inventor advocacy group US Inventor held a webinar on provisions of the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act that are intended to curb abuses impacting small business patent owners at the Patent Trial and Appeal Board (PTAB). While most panelists on the virtual call acknowledged that the PREVAIL Act wouldn’t solve every problem threatening the U.S. innovation ecosystem’s most vulnerable members, there was widespread agreement that the bill would have beneficial impacts if enacted.

The webinar was US Inventor’s second on the PREVAIL Act following a virtual call last week with law professor Adam Mossoff and C4IP General Counsel Jamie Simpson.

Estoppel and Burden of Proof Provisions Expected to Benefit Patent Owners

Randall Rader, Former Chief Judge of the Federal Circuit, in his opening comments highlighted a pair of provisions from the PREVAIL Act that he expected would have the most beneficial impacts for members of US Inventor. First, he pointed out that the PREVAIL Act would cause estoppel to apply prior to the PTAB’s final written decision, preventing challengers from litigating validity claims after they’re raised in a petition. Rader also said that language increasing the burden of proof on PTAB patentability determinations from a preponderance standard to a clear and convincing standard would further limit the ability of alleged infringers to obtain protracted stays of district court infringement litigation.

US Inventor President Randy Landreneau, who noted at the outset that the inventor advocacy organization had not yet taken an official stance on supporting the PREVAIL Act, said that the statutory language of the PREVAIL Act indicated that while estoppel would apply to grounds raised in PTAB petitions, such estoppel wouldn’t attach until a petition was instituted by the PTAB. Rader responded that there was a certain wisdom to waiting for the institution phase to attach estoppel, giving challengers the opportunity to withdraw weak petitions for inter partes review (IPR) proceedings.

A Better Balance for Patent Owners, but Structural Problems Remain

While the PREVAIL Act introduces several changes to validity proceedings at the PTAB, Judge Rader conceded that the bill doesn’t address the most significant structural issue posed by the alternative venue for validity determinations. By separating infringement proceedings from validity, which as a defense to infringement should be litigated in the infringement context, the America Invents Act (AIA) enabled competing standards on claim construction and other aspects of validity determinations. Rader added that one of the greatest criticisms of patent systems in European jurisdictions that decouple infringement and validity proceedings was that such separation allows parties to take inconsistent arguments on the breadth of a patent to argue invalidity, while arguing a much smaller scope of the claimed invention during the infringement trial.

At the conclusion of the webcast, most panelists observed that the PREVAIL Act represents some progress in balancing PTAB proceedings between petitioners and patent owners. While Rader said that the bill would not itself achieve true balance at the PTAB, as the structural issues in separating validity from infringement would require a true repeal of the PTAB, the PREVAIL Act would benefit the many members of US Inventor facing a gauntlet of well-resourced petitioners challenging their critical patent rights.



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Join the Discussion

10 comments so far.

  • [Avatar for chris]
    August 7, 2023 10:36 am

    Dang, guys. For anyone seriously interested in this topic, your insults and vitriol may provide great entertainment for a reality show, but they distract from any effort to achieve a balanced overview. Can any of you suggest a forum in which a broad range of viewpoints on this topic are discussed more dispassionately? Thanks.

  • [Avatar for Anon]
    August 5, 2023 05:55 pm

    Brother Anon,

    Twice in one thread…?


    It’s a good thing that my reputation easily distinguishes from your ill-begotten views.

    The Anon’s of the world expect better, my brother.

  • [Avatar for Peter Deane]
    Peter Deane
    August 4, 2023 06:04 pm

    Where the PTAB got it wrong was when Google and Netlist took the 912 Seminal Patent all the way to the Supreme Court. When the case came to be heard about the 912 Seminal Patent, Google declined to further the case. Netlist stood alone as the one that has full rights on the 912 Seminal Patent. The PTAB spit on the decision of every US Federal Judge that had already ruled that the 912 Seminal Patent belongs to Netlist. The PTAB is acting like their own judges are the principal judges and can override the decision of every federal judge up to the Supreme Court.

  • [Avatar for Anon]
    August 4, 2023 10:36 am

    Ignoring completely that ex judge Rader was kicked off the court for ethical violations, sexual misconduct, and lots of other issues that everyone knows about. Keep defending him or deflecting
    . You are the company you keep!

  • [Avatar for Addy]
    August 4, 2023 09:29 am

    The PTAB isn’t perfect and could likely use some reform. Will the Prevail act help? Who knows. I hope it does, but am doubtful.

    That there’s an 80+% invalidation rate there isn’t a surprise – if there’s a reasonable chance to get the asserted patent invalidated, any defendant would go for it.

    There are many accusations that the PTAB is unfair, “got it wrong,” etc. I haven’t seen one of those accusations supported by a showing where an opinion/order “got it wrong.”

    It seems like there’s something else at play.

    There seems to be a belief that all patents are created equal; all patent practitioners produce work product quality that is the same; patents can simply be stamped out like a hubcap, and all are equally enforceable.

    This is simply not the case. Most patents are not well written, not claimed well, and/or not prosecuted well. That 80+% are invalidated is no surprise.

    That it’s primarily individual inventors/small companies that fall prey to invalidation (PTAB or CAFC) is even less of a surprise. While they are the bedrock of American innovation, they’re not good at choosing patent counsel, tending to choose the least expensive alternative, a recommendation from a friend (who doesn’t know how to choose patent counsel), or from a lawyer (who also doesn’t know). This is where the mess starts.

  • [Avatar for Anonymous]
    August 3, 2023 11:34 pm


    Who is the standard bearer for the Efficient Infringer view that the PTAB is necessary, because they don’t like lowly juries? Apple?

    This is the same company that pays hundreds of millions of dollars for willful patent infringement, then testifies to Congress, “We respect innovation . . . We would never steal someone’s IP.”

    If the habitual, serial willful patent infringer, whose CEO perjures himself on a whim, is your standard bearer, it’s clear you’re a shill for Big Tech’s continued theft. A $3T market cap allows Apple to buy Congress, it seems.

    You’ve thrown in with the criminals.

  • [Avatar for Anon]
    August 3, 2023 10:23 pm

    Brother Anon,

    You continue to pollute our pseudonym with your asinine and uninformed views.

    I suggest you choose a different moniker.

  • [Avatar for Dirk Tomsin]
    Dirk Tomsin
    August 3, 2023 05:49 pm

    The perverse incentives to invalidate patents at the PTAB seem to have been overlooked, or left totally unaddressed in this article, while it was a major part of the discussion. While the bill acknowledges certain structural issues at the PTAB, it does not fully address them. Some provisions like estoppel and burden of proof changes, were highlighted, but the incentives that play within the PTAB, that were discussed on the call, if left unresolved, will undermine the effectiveness of the bill.

  • [Avatar for Anon]
    August 3, 2023 05:49 pm

    If a disgraced former judge who was kicked off the court is your standard bearer, you’ve got bigger problems

  • [Avatar for Anonymous]
    August 3, 2023 04:38 pm

    Inventors want juries. Full stop. It’s not an unreasonable ask.

    Judge Rader acknowledged no rational inventor would ever voluntarily accept going to the PTAB over a federal district court. As Jonathan Rogers astutely observed, trying to evolve a “fix” of the PTAB results in the same protections of the Federal Rules of Evidence, Federal Rules of Civil Procedure, and to avoid bias and political influence, disinterested juries.

    When a cake with a pound of arsenic is offered as an improvement over a cake with two pounds of arsenic, wise Inventors will no longer want cake. Removing the arsenic by half-measure leaves a poisoned cake.

    Congress, the AIA was bad. IPRs are bad. The PTAB is not working, except for Efficient Infringers. It is time to remove Big Tech’s stranglehold over American innovation and those congressmen who know the AIA must go.

    Once juries go, and once infringement and validity are severed, the whole system will collapse, except for entrenched monopolists.

    Trial by jury is “the heart and lungs of liberty.” – John Adams

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