What is a Post Grant Review?

Post Grant Review (PGR), another product of the America Invents Act (AIA), is an invalidity proceeding that went into effect September 16, 2012.  Along with Inter Partes Review, PGR is meant to phase out Inter Partes Reexamination. The petitioning party has up to nine months after the a patent is granted to file a PGR petition to invalidate one or more claims of the patent in question.

First PGR Petition: LaRose Industries, LLC v. Choon’s Design, Inc.

The first ever PGR petition was filed on August 8, 2014 by LaRose Industries, LLC regarding U.S. Patent No. 8,684,420 owned by Choon’s Design, Inc. The patent owner, Choon’s Design, had originally filed a lawsuit against LaRose, alleging that LaRose’s products (looms for weaving bracelets and other items) had infringed on Choon’s patent‘420 and several other patents owned by Choon’s.

LaRose seeks to invalidate claims 1-7 and 9-16 of Choon’s patent, arguing that this patent qualifies for PGR because at least one of the claims has an effective filing date that is on or after March 16, 2013 the effective date of the First Inventor to File (FITF) provisions of the AIA.

Choon’s ’420 patent claims the benefits of several prior patent applications— their filing dates stretching back to before the FITF effective date, with the original provisional application filed on November 5, 2010. However, LaRose argues that the two preceding patent applications from which the ’420 patent derives its claims were not supported by the original disclosure. Thus, the ’420 patent and the two prior filed patents cannot claim the benefit of the early provisional application filing date. LaRose argues that since both of the applications preceding the ’420 patent were filed after March 16, 2013, the ’420 patent is eligible for PGR.

How Can I Search for New PGR Petitions on Docket Alarm?

Docket Alarm can help you stay abreast of the latest developments in PGR filings. By selecting the “Track This Docket” button, you can have an alert sent right to your inbox when the PTAB issues a decision regarding this particular PGR petition. You can also obtain a list of the latest PGR petitions by entering the terms and connectors query “docket:PGR!” into the Docket Alarm search field and selecting the “PTAB” database. To be alerted when a new PGR proceeding is initiated, select the “Get New Lawsuit Alerts!” button here.