Congressional
`• • • Research Service;;;:;;;;;;;;;;iiiiiii;;>� .... � � Informing the legislative debate since 1914 --------------
`The Patent Trial and Appeal Board
`and Inter Partes Review
`Updated May 28, 2024
`CRS REPORT
`Prepared for Members and
`Committees of Congress
`1
`Congressional Research Service
`https://crsreports.congress.gov
`R48016
`APPLE 1082
`Apple v. Advanced Coding Techn.
`I PR2025-00984
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`Congressional Research Service
`SUMMARY
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`The Patent Trial and Appeal Board
`and Inter Partes Review
`The 2011 Leahy-Smith America Invents Act (AIA) is widely viewed as the most significant
`patent statute enacted by Congress in over 50 years. Although the AIA made many important
`changes to U.S. patent law, the most practically significant was the creation of the Patent Trial
`and Appeal Board (PTAB).
`PTAB is a tribunal within the U.S. Patent and Trademark Office (USPTO), the federal agency
`responsible for reviewing patent applications and granting patents. The AIA created PTAB and
`granted it authority to hear several new types of administrative challenges to the validity of
`patents previously granted by USPTO. These challenges, which were also created by the AIA, include inter partes review
`(IPR) and post-grant review (PGR). IPRs and PGRs are typically decided by a panel of three administrative patent judges
`(APJs).
`Entities accused of patent infringement have always been able to challenge the validity of patents asserted against them in
`federal court. Because those patents were reviewed and granted by USPTO, patents carry a presumption of validity when
`challenged in court. Patent invalidity must be demonstrated by a higher standard of proof (clear and convincing evidence)
`than the standard used for most issues in civil litigation (preponderance of the evidence). Litigating a patent case to a final
`judgment in a federal court is time-consuming and expensive: it typically takes several years, with average legal costs
`amounting to over a million dollars. In addition, because of judicial standing requirements, an entity can usually ask a court
`to decide the validity of a patent only if they have been sued or at least threatened with a patent lawsuit.
`Congress’s stated aim when creating IPR and PGR was to improve patent quality by providing a more efficient means to
`adjudicate patent validity issues. Congress was also concerned that poor-quality patents fueled litigation by so-called “patent
`trolls,” a pejorative term for patent plaintiffs that do not manufacture or sell the patented products. From the perspective of a
`person accused of patent infringement (or worried about being sued), PTAB procedures are often more advantageous than
`federal court litigation in that they are faster, cheaper, and use a lower standard of proof. By statute, IPRs and PGRs are
`supposed to reach a final determination no later than one year after PTAB decides to institute the proceeding. The
`administrative procedures are more streamlined than civil litigation, with average legal costs typically in the hundreds of
`thousands of dollars (as opposed to millions). In addition, PTAB does not require standing, so any person other than the
`patent holder can challenge a patent before PTAB. As a result, it has become common for entities sued for patent
`infringement in federal court or before the U.S. International Trade Commission to petition PTAB to institute an IPR and
`seek to challenge the patent in that forum.
`PTAB procedures—and IPR in particular—have aroused controversy among patent stakeholders since the enactment of the
`AIA. Critics of PTAB argue that it is biased against patent holders, creates uncertainty in patent rights, and discourages
`investment in innovation. PTAB critics further maintain that IPR is unfair to patent holders, who have successfully obtained a
`patent before USPTO but must now again defend their patent’s validity before the same agency.
`Since 2011, the Supreme Court has heard a number of cases concerning PTAB. In Oil States Energy Services v. Greene’s
`Energy Group, the Supreme Court rejected a constitutional challenge to IPR, holding that challenges to already-issued
`patents in an administrative forum did not violate the Seventh Amendment or Article III of the U.S. Constitution. In United
`States v. Arthrex Inc., the Court held that the unreviewable authority exercised by APJs violated the Constitution’s
`Appointments Clause but spared PTAB by granting the Director of USPTO discretionary authority to review PTAB
`decisions.
`Members of Congress have examined whether to maintain PTAB as it exists or to modify IPR and PGR procedures, with
`both House and Senate committees holding hearings on the issue. Legislative proposals introduced in recent Congresses
`include bills that would abolish PTAB entirely or make various procedural and substantive reforms to PTAB. For their part,
`USPTO and PTAB have issued regulations, precedential decisions, and other guidance on issues including USPTO Director
`review, repeat IPR petitions, and when PTAB should exercise its discretion to decline to institute (i.e., hear) an IPR or PGR.
`In 2024, USPTO issued notices of proposed rulemaking (NPRMs) on some of these issues.
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`R48016
`May 28, 2024
`Christopher T. Zirpoli
`Legislative Attorney
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`Kevin J. Hickey
`Legislative Attorney
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`The Patent Trial and Appeal Board and Inter Partes Review
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`Congressional Research Service
`Contents
`Introduction ..................................................................................................................................... 1
`Overview of U.S. Patent Law .......................................................................................................... 2
`What Are Patents? ..................................................................................................................... 2
`What Inventions Can Be Patented? ........................................................................................... 3
`Eligible Subject Matter Requirement .................................................................................. 3
`Novelty Requirement .......................................................................................................... 4
`Nonobviousness Requirement ............................................................................................ 4
`Utility Requirement ............................................................................................................ 5
`Requirements for Specification and Claims ........................................................................ 5
`How Do Inventors Obtain a Patent? .......................................................................................... 6
`How Do Courts Adjudicate Patent Rights? ............................................................................... 6
`What Was USPTO’s Role in Patent Adjudication Prior to the AIA? ........................................ 8
`Overview of the America Invents Act and PTAB ............................................................................ 9
`The AIA’s Key Changes to Patent Law ..................................................................................... 9
`PTAB’s Structure..................................................................................................................... 10
`PTAB Post-Grant Proceedings ....................................................................................................... 11
`Inter Partes Review .................................................................................................................. 11
`Standing, Timing, and Grounds to Petition for IPR .......................................................... 12
`Discretionary Institution of IPR ........................................................................................ 12
`IPR Process Following Institution .................................................................................... 13
`Discovery in IPR ............................................................................................................... 15
`IPR Final Decisions, Director Review, and Appeals ........................................................ 16
`IPR Statistics ..................................................................................................................... 17
`Post-Grant Review .................................................................................................................. 21
`Covered Business Method Review ......................................................................................... 22
`Comparison of PTAB and Other Post-Grant Proceedings ...................................................... 22
`PTAB at the Supreme Court .......................................................................................................... 23
`Statutory Interpretation Cases ................................................................................................. 24
`Cuozzo Speed Technologies, LLC v. Lee ........................................................................... 24
`SAS Institute, Inc. v. Iancu ................................................................................................ 26
`Return Mail, Inc. v. U.S. Postal Service ............................................................................ 27
`Thryv, Inc. v. Click-to-Call Technologies, LP ................................................................... 29
`Constitutional Challenges to IPR ............................................................................................ 30
`Oil States Energy Services, LLC v. Greene’ s Energy Group, LLC .................................... 30
`United States v. Arthrex ..................................................................................................... 31
`Current Debates and Proposed Reforms ........................................................................................ 33
`What Roles Do the USPTO Director and PTAB Management Play in PTAB
`Decisions? ............................................................................................................................ 33
`Interim Director Review Process ...................................................................................... 33
`Concerns Regarding Transparency and APJ Independence .............................................. 35
`Who Has Standing to Petition PTAB and Appeal Its Decisions? ............................................ 37
`What Should Be PTAB’s Standards for Invalidation and Claim Construction? ..................... 38
`Invalidity: Preponderance of Evidence or Clear and Convincing Evidence? ................... 38
`Claim Construction: Should USPTO or Congress Decide the Right Standard? ............... 39
`When Should PTAB Deny Institution of an IPR? ................................................................... 40
`Petitions Raising Previously Presented Prior Art and Arguments..................................... 41
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`Serial Petitions .................................................................................................................. 42
`Parallel Petitions ............................................................................................................... 44
`Parallel District Court Litigation ...................................................................................... 45
`Patent Claims Already Upheld by a District Court ........................................................... 47
`Conclusion ..................................................................................................................................... 48
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`Figures
`Figure 1. IPR and PGR Outcomes by Petition in FY2023 ............................................................ 18
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`Tables
`Table 1. USPTO Post-Grant Proceedings ...................................................................................... 23
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`Contacts
`Author Information ........................................................................................................................ 48
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`Introduction
`The Patent Trial and Appeal Board (PTAB), which is part of the U.S. Patent and Trademark
`Office (USPTO), was created by Congress in 2011 through the Leahy-Smith America Invents Act
`(AIA).1 The AIA established new administrative procedures to challenge patent validity called
`inter partes review (IPR) and post-grant review (PGR).2 While entities accused of patent
`infringement have long been able to challenge the validity of the patents asserted against them in
`court, IPR and PGR allow a party to petition PTAB to hear a challenge to the validity of an
`already-issued patent in an administrative forum, regardless of whether the petitioner has been
`sued or threatened with suit for patent infringement.3
`IPR and PGR thus provide a way for anyone to challenge patents before USPTO and, if
`successful, cancel patent claims that PTAB concludes should have never issued.4 From an
`accused patent infringer’s perspective, using IPR or PGR to challenge patent validity is often
`more advantageous than judicial proceedings because PTAB processes are typically faster and
`less expensive, and require a lower burden of proof to invalidate patents.5 It is thus common for
`entities threatened with or sued for patent infringement in court or in the U.S. International Trade
`Commission (ITC) to petition PTAB to attempt to invalidate the patents asserted against them in
`those other forums.6
`Congress’s stated purpose in creating PTAB was to “improv[e] patent quality and provid[e] a
`more efficient system for challenging patents that should not have issued; and reduc[e]
`unwarranted litigation costs.”7 Congress also observed that poor-quality patents may fuel
`litigation by so-called patent “trolls,”8 a pejorative term for patent plaintiffs that do not
`manufacture or sell the patented products.9 On this view, PTAB may be seen as an attempt to
`reduce patent-troll litigation by weeding out poor-quality patents.
`Some stakeholders have criticized PTAB, labeling it a “patent death squad.”10 Critics of PTAB
`argue that PTAB has made it too easy to challenge patents, creating uncertainty in patent rights,
`stifling innovation, and discouraging investments in patent-intensive industries and early-stage
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`1 Pub. L. No. 112-29 (2011).
`2 A third procedure created by the AIA was transitional and sunsetted in 2020. See infra “Covered Business Method
`Review.”
`3 See 35 U.S.C. §§ 31–32.
`4 See generally CRS Report R46525, Patent Law: A Handbook for Congress, coordinated by Kevin J. Hickey, at 24–25
`(2020).
`5 See CRS Report R47267, Patents and Innovation Policy, by Emily G. Blevins, at 10 (2020).
`6 See Jeffrey C. Totten, Four Strategies to Stay Litigation in Favor of IPR, FINNEGAN (May 2014),
`https://www.finnegan.com/en/insights/articles/four-strategies-to-stay-litigation-in-favor-of-ipr.html.
`7 H.R. REP. NO. 112-98, at 39–40 (2011), as reprinted in 2011 U.S.C.C.A.N. 67, 69.
`8 H.R. REP. NO. 112-98, at 54 (“A number of patent observers believe the issuance of poor business-method patents
`during the late 1990’s through the early 2000’s led to the patent ‘troll’ lawsuits that compelled the Committee to launch
`the patent reform project 6 years ago.”).
`9 See FTC, PATENT ASSERTION ENTITY ACTIVITY: AN FTC STUDY 15–17 (2016) (defining “patent assertion entity”);
`Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 109 (2016) (“Trolls, in the patois of the patent community, are
`entities that hold patents for the primary purpose of enforcing them against alleged infringers, often exacting outsized
`licensing fees on threat of litigation.”).
`10 See Peter J. Pitts, “Patent Death Squads” vs. Innovation, WALL ST. J. (June 10, 2015, 7:23 PM),
`https://www.wsj.com/articles/patent-death-squads-vs-innovation-1433978591.
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`startups.11 PTAB critics also argue that administrative challenges to patents are unfair to patent
`holders who have successfully obtained a patent through the USPTO patent prosecution process
`but must now again defend their patent’s validity before USPTO.12
`These stakeholder debates have led to proposed reforms to PTAB, both from USPTO itself and
`from Members of Congress, including multiple bills introduced in the last several Congresses.
`This report provides the legal background necessary to understand these debates and the practical
`effects that changes to PTAB may have on technology and innovation.
`This report begins with an overview of U.S. patent law, including what patents are, what kinds of
`inventions may be patented, the process of obtaining a patent with USPTO, and how patent
`owners may enforce their patent rights. It then discusses the AIA and its creation of PTAB,
`including PTAB’s administrative structure. The report then explains and compares the three types
`of post-grant proceedings established by the AIA, focusing on IPR, the most used of these
`proceedings. The report follows with a discussion of several cases involving PTAB decided by
`the Supreme Court. Finally, the report discusses current debates and proposed reforms of PTAB,
`including standing, burdens of proof, discretionary institution of IPRs, claim construction, and the
`role of the USPTO Director in reviewing PTAB decisions.
`Overview of U.S. Patent Law
`What Are Patents?
`Patents are a form of intellectual property that give their holders the exclusive right to practice
`their inventions (i.e., make, use, sell, offer to sell, or import them) for a limited period of time.
`The Constitution gives Congress the power to grant patent rights to inventors by authorizing
`Congress to “promote the Progress of Science and useful Arts, by securing for limited Times to . .
`. Inventors the exclusive Right to their respective . . . Discoveries.”13 Since 1790, Congress has
`enacted patent laws granting inventors certain exclusive rights in their inventions for a period of
`time.14 (Currently, patents expire 20 years after the date that the patent application that gave rise
`to the patent was filed.15) Patents represent a “quid pro quo” by which the inventor publicly
`discloses an invention in exchange for time-limited, exclusive rights to practice it.16 In the United
`States, USPTO is responsible for evaluating patent applications and granting patents on
`qualifying inventions, as explained below.17
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`11 See, e.g., id.; ALLIANCE OF U.S. STARTUPS AND INVENTORS FOR JOBS, Why Patents Matter, https://www.usij.org/why-
`patents-matter/ (last visited Mar. 28, 2024).
`12 See, e.g., Gene Quinn, A Kinder, Gentler ‘Death Squad’: Ten Years in, Despite Some Reforms, the USPTO Is Still
`Killing U.S. Patents, IP WATCHDOG (Sept. 19, 2021, 12:15 PM), https://ipwatchdog.com/2021/09/19/kinder-gentler-
`death-squad-ten-years-despite-reforms-uspto-still-killing-u-s-patents/id=137765/; Oil States Energy Servs. v. Greene’s
`Energy Grp., 584 U.S. 325, 345–47 (2018) (Gorsuch, J., dissenting).
`13 U.S. CONST. art. I, § 8, cl. 8.
`14 See, e.g., 35 U.S.C. § 271 (setting forth how patents may be infringed).
`15 Id. § 154(a)(2). Patent terms can be extended in some circumstances, such as delays by USPTO in reviewing a patent
`application. See id. §§ 154(b), 156.
`16 J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124, 142 (2001) (“The disclosure required by the
`Patent Act is ‘the quid pro quo of the right to exclude.’” (quoting Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 484
`(1974))); see also Universal Oil Prods. Co. v. Globe Oil & Refin. Co., 322 U.S. 471, 484 (1944) (“As a reward for
`inventions and to encourage their disclosure, the United States offers a . . . monopoly to an inventor who refrains from
`keeping his invention a trade secret. But the quid pro quo is disclosure of a process or device in sufficient detail . . . .”).
`17 See infra “How Do Inventors Obtain a Patent?”.
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`Once granted, the holder of a valid patent has the exclusive right to make, use, sell, or import the
`invention in the United States until the patent expires.18 Any other person who practices the
`invention without permission from the patent holder infringes the patent and is liable for
`monetary damages, and possibly subject to injunctive relief, if sued by the patentee.19 Patents
`have the attributes of personal property, and the patentee may sell or assign the patent to another
`person.20 A patentee may also license other persons to practice the invention, granting them
`permission to make, use, sell, or import the invention, usually in exchange for consideration (such
`as monetary royalties).21
`What Inventions Can Be Patented?
`In order to be patented, an invention must meet four substantive requirements: The invention
`must be (1) directed to patentable (or “eligible”) subject matter, (2) new, (3) nonobvious, and
`(4) useful.22 In addition to these four substantive patentability requirements, the Patent Act
`imposes minimum requirements for the technical disclosure of the invention in the patent
`application, which must adequately describe and distinctly claim the invention.23 As discussed in
`this report, PTAB administers certain proceedings in which petitioners may seek to invalidate a
`patent previously granted by USPTO on the grounds that the patent fails to satisfy certain of these
`requirements. This section briefly surveys these patentability requirements.
`Eligible Subject Matter Requirement
`The Patent Act allows inventors to obtain patents on any new and useful “process, machine,
`manufacture, or composition of matter, or . . . improvement thereof.”24 Examples of technological
`areas for patentable inventions include pharmaceuticals, biotechnology, chemistry, computer
`hardware and software, electrical engineering, mechanical engineering, and manufacturing
`processes.25 By contrast, the Supreme Court has long held that “laws of nature, natural
`phenomena, and abstract ideas” are not patentable.26 The Court has reasoned that to permit a
`monopoly on the “‘basic tools of scientific and technological work’ . . . might tend to impede
`innovation more than it would tend to promote it.”27
`In a series of cases in the 2010s, the Supreme Court established a two-step test for patentable
`subject matter, sometimes called the Alice test or the Alice/Mayo framework.28 The first step
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`18 35 U.S.C. § 271(a).
`19 Id. §§ 271, 281, 283–285.
`20 Id. § 261.
`21 License, BLACK’S LAW DICTIONARY (10th ed. 2014); 35 U.S.C. § 271(a).
`22 See 35 U.S.C. §§ 101–103.
`23 Id. § 112; see generally Hickey, supra note 4, at 12–14.
`24 35 U.S.C. § 101.
`25 See USPTO, PATENT TECHNOLOGY CENTERS MANAGEMENT, https://www.uspto.gov/patent/contact-patents/patent-
`technology-centers-management (last visited Mar. 28, 2024) (listing technological divisions for USPTO examiners).
`26 Diamond v. Diehr, 450 U.S. 175, 185 (1981); see generally Hickey, supra note 4, at 10–20 (overviewing
`development of the law of patent-eligible subject matter).
`27 Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalk v. Benson, 409
`U.S. 63, 67 (1972)).
`28 See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014); Ass’n for Molecular Pathology v. Myriad
`Genetics, Inc., 569 U.S. 576 (2013); Mayo Collaborative Servs., 566 U.S. at 66. USPTO has issued guidelines for its
`patent examiners to determine whether a patent application seeks to claim ineligible subject matter. See 2019 Revised
`Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
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`addresses whether the patent claims are “directed to” ineligible subject matter—a law of nature,
`natural phenomenon, or abstract idea.29 If not, the invention is patentable. If directed at ineligible
`subject matter, the invention is not patentable unless the patent claims have an “inventive
`concept” under the second step of the Alice/Mayo test. To have an “inventive concept,” the patent
`claims must contain elements “sufficient to ensure that the patent in practice amounts to
`significantly more than a patent upon the [ineligible concept] itself,” transforming the nature of
`the claim to a patent-eligible application of ineligible subject matter.30
`Novelty Requirement
`Perhaps the most fundamental requirement for patentability is that the claimed invention must be
`novel (i.e., new). By statute, USPTO cannot issue a patent if “the claimed invention was patented,
`described in a printed publication, or in public use, on sale, or otherwise available to the public
`before the effective filing date of the claimed invention.”31 In other words, if every element of the
`claimed invention is already disclosed in the prior art—the information available to the public at
`the time of the patent application—then the alleged inventor “has added nothing to the total stock
`of knowledge,” and no valid patent may issue to her.32
`Nonobviousness Requirement
`Even if a claimed invention is novel in the narrow sense that it is not “identically disclosed” in a
`prior art reference (such as an earlier patent or publication), the invention must further be
`nonobvious to be patentable.33 Specifically, an invention cannot be patented if “the differences
`between the claimed invention and the prior art are such that the claimed invention as a whole
`would have been obvious . . . to a person having ordinary skill” in the relevant technology.34
`When determining obviousness, courts may evaluate considerations such as “commercial success,
`long felt but unsolved needs, [or] failure of others . . . to give light to the circumstances
`surrounding the origin of the subject matter sought to be patented.”35 By its nature, obviousness is
`an “expansive and flexible” inquiry that cannot be reduced to narrow, rigid tests.36 That said, if an
`invention merely combines “familiar elements according to known methods,” yielding only
`“predictable results,” it is likely to be deemed obvious.37
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`29 Alice Corp., 573 U.S. at 217.
`30 Id. (quoting Mayo Collaborative Servs., 566 U.S. at 73).
`31 35 U.S.C. § 102(a)(1). There are certain exceptions to this requirement when, for example, the prior art disclosure
`derives from the inventor and the patent application is made within one year of the disclosure. Id. § 102(b)(1).
`32 Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 153 (1950); see Graham v. John Deere Co.,
`383 U.S. 1, 6 (1966) (“Congress may not authorize the issuance of patents whose effects are to remove existent
`knowledge from the public domain, or to restrict free access to materials already available.”).
`33 35 U.S.C. § 103.
`34 Id. Patent law frequently relies on the concept of a “person having ordinary skill in the art,” a “hypothetical person”
`with a typical level of skill in the relevant technology who is “presumed to be aware of all the pertinent prior art” in the
`particular field. See Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).
`35 Graham, 383 U.S. at 17–18.
`36 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–19 (2007).
`37 Id. at 416.
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`Utility Requirement
`An invention must also be useful to be patentable, which means that it must have a specific and
`substantial utility.38 The utility requirement derives from the Constitution’s command that patent
`laws exist to “promote the Progress of . . . useful Arts.”39 The constitutional purpose of patent law
`thus requires a “benefit derived by the public from an invention with substantial utility,” where
`the “specific benefit exists in currently-available form.”40 The bar for utility is low, requiring only
`that the claimed invention have some “significant and presently available benefit to the public”
`that “is not so vague as to be meaningless.”41
`Requirements for Specification and Claims
`Along with the four substantive requirements discussed above, the Patent Act imposes
`requirements relating to the form of the patent application. These formal requirements pertain to
`two key sections of the patent application, known as the claims and the specification, which
`become part of the patent itself if the application is granted.
`Section 112 of the Patent Act requires that patents contain a “specification” that includes
`a written description of the invention, and of the manner and process of making and using
`it, in such full, clear, concise, and exact terms as to enable a ny person skilled in the art to
`. . . make and use the same, and shall set forth the best mode contemplated by
`the inventor or joint inventor of carrying out the invention.42
`This statutory language yields three basic disclosure requirements for patentability.43 First, to
`satisfy the written description requirement, the specification must “reasonably convey[] to those
`skilled in the art that the inventor had possession of the claimed subject matter as of the filing
`date” of the patent application.44 Second, to satisfy the enablement requirement, the specification
`must contain enough information to teach a person skilled in the art how “to make and use the
`invention without undue experimentation.”45 Finally, to satisfy the best mode requirement, the
`specification must show that the inventor “possessed a best mode for practicing the invention” at
`the time of the patent application, and disclose that preferred way of practicing the invention.46
`These disclosure requirements ensure that the patent adequately discloses the invention to the
`public so that the public can use the invention after the patent term expires.47
`If granted, the patent’s legal scope is defined by the patent claims, which are words that
`“particularly point[] out and distinctly claim[] the subject matter which the inventor . . . regards as
`the invention.”48 In essence, while the specification explains the invention in a technical sense,
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`38 Brenner v. Manson, 383 U.S. 519, 534–35 (1966); In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005).
`39 Stiftung v. Renishaw PLC, 945 F.2d 1173, 1180 (Fed. Cir. 1991) (citing Brenner, 383 U.S. at 528–29); see also
`Graham, 383 U.S. at 5–6.
`40 Brenner, 383 U.S. at 534–35.
`41 In re Fisher, 421 F.3d at 1371–72.
`42 35 U.S.C. § 112(a) (emphasis added).
`43 See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002); Ariad Pharms., Inc. v. Eli
`Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (en banc).
`44 Ariad Pharms., 598 F.3d at 1351.
`45 In re Wands, 858 F.2d 731, 735 (Fed. Cir. 1988).
`46 Eli Lilly & Co. v. Barr Lab’ys, Inc., 251 F.3d 955, 963 (Fed. Cir. 2001).
`47 See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480–81 (1974).
`48 35 U.S.C. § 112(b).
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`the claims set forth the patent’s legal effect.49 Much as a deed may describe the boundaries of a
`tract of land, the claims define the “metes and bounds” of the patent right.50 Patent claims must be
`sufficiently definite to be valid—that is, when the claims are read in context, they must “inform,
`with reasonable certainty, those skilled in the art about the scope of the invention.”51 This
`requirement is designed to give the public clear notice of what is and is not covered by the patent
`claims.
`How Do Inventors Obtain a Patent?
`The process for receiving a patent begins with the filing of an application with USPTO.52 A
`USPTO patent examiner then reviews the application for compliance with the legal requirements
`for receiving a patent.53 If the examiner determines that the application does not meet one of the
`requirements, she will reject the application.54 The applicant may generally then amend the
`application in an effort to overcome the examiner’s rejection.55 Once the examiner determines
`that an application meets all of the patentability requirements, she “allows” the application to
`issue as a patent.56
`Patent prosecution is the process of applying for a patent, addressing examiner concerns, and—if
`successful—receiving the patent.57 USPTO examiners are generally not lawyers, but rather are
`s