Federal Circuit Review of USPTO Inter Partes Review Decisions, by the Numbers
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Federal Circuit Review of
USPTO Inter Partes Review Decisions, by the Numbers:
How the AIA Has Impacted the Caseload of the Federal Circuit
Evan J. Wallach* & Jonathan J. Darrow'
When Congress enacted the Leahy-Smith America Invents Act (AIA) in
2011,1 an accompanying House Report explained that in the nearly sixty years
since the landmark 1952 Patent Act2 last brought comprehensive reform to the
patent arena, changes in the economy and in patent litigation practices had
produced a clear need to update the patent laws.3 Indeed, in the 1980s and
1990s the patent system itself changed considerably, expanding along a num-
ber of dimensions. The Bayh-Dole Act of 1980 substantially expanded uni-
versity patenting associated with federally funded research, while the United
States Department of Justice began to take a more relaxed approach to antitrust
enforcement in the patent domain.5 Decisions of the Supreme Court and of
the United States Court of Appeals for the Federal Circuit (Federal Circuit)
paved the way for broader patenting in the fields of biotechnology (Diamond
v. Chakrabarty,6 1980), computer software (Diamond v. Diehr,7 1981), and busi-
SJudge, United States Court of Appeals for the Federal Circuit. The views expressed herein are entirely those
of the authors and do not necessarily represent those of any entity or institution with which they are affiliated.
tResearch Fellow, Program On Regulation, Therapeutics, And Law (PORTAL), Brigham & Women's Hospi-
tal / Harvard Medical School. Dr. Darrow is admitted to the California and patent bars, and is currently serving
as Senior Law Clerk to the Honorable Evan J. Wallach. The authors wish to thank Lukman Azeez, Stephen
Darrow, Rudy Fink, Christopher Geyer, Patrick Holvey, Sarah Jelsema, Nathan Kelley, Aaron Kesselheim, Devin
Sikes, Matthew Touton, and Wei Wang for their helpful comments.
'Pub. L. No. 112-29, 125 Stat. 284 (2011).
2Pub. L. No. 82-593, 66 Stat. 792 (1952).
3H.R. Rep. No. 112-98(I), at 38 (2011), reprinted in 2011 U.S.C.C.A.N. 67, 68 (hereinafter House Report).
4An Act to Amend the Patent and Trademark Laws (Bayh-Dole Act), Pub. L. No. 96-517, § 6(a), 94 Stat.
3015, 3018-28 (1980) (codified as amended at 35 U.S.C. §§ 200-212 (2016)).
sSusan S. DeSanti et al., To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy,
FED. TRADE COMM'N, Oct. 2003, at 22 (In the 1980s, [n]ew economic learning led to more complex and pro-
patent understanding of how antitrust should view conduct with respect to patents.). In 1981, for example, the
Antitrust Division of the Department of Justice indicated its inclination to take a more permissive approach to
certain practices involving patents, including some types of tying arrangements, requirements that a licensee
grant-back rights to improvements, and resale restrictions. See Abbott B. Lipsky, Current Antitrust Division
Views on Patent Licensing Practices, 50 AwrrrRusr L.J. 515, 518 (1981).
6447 U.S. 303 (1980).
7450 U.S. 175 (1981).
98 J. PAT. & TRADEMARK OFF. Soc'y 105(2016)](ViewImageLocal?handle=hein.journals/jpatos98&div=13&collection=&method=preview&ext=.png&size=3)
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Federal Circuit Review of USPTO Inter Partes Review Decisions, by the Numbers
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