LaRose Industries v. Choon’s Design (PGR2014-00008): The First Post-Grant Review Petition

The America Invents Act made post-grant review available on September 16, 2012, the same day as inter partes review. Inter partes review petitions arrived immediately. The first post-grant review petition did not arrive until 2014: LaRose Industries v. Choon’s Design, PGR2014-00008. The patent owner, Choon’s Design, is the maker of the Rainbow Loom, the rubber-band craft toy that was enormously popular at the time.

This page explains why the first PGR came so late and what that says about the proceeding. It does not describe how the case was resolved.

Why the first PGR took so long

The delay was built into the statute. PGR is available only for patents subject to the AIA’s first-inventor-to-file provisions. As a practical matter, that means a patent with at least one claim whose effective filing date is on or after March 16, 2013. Patents that issued from older applications, which in 2012 and 2013 were almost all patents, could not be challenged in PGR at all.

Two further limits narrowed the field:

• A nine-month window. A PGR petition must be filed within nine months after the patent is granted or reissued (35 U.S.C. § 321(c)). A patent that qualifies is exposed only briefly.
• Examination takes time. An application filed after March 16, 2013 normally spent years in examination. Only applications that moved quickly, or later applications that added newly filed claims, produced eligible patents in 2013 and 2014.

So PGR existed from September 2012, but the patents it could reach were only beginning to issue when LaRose was filed. The number of eligible patents grew steadily in later years as post-March 2013 applications worked through examination.

What made PGR attractive anyway

For a challenger with an eligible target, PGR offers something inter partes review does not: a wider range of grounds. Under § 321(b), a petitioner may raise any invalidity ground available under § 282(b)(2) or (3), including subject matter eligibility under § 101 and the written description, enablement and definiteness requirements of § 112. Inter partes review is limited to anticipation and obviousness based on patents and printed publications.

PGR also has its own threshold. The Board may institute only if it is more likely than not that at least one challenged claim is unpatentable, or if the petition raises a novel or unsettled legal question important to other patents (§ 324). On the other side of the ledger, estoppel attaches to grounds the petitioner raised or reasonably could have raised (§ 325(e)), which in PGR covers a much broader set of grounds. For a side-by-side comparison, see PGR vs. IPR.

The early PGR filings

LaRose was followed by other early petitions, including Accord Healthcare v. Helsinn (PGR2014-00010), which challenged a drug formulation patent on § 112 grounds, and American Simmental Association v. Leachman Cattle (PGR2015-00003). Together they show a proceeding that was legally available but practically limited by the supply of eligible patents.

Key takeaways

• LaRose Industries v. Choon’s Design, PGR2014-00008, was the first post-grant review petition, filed in 2014.
• The patent owner was Choon’s Design, maker of the Rainbow Loom craft toy.
• PGR reaches only first-inventor-to-file patents, which were scarce until applications filed after March 16, 2013 began to issue.
• The nine-month filing window further limits which patents can be challenged.
• PGR’s appeal lies in its broader grounds, including §§ 101 and 112.