The First AIA Trials and What They Established

The Leahy-Smith America Invents Act created new trial proceedings at the USPTO, and inter partes review and covered business method review became available on September 16, 2012. The earliest petitions received the first trial numbers, and they became test cases for rules that were brand new to everyone: parties, counsel and the newly renamed Patent Trial and Appeal Board.

Looking back, two of those first cases were unusually influential. Each raised a question that the Board, the Federal Circuit and in one instance the Supreme Court would spend years answering.

The first IPR: Garmin v. Cuozzo

The first inter partes review was Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001. The patent concerned a speed-limit indicator for vehicles. The case is remembered less for its technology than for the procedural rulings it generated.

Additional discovery and the Garmin factors

AIA trials allow only limited discovery. Beyond routine discovery, a party must show that additional discovery is “in the interests of justice” for IPR (37 C.F.R. § 42.51(b)(2)). In Garmin, the Board set out factors for deciding such requests. In broad terms they consider:

• Whether there is more than a mere possibility or allegation that the discovery will uncover something useful
• Whether the request seeks the other party’s litigation positions and their underlying basis, which weighs against it
• Whether the requesting party can generate equivalent information by other means
• Whether the instructions and questions are easily understood
• Whether the requests are overly burdensome

These “Garmin factors” became the standard framework for motions for additional discovery in IPR. See limited discovery in Garmin v. Cuozzo for more.

Claim construction and the road to the Supreme Court

At the time, the Board construed unexpired claims under the broadest reasonable interpretation standard, the same standard used in examination. Cuozzo argued that a court-style standard should apply. That dispute, together with a question about whether the institution decision could be challenged on appeal, reached the Supreme Court. In Cuozzo Speed Technologies, LLC v. Lee (2016), the Court upheld the USPTO’s authority to adopt the broadest reasonable interpretation standard and held that 35 U.S.C. § 314(d) bars appeals of institution decisions in the circumstances presented.

The USPTO later changed the standard by rule. For petitions filed on or after November 13, 2018, the Board construes claims under the same standard used in civil actions, associated with Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc). See claim construction during inter partes review.

The first CBM review: SAP v. Versata

The first covered business method review was SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001. The transitional program for covered business method patents, created by § 18 of the AIA, allowed a party sued or charged with infringement to challenge certain financial-services patents on grounds including patent eligibility under 35 U.S.C. § 101.

The case addressed issues that would define the program:

• What counts as a covered business method patent. The Board had to decide whether the patent claimed a method used in the practice, administration or management of a financial product or service, and whether the “technological invention” exception applied.
• Whether § 101 could be raised. The Board treated eligibility as a proper ground in CBM review, consistent with the statute’s incorporation of the post-grant review grounds.
• Claim construction. As in IPR, the Board applied the broadest reasonable interpretation standard then in force.

The dispute went on to the Federal Circuit, which addressed the scope of CBM review and the Board’s handling of § 101. The CBM program expired on September 16, 2020 for new petitions. For background, see the covered business method guide and the SAP v. Versata case page.

What these early cases established

Taken together, the first AIA trials helped settle several practical points:

Issue	Early approach	Today
Additional discovery in IPR	Garmin factors	Garmin factors still widely applied
Claim construction standard	Broadest reasonable interpretation	Phillips-style standard for petitions filed on or after November 13, 2018
Appealability of institution	Uncertain	Barred in most circumstances (Cuozzo (2016); Thryv (2020))
§ 101 in USPTO trials	Raised in CBM review	Available in post-grant review; not in IPR; CBM program closed

The cases also showed how quickly AIA trials would reach the courts, and how much the Board’s early procedural rulings would influence later practice.

Reading early decisions today

Early Board decisions remain useful history, but several of the rules they applied have changed. Claim construction, partial institution (ended after SAS Institute Inc. v. Iancu (2018)), motion-to-amend practice and Director Review have all evolved. When citing or relying on an early decision, check whether its approach still reflects current law and USPTO guidance. The inter partes review guide describes the current framework.

Key takeaways

• AIA trials began on September 16, 2012; the first IPR was Garmin v. Cuozzo (IPR2012-00001) and the first CBM review was SAP v. Versata (CBM2012-00001).
• Garmin produced the factors still used to evaluate motions for additional discovery in IPR.
• The Cuozzo dispute reached the Supreme Court in 2016, which upheld the then-applicable claim construction standard and limited appeals of institution decisions.
• SAP v. Versata tested CBM eligibility and § 101 challenges at the Board.
• Several early rules have since changed, so read early decisions as history.