The PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides of the “v” with an eye toward providing the most current thinking on how to increase return on investment and the value of US patents. Depending on the topic, this 360 degree approach will be explored within an article or across a series of related articles.

This month we tackle three important issues:

1. The Board’s broad discretion to deny institution under 35 USC 325(d), taking into account the Board’s recent informative decision;

2. Approaches for providing persuasive secondary consideration evidence, in view of several recent Federal Circuit decisions, while at the same time how to effectively challenge a strong secondary consideration position;

3. The Federal Circuit’s further explanation of BRI confirming it is not broadest possible interpretation, but broadest reasonable interpretation consistent with the specification.

The secondary considerations topic will be fully discussed in a single October 2017 article, while the 325(d) topic will be explored over the next several months’ Newsletters. Most months we will include an article covering a Federal Circuit decision related to a PTAB case like this month’s article on BRI.

Additionally, while the staff of our Newsletter have plans to explore many issues, we welcome feedback and suggestions to ensure we are meeting the needs and expectations of all our readers. So if you have issues you wish to see explored either within an issue of the Newsletter, please reach out to me.

Finally, in the event you might have missed it, we explored the multi-part Federal Circuit decision in In re Aqua Products in a recent client alert.