Discretionary Denials at the PTAB: What to Expect? - Patents: Post-Grant Podcast
Jones Day Talks®: Patent Litigation, PTAB, Iancu's Legacy, and Institution Discretion
Although the PTAB had previously stated that it would “rarely” be appropriate for a petitioner to file multiple petitions against the same patent, in Dolby Laboratories, Inc. v. Intertrust Technologies Corp., IPR 2020-01104;...more
Although first briefly mentioned as a possibility in the August 2018 Trial Practice Guide Update (page 10), outside of one instance (Bio-Rad Labs. v. 10X Genomics, IPR2019-00567; -00568, August 8, 2019), PTAB discretionary...more
The U.S. Patent and Trademark Office (Patent Office) designated new Patent Trial and Appeal Board (Board) precedents protecting patent owners from multiple inter partes review (IPR) challenges. The Board decisions included...more
In the last two years, the Patent Trial and Appeal Board has issued two precedential decisions (in NHK and Fintiv) that set forth the board’s test for determining whether to deny an inter partes review (IPR) petition based on...more
The rate at which the Patent Trial and Appeal Board (“PTAB” or “Board”) institutes Petitions for Inter Partes Review (“IPR”) has been in steady decline since the introduction of the IPR procedure in 2013, and is expected to...more
The Supreme Court has held the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct....more
The PTAB has been grappling with how to manage IPR petitions for patents that are also being challenged in federal district court, particularly when the district court is set to determine the patent validity prior to the...more
In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing considerations of system efficiency, fairness, and...more
On July 13, the USPTO’s Patent Trial and Appeal Board (PTAB or Board) designated two decisions informative that apply the NHK factors for determining whether the PTAB will exercise its discretion to deny inter partes review...more
The Patent Trial and Appeal Board (PTAB) recently designated an order, Apple Inc. v. Fintiv, Inc., IPR 2020-00019, Paper 11 (Mar. 20, 2020), as precedential. The order outlines six non-dispositive factors the PTAB will...more
In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more