Likelihood of Success on 1 of 46 Claims Deemed Inefficient
By Kyle Perisutti*, Robby Breetz, and Matt Johnson - The PTAB recently exercised its discretion under 35 U.S.C. § 314 to deny institution of inter partes review for inefficient use of the PTAB’s time and resources notwithstanding that the petitioner met the threshold...
Court Opts Not To Stay Without Trial Instituted On All Asserted Patents
By Jessica Vedrani*, Misti Blount, and Matt Johnson - Congress implemented the Leahy-Smith America Invents Act (“AIA”) to “establish a more efficient and streamlined patent system that [would] improve patent quality and limit unnecessary and counterproductive...
USPTO Requests Comments Regarding Motion to Amend Pilot
By John Wright and John Marlott - The USPTO continues to seek public feedback on PTAB procedures and potential rule changes. In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a request for...
Will “Compelling Merits” Institution Standard Lead To Rubber Stamp FWDs?
By John Marlott and Ryan Mueller - If a PTAB panel finds “compelling merits” of unpatentability when making its initial institution decision, is there any realistic chance that same PTAB panel will reach a different result in the final decision at the conclusion of a...
Duty of Candor is Not to be Ignored
By Evan Tassis and Matt Johnson - In a rare exercise of authority, the PTAB issued sanctions against a Patent Owner for failure to meet its duty of candor and good faith by withholding information relevant to the patentability of challenged and substitute claims in...