Supreme Court Decides Not To Review PTAB Estoppel Issue
By John Marlott and John Wright - The Supreme Court will not consider a challenge to the proper scope of AIA statutory estoppel, leaving the Federal Circuit’s governing interpretation in place. The Court’s June 26, 2023 order list denied the pending petition for...
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...