Tag Archives: PTAB

PTAB’S “PRECEDENTIAL OPINION PANEL” RULES ON TIME-BAR TRIGGER

By Tom Engellenner
The “Precedential Opinion Panel” of the Patent Trial and Appeal Board (PTAB) ruled earlier this month that even a faulty complaint asserting patent infringement can start the clock running on a petitioner’s one-year time period for administratively challenging the validity of the patent under the America Invents Act (AIA).  See, GoPro, Inc. v. 360Heros, Inc., Case IPR2018-01754 POP decision.  According to the precedential panel:

“The service of a pleading asserting a claim alleging infringement, including where the serving party lacks standing to sue or the pleading is otherwise deficient, triggers the one-year time period for a petitioner to file a petition.” Continue reading →

PTAB INCREASINGLY USING ITS DISCRETION TO DECLINE IPR INSTITUTIONS

By Reza Mollaaghababa

Under 35 U.S.C. §314(a), the PTAB has discretion to deny institution of an inter partes review. Cuozzo Speed Techs, LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (”[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion”).  The PTAB is increasingly relying on its discretion to deny institution of IPR challenges to patents.  In some cases, the PTAB has denied institution of a follow-on petition that presented substantially similar grounds as those presented in an earlier petition, even when filed by a different petitioner.  In other cases, the PTAB has denied institution of an IPR challenge reasoning that institution in view of the advanced stage of a parallel district court trial would not be efficient use of the Board’s and the court’s resources. In other cases, the PTAB has denied institution in cases where it deemed only a small subset of petitioner’s arguments would be likely to establish invalidity of challenged claims. Continue reading →