Practice Guide Update News Today

The United States Patent and Trademark Office (USPTO) has released an update to its study on multiple Patent Trial and Appeal Board (PTAB) petitions that it says demonstrates that serial and parallel petition practice at the PTAB has been decreasing since 2016, when the Office first issued guidance on the subject.

A large group of patent holders sent a letter to Congress expressing concern that, since the US Patent and Trademark Office (USPTO) Director Iancu might soon be leaving, recent policies making it harder to challenge bad patents might be reversed. The letter concerns a process created somewhat recently, called inter partes review (IPR), that allows…

two petitions against the same patent “should be rare” and that it is “unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.”  TPG Update at 26 (emphasis added).  In support of those statements, the PTAB explained that “one petition should be sufficient to challenge the claims of a patent in most situations” and that “[t]wo or more petitions filed against the same patent at or about the same...

Introduction The authors have recently proposed alternative analyses for the discretionary denial of IPR and PGR petitions involved in parallel district court litigation, as well as for the discretionary denial of serial petitions filed before the Patent Trial and Appeal Board (“PTAB”). The PTAB is also currently at a crossroads with yet a third similar but distinct issue—the discretionary denial of parallel petitions filed before the PTAB. “Serial petitions” refer to multiple succes...