In the Bloomberg Law article “Growing Denials of PTAB Petitions Demand Sharp Patent Strategies”, Knobbe Martens partner Ted Cannon explored the increase in denials of Patent Trial and Appeal Board (PTAB) petitions following the USPTO’s March 24 guidance on applying the Fintiv precedent. This shift has made it easier for administrative judges to reject patent validity challenges when parallel district court litigation is underway.
In the piece, Cannon writes that the most influential factor in the denials is whether the district court trial is expected to occur before the PTAB’s final written decision—meaning that filing a petition promptly can help a challenge survive discretionary denial. When a district court trial date is scheduled before the projected final written decision date, the petitioner should be prepared to challenge the trial timeline with concrete evidence.
Cannon also examines recent discretionary-denial decisions by Acting USPTO Director Coke Morgan Stewart, including iRhythm Technologies, Inc. v. Welch Allyn, Inc. and Tesla, Inc. v. Intellectual Ventures II LLC. In those and other recent decisions, Cannon observes, Acting Director Stewart introduced new considerations such as the complexity of the patent portfolio asserted in litigation, the length of time the challenged patent has been in force, and the petitioner’s prior knowledge of the patent. These developments suggest that while early filing remains the most reliable strategy, petitioners must also be prepared to explain other reasons the PTAB should consider the patent challenge.
In closing, Cannon notes the importance of proactive and strategic petition preparation, including early prior art searches, preemptive drafting, and timely stipulations.
“Filing a Sotera stipulation may tilt the balance toward institution, especially when the trial date is uncertain or falls near the final written decision date,” Cannon writes. “And, of course, a petitioner should present a strong unpatentability case to improve its odds under Fintiv and on the merits.”
Read the full article here. [Subscription may be required]
