Description
By statute, the PTAB has discretion in deciding which petitions to institute (35 U.S.C. Section 314(a)/ Section 324(a)). Such a determination is, for the most part, non-appealable (35 U.S.C. Section 314(d)/ Section 324(e)). The uptick in PTAB institution denials after Fintiv reversed in 2022 as petitioners gave up grounds in related litigations and the USPTO Director issued new, binding interim guidance addressing the PTAB's approach to discretionary denials of PTAB petitions in cases with related litigation. Director Vidal issued a precedential decision on February 27, 2023, CommScope v. Dali Wireless, IPR2022-01242, Paper No. 23 (PTAB Feb. 27, 2023), outlining the limited circumstances in which a PTAB panel is to engage in the Fintiv compelling merits determination. Then on March 13, 2023, the Federal Circuit issued an opinion in APPLE INC. v. Vidal, No. 22-1249, remanding for consideration of whether PTO guidance on discretionary denials was improper because it was not promulgated through notice-and-comment rulemaking under 5 U.S.C. § 553. Clearly, there are several factors at play in this evolving area of PTAB practice.
Discretionary denials fall in three broad categories: denying institution under 35 U.S.C. Section 314(a) based on a parallel proceeding; denying institution under 35 U.S.C. Section 325(d) if the petition relies on the same or similar prior art/arguments presented during examination; and denying institution under 35 U.S.C. Section 314(a) based on serial petitions. Each category has PTAB related precedential opinions to help guide practitioners: Apple Inc. v. Fintiv Inc. for parallel proceedings; Advanced Bionics L.L.C. v. Med-EL Elektromedizinische Geräte GMBH for Section 325(d); and General Plastic Industries Co. v. Canon Kabushiki Kaisha for serial petitions.
Listen as our authoritative panel of IP attorneys examines the Federal Circuit opinion in Apple v. Fintiv, precedential decisions on all types of discretionary denials, and the recent application of these decisions. The panel will offer guidance for preparing and responding to petitions and strategies for avoiding such denials.
Presented By
Mr. Goldberg focuses on patent office proceedings, client counseling, and litigation. Devoting the majority of his time to representing petitioners and patent owners in inter partes review and post-grant review proceedings, he regularly manages the preparation of written submissions, takes and defends technical expert depositions, and argues before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. He also develops and manages global patent portfolios, and provides opinions on patent infringement, patent validity, and other intellectual property issues.
Ms. Mills focuses on post-grant proceedings at the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, district court patent litigation, and appeals at the U.S. Court of Appeals for the Federal Circuit. She works with clients across electrical and electronic technologies, including semiconductors, computer software, consumer electronics, telecommunications, and financial technologies.
As a former Lead Administrative Patent Judge at the Patent Trial and Appeal Board, Mr. Ward was on the front lines of the nascent post-grant review proceedings that have evolved into a prominent position in litigation and business strategies. He draws from his experience on the bench and as a practitioner to provide the highest level of counsel to clients in services ranging from litigation to prosecution and counseling.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Date + Time
- event
Tuesday, April 25, 2023
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Discretionary denials
- Statistics
- Guidance
- Precedential decisions
- Apple v. Vidal
- Best practices
- Preparing and responding to petitions
- Avoiding discretionary denials
The panel will review these and other crucial issues:
- How can practitioners use the lessons of the PTAB denials to learn what patent owners are doing to achieve their ultimate success?
- What best practices should practitioners apply when preparing and prosecuting applications to avoid denials?
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