Patrick Doody Comments on the First Inter Partes Ruling

Commenting on the decision, Patrick Doody, an intellectual property partner in Pillsbury’s Northern Virginia office, noted that parts of the ruling included statements that a technically-skilled person could identify as the board's own conclusion, rather than its acceptance of a position taken by one of the parties. He explained that there aren't yet clear standards on whether the board should act more like judges, who review only the evidence put in front of it, or like patent examiners, who can rely on technical expertise to draw their own conclusions.

If the board can fill in the blanks and decide for itself what is obvious, Doody commented, then that could cause consternation among patent owners, who may complain that they should be given a chance to respond to the board's findings. However, he added, it could also be a boon for petitioners, who can prevail if the board takes partial evidence and connects the dots to find a patent invalid.

This issue of how the board should review and decide will likely to be a point of discussion if the Cuozzo case is appealed, but “practitioners would be wise to take that into consideration in future proceedings,” Doody said. “If the board has the authority to do that, we can expect more of the same.”