In its column “Skilled in the Art,” Law.com reported that the U.S. Patent & Trademark Office director Andre Iancu has established new rules for determining which Patent Trial & Appeal Board decisions will be designated “precedential”—binding on the PTAB in all future proceedings—or “informative,” which are more like non-binding best practices.
In the past, either designation required a majority vote of all of the PTAB, which has 270 judges. The result was very few precedential decisions. Iancu’s new procedures vest that power in a smaller group of senior PTAB and PTO personnel.
The PTO used the process recently to make clear that loading up an inter partes review petition with too many challenges can cost a petitioner its day in administrative court.
Pillsbury Intellectual Property partner Bill Atkins, editor of The PTAB Handbook, said the decisions are the continuation of a trend. In the first years following the America Invents Act, petitioners could challenge a patent with multiple petitions, and if those weren’t accepted they could bring new petitions raising new arguments. More recently PTAB has been cracking down on serial petitions and now it seems it’s going to require more focus within a petition.
“It’s a different place than we were a few years ago,” Atkins said. “I think this is all part of growing up.”
Winnowing down an IPR petition will pose challenges for practitioners, he said, because what is and isn’t a meritorious challenge often involves some subjective opinion. Fashioning an IPR might become more like framing an appeal: “It’s the old adage of you don’t want to go up on seven different issues, you want to pick your best three,” Atkins said.