7 USPTO Rulemaking on PTAB Precedential Opinions Deserves Public Support
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USPTO Rulemaking on PTAB Precedential Opinions Deserves Public Support

Authored by Eric Blatt for IPWatchdog.com

September 23, 2020

Associate Eric D. Blatt authored an article titled "USPTO Rulemaking on PTAB Precedential Opinions Deserves Public Support" for IPWatchdog.com, the largest online intellectual property publication in the world and a leading source for news, information, analysis, and commentary in the patent and innovation industries.

The U.S. Patent and Trademark Office (USPTO) has submitted proposed rulemaking for review by the White House’s Office of Management and Budget (OMB). Although the details are not public, the proposed rule is anticipated to formalize prudential doctrines on trial institution that the Patent Trial and Appeal Board (PTAB) currently applies through precedential opinions such as Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB March 20, 2020); General Plastic Industries Co. Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017); and Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017). These doctrines provide legal frameworks under which the PTAB my deny institution of an inter partes review (IPR) based on fairness — rather than on merits alone. Because the doctrines reduce the odds that certain categories of IPRs will be instituted, they are subjects of fierce dispute among patent lobbyists and, most recently, a lawsuit filed under the Administrative Procedure Act (APA) in the Northern District of California. Apple Inc. v. Iancu, No. 5:20-cv-06128 (N.D. Cal.).

To read the full article on IPWatchdog.com, please click here.