The article discusses recent discretionary denial decisions made by Acting Director Coke Morgan Stewart concerning inter partes review (IPR) proceedings at the Patent Trial and Appeal Board. It highlights that the decisions are influenced by factors including the timing of parallel proceedings, patent owner expectations, and the substantial number of patents under review. Notably, two decisions involving Tesla, Inc. showcase arguments regarding the appropriateness of discretion in light of ongoing district court cases. The total number of decisions made under this new process is now 18, marking a significant step in patent adjudication processes.
The large number and vast scope of the patents asserted in the district court litigation... weighs against discretionary denial, as the Board is better suited to review a large number of patents involving diverse subject matter.
On June 12, Stewart issued 11 Director discretionary decisions under the agency's interim process for managing workloads at the Patent Trial and Appeal Board (PTAB), declining to issue discretionary denials under 35 U.S.C. § 325(d) in seven inter partes review (IPR) proceedings but granting the request to deny institution and terminating four other IPR proceedings.
The two latest decisions, issued June 13, both involved Tesla, Inc. In one, patent owner Intellectual Ventures argued factors such as the scheduled trial date, which precedes the projected final written decision due date, insufficient evidence the district court is likely to stay its proceeding even if the Board were to institute trial.
However, Tesla argued that it filed a broad stipulation and that the merits are strong given that the PTAB 'previously determined there was a reasonable likelihood that similar claims of an ancestor patent were unpatentable in three separate proceedings with respect to some of the challenged patents in these proceedings.'
#patent-law #ipr-proceedings #director-discretionary-denial #patent-trial-and-appeal-board #tesla-inc
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