In July 2019, the U.S. Patent and Trademark Office (USPTO) issued guidance suggesting that filing a single petition at the Patent Trial and Appeal Board (PTAB) challenging a patent’s validity should be sufficient, and that petitioners filing simultaneous validity challenges should explain the differences and rank them in order of importance. This guidance has many practitioners concerned that legitimate challenges may be overlooked just because parties file several petitions. Bloomberg Law contacted Finnegan partner and former PTAB administrative law judge Trenton Ward for his thoughts.
Trenton said, “Until we know those circumstances in which we know it’s appropriate to have more than one petition, I think there’s going to be a lot of questions.” He noted that previously, the PTAB’s perspective on patent challengers filing a second petition allowed them to “achieve more space” for their arguments. Now, the new guidance “implies you don’t just need more pages,” he said.