In a recent decision, the Patent Trial and Appeal Board (PTAB) outlined specific parameters for how multiple challenges to the same patent will be evaluated, likely limiting the number of challenges that ultimately go through. The decision outlines seven factors expected to be used as a baseline for the board when determining whether to reject follow-on petitions. Law360 contacted Finnegan attorney Jason Stach for his thoughts on the PTAB's guidance.
He said, "It’s encouraging [for patent owners] in that it is a formal adoption by the PTAB of a mechanism for limiting challenges to a patent owner’s patents. From that standpoint, I think patent owners are pleased with this approach.” However, since the decision is not precedential, it is not binding on other panels of PTAB judges. Stach said, “I think there’s still somewhat a lack of clarity when the board is going to decide in its discretion that it won’t institute, but at least this is one step closer to providing relief to patent owners who are concerned that the system has swung too favorably to the petitioner.”
