The Effect of Discretionary Denials by the PTAB on Current and Future Practice in the USPTO and the US Courts

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One particularly confounding factor in deciding whether to file a petition for inter partes review is the breadth of discretion the Patent Trial and Appeal Board (“PTAB”) has to deny institution of such petitions, coupled with the statutory prohibition of reviewing those decisions. The PTAB relies on precedential decisions to articulate criteria it applies in exercising its discretion, but the criteria are not exhaustive or unequivocal, which makes it difficult for practitioners to advise clients whether and when to file petitions for review. The United States Patent and Trademark Office recently solicited comments from the public on this issue and may issue rules on the exercise of discretion. This seminar will explore the most recent decisions on discretionary denials and suggest strategies for maximizing the chances of avoiding such denials. It will also explore how this area of patent practice might develop.

Topics to be discussed include:

• Overview of discretionary denials
• PTAB decisions on discretionary denials, including Apple v. Fintiv, NHK Spring, and General Plastic/Valve
• Practical experience with this issue
• Effect of discretionary denials on litigation strategies
• Anticipated developments

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Moderator:
Bob Yoches

Speakers:
Joshua Goldberg
Kevin Rodkey