Opinions and Editorials

Jul. 12, 2022

IPWatchdog: The PTAB Reform Act Will Make the PTAB’s Problems Worse by Marc Ehrlich & Marian Underweiser

Recently, we submitted comments for the record to the Senate Judiciary Committee’s IP Subcommittee in response to its June 22 hearing on the Patent Trial and Appeal Board (PTAB), titled: “The Patent Trial and Appeal Board: Examining Proposals to Address Predictability, Certainty and Fairness.” The hearing focused on Senator Leahy’s PTAB Reform Act, which among other changes, would eliminate the discretion of the Director to deny institution of an inter partes review (IPR) petition based on an earlier filed district court litigation involving the same patents, parties and issues. Here is the net of what we told them:

1) The PTAB is Predictably and Certainly Unfair to Patent Holders

Currently, the PTAB institutes about 70% of the petitions for IPR it receives and then invalidates at least one claim in more than 80% of the patents it reviews. So, it is predictable that if a party petitions for an IPR of your patent, the PTAB will institute, and once they do, it is a near certainty that you will lose at least one claim. So, predictability and certainty are not an issue with the PTAB.

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