Fenwick intellectual property lawyer Jennifer Bush spoke to Law360 about the specific parameters outlined by an expanded panel of the Patent Trial and Appeal Board for how multiple challenges to the same patent will be evaluated.
Bush noted that the parameters—which at minimum serves as a baseline moving forward—likely limit the number of challenges that a patent ultimately goes through, which could be encouraging for patent owners.
Bush discussed how the panel mentioned that multiple, staggered petitions “are an inefficient use of the inter partes review process and the board’s resources.” Another factor identified takes into account the board’s “finite resources,” Law360 reported.
“The way it’s been articulated, both here and in several other prior cases, is that the board’s resources are more fairly expended on initial petitions than on follow-on petitions. And if that’s the way you articulate factor six, that’s pretty much always going to be patent owner-favorable, if you are always favoring initial over follow-on,” Bush said.
The full article is available on the Law360 website (subscription required).