Fenwick IP lawyer Jennifer Bush spoke with Law360 about the top developments to expect at the Patent Trial and Appeal Board in 2019.
Bush talked about the PTAB’s plan to change the system of seeking patent amendments in AIA reviews, where the board would first issue a preliminary ruling on whether proposed amended claims are viable prior to the final decision, and then patent owners could revise their motion in response.
“If you propose an amendment that the board says, ‘We don’t think this is great,’ I think you’re actually in a worse spot,” Bush told Law360.
Another topic Bush addressed was the PTAB’s switch in its claim construction standard to match the more narrow standard used in district courts. With matching standards, district court judges will have more basis to rely upon PTAB decisions when interpreting patent claims.
Bush noted the Supreme Court’s ruling in SAS Institute v. Iancu, where the PTAB must address all challenged claims when it agrees to review a patent, could have the effect of making the PTAB the forum for invalidity in many patent disputes.
“What I think the overall effect is, you have the PTAB increasing in importance,” Bush said.
The full article is available on Law360 (subscription required).