Fenwick & West patent partner Stuart Meyer, co-chair of the firm's post-grant proceedings practice, was interviewed by Law360 about patent reform developments on the horizon in 2016 – in particular, expected modifications to the Patent Trial and Appeal Board (PTAB) process.
One anticipated change, Meyer told the publication, involves estoppel provisions in America Invents Act (AIA) proceedings.
Currently, Meyer noted, petitioners who file a post-grant review against a new patent cannot raise an issue in a later suit that was raised in the post-grant review or could have been raised then. The effect, he said, has been to discourage some accused infringers from seeking a review.
“The change in the law would stop the petitioner from reasserting any ground that actually was raised in the post-grant review, which is much narrower than the current estoppel provision,” Meyer told Law360.
“That way, someone won’t have to gamble their entire suite of invalidity contentions on succeeding on the few that they have space to raise in the post-grant review papers,” he added.
The full article is available through Law360's website (subscription required).