Michael Hawkins Quoted in Law360 Article "PTAB Rulings Show Potential New Way To Defeat AIA Reviews"

Fish Principal Michael Hawkins was quoted in Law360's article "PTAB Rulings Show Potential New Way To Defeat AIA Reviews” on April 9, 2019.

Two recent Patent Trial and Appeal Board decisions provide patent owners with a new strategy they could potentially use to persuade the board not to review patents, and serve as a reminder of the pitfalls of mounting overly broad attacks on a patent's validity.

In a pair of decisions the board designated as informative on Friday, it declined to institute America Invents Act inter partes reviews of patents because the petitioner was likely to succeed in invalidating only two out of 20 or more challenged claims.

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The board has now made clear that it will exercise its discretion not to review patent in such situations, since under the AIA it is permitted but not required to institute reviews. That is a notable change from how the PTAB operated in the early days of inter partes review, said Michael Hawkins of Fish & Richardson PC.

In some cases years ago, when patent owners argued that the PTAB should use its discretion not to review a patent, “the board would go so far as to say in institution decisions that that is not for you to comment on, and when we exercise our discretion is the prerogative of the board,” he said.

In the new decisions, the board says reviewing a patent where the petition has shown that only a small number of claims are invalid “is not an efficient use of the board's time and resources." They join other decisions where the board has exercised it discretion to institute review for various other reasons.

“I see these as being a new trigger for patent owners to begin using this line of argument in preliminary responses,” Hawkins said.

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Another option for patent owners may be to point to the new decisions after each section of the response, and argue that even if the board doesn’t agree those particular claims should be upheld, the rest of the case for upholding the patents is so strong that review should not be instituted, Hawkins said.

“You can point to your more persuasive sections and say that’s enough to carry the day,” he said.

The decisions are welcome news for patent owners, but they present complications for petitioners. In both cases, the petitioner challenged every single claim of the patent, which the results suggest may not be a wise decision going forward.

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Since the PTAB's reasoning in denying review in the cases appears to be that the meritorious arguments make up only a small fraction of the overall invalidity case, petitioners may consider breaking up their arguments into multiple petitions, Hawkins said.

That way, the board could potentially deny one petition where it doesn't think the petitioner is likely to succeed and institute review on a separate one where it finds all the arguments persuasive, he said. However, there's no guarantee that would work, and filing more than one petition significantly drives up the cost of the proceeding.

“The board’s further articulation of its discretion has meaningful, pragmatic consequences that can create some difficult decisions between attorneys and clients," Hawkins said.

Read the full article here.