Fish's Joshua Griswold & Dan Smith Quoted in Managing Intellectual Property Article, "PTAB 4 Years In: PGRs Ready For Primetime"

Joshua Griswold (Principal, Dallas) and Dan Smith (Associate, Dallas) were quoted in a Managing Intellectual Property article, "PTAB 4 Years In: PGRs Ready for Primetime.”

How PGRs Differ

According to an August 10 Fish & Richardson webcast, Post-Grant Review Proceedings are Gaining Momentum, of the 30PGRs filed by the end of July, 84% included 103 grounds,55% 112 grounds, 52% 102 grounds and 29% 101 grounds.

Joshua Griswold, principal at Fish & Richardson, commented on the webcast: "There were a few instances where PGR was filed on 101 alone and 112 alone. But what surprised me was that there were six filed on prior art alone. Given how difficult it is to get discovery, I didn't expect to see people going forward only on a prior art basis."

A boon for biotech

On the Fish & Richardson webcast, associate Dan Smith commented: "In the biopharma context, PGR eligibility is the only way of presenting 101/112 before the Patent Office so that could be one reason why there is more biopharma. If you want to present those grounds, this might be your only option."

Lower discovery bar

"The interesting thing is I haven't seen discovery allowed to probe into secondary considerations in an IPR or CBM," said Smith. "I've seen it tried, and I've seen it fail."

However, the Board seems wary of discovery requests. It denied some requests in American Simmental as "overly burdensome".

Smith said the bottom line is additional discovery cannot be counted on when companies are forming their PGR strategies. Estoppel still applies if a PGR ground fails for lack of evidence. "If discovery is needed to develop a ground, it may be better to raise it in litigation," said Smith. "An alternative would be to file an IPR with printed publication challenges, and raise prior use in litigation."

He sounded a note of caution about the future for PGRs: "It is too early to say that they will continue to gain in popularity and ever be at the same popularity in filing volume as IPR or CBM or even anything like that."

To read the entire article from Managing Intellectual Property, click here.

To watch a replay of the Post-Grant for Practitioners: Post-Grant Review (PGR) Proceedings are Gaining Momentum webinar, click here.