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Partner Joseph Meara was quoted in the BioWorld article, “,” about the U.S. Patent and Trademark Office’s notice of proposed rulemaking in response to the 2018 decision in the U.S. Supreme Court decision SAS v. Iancu.  The first item on the PTO agenda is to formally require that an inter partes review consist of an exhaustive review of all the claims contested by the petitioner. Meara told BioWorld that the more significant element of the draft rule is the language questioning whether the IPR process should commence with a presumption in favor of the petitioner, a change Meara said patent owners might cheer as “a small, but potentially significant step to increase their chances of turning back petitioner challenges.”

Meara said the PTO had previously adopted the practice of declining to hear some challenges for the sake of efficiency. “I think the Supreme Court decision shows that reasonable people could differ on whether the PTAB had authority to institute on less than all the challenged claims,” he said, adding that the final result at the Supreme Court suggested that the PTAB has “no authority to pick and choose” which challenges the board must address.

He added the PTAB has already demonstrated in the months following the SAS case that it won’t reflexively institute an IPR if there seems little likelihood that the petitioner will prevail on at least one claim. Petitioners can thus damage their prospects with challenges that seem meritless to the board, Meara said, although he noted that a petitioner can challenge different claims in separate PTAB proceedings despite that the PTAB has grown wary of petitioners who evince an appetite for multiple bites at the IPR apple.

Conversely, the availability of repeated challenges seems to raise questions of estoppel, and Meara said there is a substantial debate as to whether the availability of multiple PTAB proceedings is fair to patent holders.

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