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March 25, 2018


(*In my personal capacity*)

George, I have to take issue with this on at least one front---while it's a thorough editorial on the strength of the numbers and the state of challenges as a whole, it doesn't really tell practitioners what they should or shouldn't do in their particular cases.

I would recommend that all petitioners filing a second or subsequent petition should explain, at length, the timing, presentation, delay, and reasons for their filing, including factors relevant to parallel district court litigation, licensing, ITC litigation, and Federal appeals.

On the patent owner side, I think the study does an admirable job tipping the Board's hand on what they might look to when denying a second or subsequent petition---factors like unreasonable delay, using the first or earlier petitions as a roadmap to harass the patent owner, a lack of seeking or creating situations for joinder or consolidation where relevant, and the like. I think the single biggest factor the Board will consider, whether this is made explicit or not, is fairness to both parties---i.e., if a defendant is sued for infringement, the Board is likely going to consider it fair for that defendant to proceed, unless it appears they're objectively trying to harass or prejudice the patent owner. On the flip side of that, a complete absence of explanation (or a weak or short one) is something a patent owner can easily exploit. I think that's the practical takeaway of the fascinating study. We can parse the numbers all we want, but in my experience, it's always best to file first, and any petitioner's counsel who's trying to wait and see is doing so at their own risk.

Hey Jonathan,

Thanks for weighing in. I agree with a lot of what you've said here, particularly that the Board is always going to take a little harder look at follow-on petitions. This is not a groundbreaking revelation; but one, like you, I agree is often overlooked by counsel over-relying on "wait-and-see" tactics.

But, again, this post was just an attempt to cut through the PTAB's study and illustrate what the numbers really said, so I can tee up the issues for further, more practical analysis in part II.

Looking forward to your input there as well...

All the best,

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