Tag Archives: preliminary response

Is The Real IPR Institution Rate Higher When Petitioner Errors & Pre-Institution Settlements Are Considered?

We have previously noted that the increasing rate of pre-institution settlement may in part be responsible for the declining institution rate in IPR proceedings because stronger petitions may drive earlier settlements, removing more effective petitions from the pool that would otherwise be instituted (“Does Spike In IPR Settlements Signify Petitioner Success?”).  Another factor that may contribute … Continue reading this entry

Guarding Against Conclusory Statements & Why It Matters Even More Under The New PTAB Rules

A common deficiency highlighted in recent PTAB decisions denying institution of an IPR petition is that an expert declaration offers only “conclusory” statements in relation to one or more key aspects of the alleged ground of unpatentability. For example, in a decision denying institution in IPR2016-00011, the PTAB commented that “Dr. Harrigan’s opinion in this … Continue reading this entry

USPTO Releases New Rules For AIA Post-Grant Proceedings

Today the USPTO released its long-awaited package of rules for AIA post-grant proceedings. The final rules largely track the proposed rules (see “USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings” to compare them), although they contain one surprise. Overall, the new rules may reduce the number of instituted IPRs and AIA proceedings by adding a … Continue reading this entry

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

Today the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented an earlier set of “quick fix” rules changes on May 19th. The prior and newly proposed rule changes may impact proposed legislative changes being debated … Continue reading this entry