PTAB Requests Comments Regarding Discretionary Institution Issues, PTAB Litigation Blog
Visit the PTAB Litigation Blog.
The Supreme Court has held the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016). Since the Court’s confirmation of the PTAB’s discretion to deny institution, how the PTAB wields that discretion under §§ 314(a), 325(d) has been a hot button issue at the Board. In just the last 24 months, the PTAB has designated ten § 314(a) decisions (5 precedential, 5 informative), and four § 325(d) opinions (3 precedential, 1 informative).
Insights by Jones Day should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request permission to reprint or reuse any of our Insights, please use our “Contact Us” form, which can be found on our website at www.jonesday.com. This Insight is not intended to create, and neither publication nor receipt of it constitutes, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.
