As a way of keeping in touch with our clients and keeping them informed on PTAB developments during the COVID-19 pandemic, the firm launched the PTAB Briefing Webinar Series. This informal and interactive series will address current PTAB issues from a practical perspective. The second webinar was PTAB Institution Rates: The Rise of Discretionary Denial. The speakers included: Directors Richard Bemben and Jon Wright. The webinar was moderated by Director Michael Specht.

The PTAB has dramatically expanded the circumstances in which it will exercise its discretionary denial authority. On March 24, 2020, the PTAB designated two more discretionary denial decisions (Advanced Bionics LLC v. MED-EL Electromedizinishe Gerate GmbH, IPR2019-01469, Paper 6 (Feb. 13, 2020) and Oticon Medical AB v. Cochlear Ltd, IPR2019-00975, Paper 15 (Oct. 16, 2019)) as precedential, sending shivers down the spine of petitioners to the delight of patent owners. Some have also contended that institution rates have and will continue to decline. This webinar summarized the PTAB’s increased use of discretionary denial, addressed institution rate trends and discussed the potential ramifications of the most recent precedential decisions. Our speakers have been actively engaged in numerous cases in which discretionary denial has come into play, including most recently being asked for supplemental briefing in a pending IPR to address the most recent precedential decisions – one day after those decisions were designated precedential.

To learn more about this topic and/or webinar, please contact the presenters.